INDIA- IP UPDATES – 2024 – 25

Insights in IP – A P&A Exclusive

As part of our commitment to knowledge-sharing and industry collaboration, we are pleased to present this exclusive collection of recent developments in Indian intellectual property law. These articles provide in-depth analysis and case summaries on trademark enforcement, patent prosecution, copyright nuances, and emerging regulatory frameworks. Whether you’re navigating brand protection, exploring the boundaries of patentable subject matter, or assessing policy shifts in traditional knowledge and biodiversity, this compilation aims to foster informed dialogue and professional connection among IP stakeholders worldwide.

Table of Contents

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Lenovo Defends ‘Think’ Brand

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In a significant ruling in Lenovo (Singapore) PTE. Ltd. v. RPD Workstations Private Limited, (2024) the Madras High Court sided with Lenovo (Singapore) in its legal battle against the trademark ‘THINBOOK’ The Court, in an appeal filed under Section 57 of the Trade Marks Act, 1999, directed the Trade Marks Registry to cancel the entry of the mark ‘THINBOOK’ in Class 9 from the Register of Trade Marks. Lenovo, a global leader in laptop manufacturing, initiated legal proceedings seeking rectification, cancellation, and removal of the impugned mark, arguing that it is the exclusive proprietor of the well-established ‘THINK’ Family of Marks. The company emphasized that it has secured trade mark registrations for its ‘THINK’ series, including ‘THINKPAD’ and ‘THINKBOOK,’ both in India and internationally, for a variety of goods and services under Classes 09, 16, 35, and 42. Lenovo asserted that it has been using the ‘THINK’ Family of Marks since 1992, and through prolonged and widespread use, these marks have gained distinctive recognition and exclusivity in the industry, and is well known within the meaning of Section 2(1)(zg) of the Act. Consequently, it argued that the use of ‘THINBOOK’ by RPD Workstations was likely to mislead the public into believing that it was an extension of Lenovo’s THINK Family of Marks.

The Court, after reviewing the submissions, concurred with Lenovo’s contention that the mark ‘THINBOOK’ bore deceptive and phonetic similarities to its THINK Family of Marks. It noted that Lenovo’s long-standing use and global recognition of its trademarks had established a strong brand identity. The likelihood of confusion among consumers, due to the similarity in pronunciation and appearance, was deemed substantial. Additionally, the Court observed that RPD Workstations had obtained registration of the mark ‘THINBOOK’ through misrepresentation, which had misled the Trade Marks Registry into granting approval. The Registrar, by failing to recognize Lenovo’s prior rights over the THINK Family of Marks, had committed an oversight that required rectification.

The Court ultimately ruled in favour of Lenovo, confirming its exclusive proprietorship over the THINK Family of Marks. It held that the existence of the mark ‘THINBOOK’ on the Trade Marks Register would cause confusion among consumers and potentially dilute Lenovo’s brand identity. Therefore, in a decisive order, the Court directed the Trade Marks Registry to cancel the registration of ‘THINBOOK’ in Class 9 within four weeks from the date of receipt of the order.

This judgment reaffirms the strength of well-known trademarks and the significance of brand identity protection under Indian trade mark law. It underscores the importance of prior usage, consumer perception, and phonetic similarity in determining trade mark disputes. For brand owners, this case serves as a precedent that reinforces their rights against deceptively similar marks, ensuring that brand equity and consumer trust remain safeguarded.

EZIO v. ZEO: The EV Trade Mark Battle

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The Delhi High Court in a trademark dispute between Gensol Electric Vehicles Pvt. Ltd. and Mahindra Last Mile Mobility Limited, denied the interim injunction sought by the plaintiff, highlighting the significance of critical considerations like house marks, goodwill, and consumer perception. Gensol, a relatively new entrant in the EV industry, adopted the mark ‘EZIO’ and secured registration in Class 12 in 2024. Meanwhile, Mahindra introduced an electric vehicle under ‘ZEO’ / ‘eZEO’, later modifying it to ‘Mahindra ZEO’ to mitigate concerns over trademark infringement. Gensol alleged that Mahindra’s branding caused confusion and amounted to passing off, prompting legal action.

The Court ruled that Mahindra’s use of its well-established parent brand ‘Mahindra’ alongside ‘ZEO’ sufficiently distinguished its trademark from Gensol’s ‘EZIO’, both visually and phonetically. While Mahindra is a major player in the commercial EV sector, Gensol was yet to launch its vehicle. The Court observed that brand goodwill plays a significant role in consumer decision-making, favouring Mahindra’s established presence. The Court also emphasized that automobile purchases are typically high-value, well-researched decisions, reducing the likelihood of impulsive confusion. Additionally, the plaintiff’s product was a passenger EV, whereas the defendant’s vehicle was a commercial EV—further distinguishing their markets. Mahindra also demonstrated that it had conducted a prior trademark search before adopting ‘eZEO’, reinforcing its bona fide adoption of the mark. This underscores the importance of proactive legal diligence in avoiding disputes.

Mahindra’s early market entry with the ‘eZEO’ vehicle, prior to Gensol’s product launch, provided a competitive edge to the company, in addition to the enormous goodwill earned in the mark. The Plaintiff on the other hand, despite obtaining early registrations for their mark, being new in the industry, and not having launched the vehicle, could not prove any goodwill or reputation. The plaintiff first disclosed its marks to the public only on 25^th September, 2024 which is a day before the institution of the suit. This therefore highlights the strategic advantage of being first to the market, and the significance of time, which can be crucial in establishing brand recognition and customer loyalty.

This case sets a precedent for trademark disputes in high-stakes industries like EVs, reaffirming that: (a) Established house marks add significant brand distinction, mitigating confusion claims (b) Market goodwill and actual use of a mark are crucial in legal outcomes and (c) Thorough trademark searches and first-mover advantage can impact litigation success.

Zepto vs. Zepto – Why Trademark Use Matters in India

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‘ZEPTO’ trademark was registered in the name of Mohd. Ashraf since 2014 under TM No. 2773518 in Classes 9 and TM No. 2773519 in Class 35 with a user claim dating back to 01.04.2011. Is such a user claim sufficient to sustain the mark on record? The Hon’ble Delhi High Court decided otherwise in a case filed by Kiranakart Technologies (P) Ltd, the owner of the Zepto App against Mr. Mohd. Ashraf. As a prior registrant, Mohd. Ashraf had opposed Zepto’s Trademark Application No. 5079706 in Class 35. This led to Kiranakart Technologies (P) Ltd filing a rectification petition against Mohd. Ashraf’s registered mark in Class 35 seeking cancellation of the same on ground of non-use.

In the said case of Kiranakart Technologies v. Mohd, the Petitioner successfully demonstrated extensive use and promotion of its mark ZEPTO since 2021. Petitioner showed that within 5 months of commencement of its business operations, the Petitioner’s valuation of its business under ZEPTO mark reached USD 570 million. The Petitioner also showed that it has widely advertised and promoted its trademark and in 2021-2022 and 2023-2024 spent over Rs. 187 crores for the aforesaid. The Petitioner also proved that the Defendant had failed to use its mark for over 8 years. According to Section 47(1)(b) of the Trade Marks Act, 1999, a trademark shall be removed from the Register if it is not used for a continuous period of at least 5 years. While Mohd. Arshad initially appeared before the Court after issuance of notice on 25^th September 2024, he failed to appear later and also did not submit any evidence to prove use of the trademark by him. While placing reliance on precedents such as Russel Corp Australia Pty Ltd. v. Shri Ashok Mahajan, the Hon’ble High Court observed that unless the non-use is explained by way of special circumstances, the mark would be liable to be removed for non-use. Accordingly, it was ordered that the Trade Marks Registry remove the Defendant’s mark bearing No. 2773519 from the Register of Trademarks.

This case serves as a caution against defensive trademark registrations without bonafide intention to use the mark. The judgement also underscores the importance of  maintaining the purity of the Trade Marks Register by removing marks that have not been in use for a prolonged period. In many jurisdictions like the USA, active use in commerce is required to maintain trademark rights. While Indian law currently allows for renewal of registrations without proof of use, adopting a system that emphasizes active use will ensure that trademarks are linked to economic activity rather than being registered without purpose.

Draft Computer Related Inventions (CRI) Guidelines, 2025

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The Draft CRI Guidelines 2025 was released by the Indian Patent Office for public consultation. The guidelines aim to modernize and clarify the framework for assessing patentability of CRIs in light of rapid technological advances. Unlike the 2017 guidelines, which primarily leaned on dictionary definitions and lacked legal depth, the 2025 draft incorporates a more structured, jurisprudence-based approach. It reflects the evolving realities of technologies such as Artificial Intelligence (AI), Machine Learning (ML), Blockchain, Quantum Computing, and IoT, and is designed to bring Indian patent examination practices in line with contemporary global standards.

One of the key advancements in the 2025 guidelines is the clear articulation of “technical effect” and “technical contribution”, concepts that are central to determining the patentability of software-related inventions under Section 3(k) of the Indian Patents Act. Drawing from landmark court rulings, between 2019 and 2024, including Ferid Allani v. Union of India and Microsoft Technology Licensing LLC v. Controller of Patents, the guidelines stress that software-related inventions are patentable if they solve a technical problem or enhance hardware performance. The guidelines list concrete examples of technical effects, such as improved computational efficiency, enhanced data security, and real-time device control, which help distinguish true innovations from mere automation of business or abstract algorithms.

Furthermore, the guidelines introduce structured legal tests for evaluating novelty and inventive step, which are often complex in the context of CRIs. The “Seven Stambhas” approach offers a systematic framework for novelty assessment, and a five-step test for inventive step, taken from the Delhi High Court’s 2024 decision in Telefonaktiebolaget LM Ericsson v. Lava case, separates the definition of novelty from inventive step (non-obviousness) and also promotes transparent, consistent, and judicially aligned examination.  The guidelines also give clarity on the Determination of Excluded Subject Matter under Section 3(k), where it emphasizes focusing on the substance of the invention, not just the way it is claimed.

The Draft Guidelines also place strong emphasis on the sufficiency of disclosure, especially in cutting-edge domains like AI and Blockchain. Applicants are now expected to provide detailed and reproducible descriptions, including specifics about model architectures, training data, cryptographic protocols, and system-level implementation. This ensures that patents are granted only to inventions that contribute meaningfully to the public knowledge base, not to vague or speculative concepts. By grounding the examination process on judicial reasoning and aligning with global best practices, the 2025 Draft CRI Guidelines mark a significant step in clarifying India’s framework for assessing CRI patentability.

Highlights of the Patent (Amendment) Rules 2024

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The Ministry of Commerce and Industry notified the Patents Amendment Rules, 2024 making significant changes to Indian patent practice and procedure. Key changes Introduced are the following:

1. Statement and undertaking regarding foreign applications (Form 3)

Rule 12(2) requires that details of the corresponding foreign applications are to be submitted within three months from the date of issuance of the first examination report. There is no change in the timeline for submitting the first update as per Rule 12(1A).

Rule 12(3) – There is no requirement to submit the details of the examination and related documents of the corresponding foreign applications.  The Controller will take the details from available databases. Accordingly, Form 3 needs to be filed three times:

• Within six months from the date of the Indian application filing
• Within three months from the date of FER
• If requested by the Controller, within two months from the date of communication

 The timeline can be extended or condoned for up to three months by filing Form 4. 

2. Divisional Applications

Rule 13 (2A) requires that the applicant can file one or more divisional applications in respect of an invention disclosed in the provisional or complete specification. Hence, there is no requirement that the divisional claims should align with the original claims, however, it should have the support from the original specification. This allows the national phase applicants in India to apply with a single invention group while entering into India and file divisional applications later if required.

3. Requesting Examination

Rule 24B(1)(i) amended the timeline to request the examination from 48 months to 31 months. The timeline to file the examination request for applications filed before 15^th March 2024 remain 48 months as per the earlier rule.

4. Grace Period

Rule 29A – Addition of new  Form -31. It is mandatory to submit this form to avail grace period as per Section 31 for filing the application within 12 months after publishing the paper or exhibiting the invention by the inventor.

5. Pre-grant & Post grant oppositions

Rule 55(3)-  Controller shall pass the order within one month of receiving the reply statement if he is satisfied that a prima facie case is made in the representation and notify the Applicant.

If no prima facie case is made, the Controller shall notify the Applicant and pass the order:

• within one month from notification
• if a request for a hearing is made, within one month from the date of hearing (only Opponent can request the hearing)

Rule 55(4)-  Timeline to file the reply statement to pre-grant opposition will be  ‘two months’ from the date of notification.

Rule 55(5A)- Hearing can be requested by the Opponent as per Rule 62 for pre-grant oppositions.

Rule 55(5B) – Pre-grant opposition shall be examined in accordance with Rule 24 C. Hence it can be expedited.

Rule 56 – The opposition board is required to submit a report within two months from the date on which the post-grant opposition documents are forwarded to them in order to expedite the opposition process.

6. Certificate of inventorship

(Rule 70A) – An inventor can apply for a certificate of inventorship in respect of a patent in force by filing Form 8A with prescribed fees.

7. Renewal fees

Rule 80(3)-  The renewal fees can be paid for a number of years at once. If the fee is paid online for a period of at least 4 years, a 10% reduction is applicable.

8. Working Statements

Rule 131(2)- Statement of working of patents in Form-27 shall be filed once in every three years, starting from the financial year commencing immediately after the financial year in which the patent was granted. The request has to be filed within 6 months from the expiry of such financial year and extension can be sought up to three months.

9. Power to extend time specified or condone delay (Rules 138)

The Controller may grant extension of time prescribed by these rules for undertaking any act, for up to six months. A request may be filed on Form  4 and the same can be filed multiple times within the six-month period.

10. Key changes in timelines

Forms	Earlier	Current
Form  3	within 6 months from first filing in India and further updates within 6 months from the filing date of any foreign application	·       within 6 months from first filing in India ·       within 3 months from issuance of FER ·       within 2 months if requested by the Controller
Form  18/18A	48 months	31 months
Pre-grant opposition reply statement	3 months	2 months
Opposition board report in post grant opposition	3 months	2 months
Working statement (Form-27)	every financial year commencing after grant	once in every three financial years after grant

Deemed Abandonment: Judicial Flexibility under Indian Patent Law

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In India, the legal provisions governing patent abandonment are outlined in the Patents Act of 1970. Section 9(1) of the Act stipulates that an application will be deemed abandoned if a complete specification is not filed within 12 months from the date of the application after the submission of provisional specification. This scenario applies unless the application is a convention application or a Patent Cooperation Treaty (PCT) application. Furthermore, Section 21(1) of the Act elaborates on abandonment due to failure to comply with the prescribed conditions, such as responding to objections raised by the Controller General of Patents. If an applicant does not respond to objections within six months or fails to extend this period by an additional three months, the application will be considered abandoned. These provisions ensure that patent applicants remain diligent in the progression of their applications but also outline the conditions under which an application may be deemed abandoned.

The Courts have carved out exceptions with respect to the ‘deemed abandonment’ provisions under Indian Patent law in order to safeguard and protect the rights and interests of patentees and applicants against bona fide mistakes and errors. These have been upheld in several landmark judgments reinforcing the position of applicants seeking protection against accidental abandonment of their patent applications.

In recent case of Waterotor Energy Technologies Inc. v. Union of India & Anr, a notice of abandonment was set aside and the patent application reinstated by the Delhi High Court after it was found that the First Examination Report (FER) had not been delivered to the applicant on time. The Court relied on its earlier decision in Saurav Chaudhary v. Union of India & Anr 2024 SCC Online Del 4585, which emphasized that patent prosecution is a technical process requiring proper communication and diligence on the part of Patent Agents. It was observed that failure to adequately convey a FER to the applicant could not be a ground for the applicant to suffer a deemed abandonment of its application. Taking into account the extraordinary circumstances of the case, the Court set aside the abandonment order and directed the Patent Office to update the application status to “pending”. Waterotor was granted four weeks from the status update to file its reply to the FER, which the Patent Office was instructed to consider in accordance with the law.

In the case of Star Scientific Limited v the Controller of Patents and Designs, Star Scientific Limited had responded to the FER issued by the Controller and had amended their claims on time but did not attend a scheduled hearing, citing a financial constraint. The Controller issued a refusal order without providing a reasoned analysis for the refusal, stating that objections stated in the FER remain unresolved due to non-attendance of the Petitioner at the hearing. The Delhi High Court held that this approach was inappropriate, emphasizing that the mere non-attendance of a hearing should not be equated with an abandonment of the application and mentioned that abandonment requires a conscious act on the part of an applicant, which would manifest their expressed intention to abandon the application and that there can be no presumption of intent. It further highlights the necessity for the Controller to issue a well-reasoned, speaking order when disposing of a patent application based on the merits and submissions on record.

Despite the positive developments in the judicial decisions, there are no explicit legislative provisions addressing this concern, and the recent amendment to the Patent Rules also does not adequately resolve the issue. By adopting a more flexible approach to addressing the inadvertent delays from the patent agents, the patent office could significantly ease the process for applicants dealing with unforeseen issues, reducing their burden and ensuring a more efficient and accessible patent system.

Cryptography and Patent Law: Idemia Case and Section 3(k)

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As innovations in cryptography grow, questions regarding their patentability also arise. A recent case shedding light on this issue is the Idemia vs. The Controller General of Patents  which revolved around the patentability of cryptographic technology. This case is especially significant in how it challenged the traditional interpretation of Section 3(k) of the Indian Patents Act, 1970, which specifically excludes mathematical methods, business methods, and computer programs per se from patentability. Idemia’s innovation sought to improve cryptographic algorithms by incorporating simplified elliptical curves. Traditional cryptographic algorithms can exhibit variable execution times, which could inadvertently expose encrypted data to hackers through timing attacks. Idemia’s solution was to ensure constant-time encryption operations, preventing timing variations that could give hackers clues to decrypt the data. By adding extraneous steps to the cryptographic algorithm, Idemia effectively masked time-based vulnerabilities. This innovation was critical in improving the security of encryption systems, preventing potential exploits based on timing discrepancies.

Idemia’s Indian patent application (No. 538/CHENP/2012) filed in 2012 was initially rejected by the CGPDTM. The rejection was based on Section 3(k) of the Indian Patents Act, which excludes certain types of inventions from patentability, including mathematical methods, business methods, and computer programs per se. The CGPDTM classified Idemia’s invention as a mathematical algorithm, arguing that its reliance on mathematical principles made it ineligible for patent protection under Section 3(k). Additionally, the “business method” exclusion was cited as a basis for rejection, with the assertion that the cryptographic technology was simply an abstract application of an algorithm without technical substance.

The Madras High Court quashed the CGPDTM’s initial rejection and directed the reconsideration of Idemia’s patent application. The crux of this case lies in the interpretation of Section 3(k) of the Indian Patents Act. The High Court provided  clarity on this issue, stressing that Section 3(k) should not be a blanket exclusion for all mathematical methods or algorithms. The Court highlighted that the invention’s technical effect i.e., constant-time encryption to prevent timing attacks, was central to its patentability. The focus, according to the Court, should be on the technical contribution that an invention makes, rather than simply dismissing it as a mathematical method or business method. The judgment referenced both Indian and European Patent Office guidelines, which state that mathematical methods and algorithms are patentable if they contribute to a technical application. In this case, Idemia’s invention did not merely involve a mathematical algorithm. It employed that algorithm to improve cryptographic security, a tangible technical contribution. Therefore, the Court found that the invention fulfilled the criteria for patentability under Indian law, despite involving a mathematical method.

This ruling marks a significant shift in the interpretation of Section 3(k), providing a precedent that software-related inventions, especially those with a clear technical effect, should not automatically be excluded from patent protection. This is especially relevant as the digital landscape continues to evolve, with innovations in areas like cryptography, artificial intelligence, and machine learning. The ruling reinforces the notion that mathematical methods and algorithms should not be dismissed outright, particularly when they lead to practical, real-world technical advancements, like improved security in encryption systems. For innovators in cryptography, software development, and related fields, this case provides an important precedent. It signals that patent law in India is evolving to accommodate the complexities of modern technology, opening the door for software-based innovations to receive protection, provided they meet the technical contribution criteria.

Patent Prosecution History Estoppel: A Recent Judicial Analysis

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Different jurisdictions handle the interplay between prosecution history estoppel and the doctrine of equivalents in varying ways. The United States maintains strong recognition of both doctrines, with a clear framework established by the Festo decision. European courts generally take a more limited approach to the doctrine of equivalents while considering prosecution history as one factor among many. Indian courts have shown increasing recognition of both doctrines in recent years, often following international precedents while developing their own jurisprudence.

The Vifor and Others v Virchow Biotech and Others case before the Delhi High Court provides a compelling example to demonstrate the significant impact of prosecution history estoppel. The Delhi High Court clearly illustrates how prosecution history estoppel operates. The case involved a patent for water-soluble iron carbohydrate complexes, specifically Ferric Carboxy Maltose (FCM). During prosecution, Vifor had limited their claims to a specific process using aqueous hypochlorite as an oxidizing agent. When the defendants later manufactured FCM using a different oxidizing agent (Oxone), Vifor attempted to assert infringement. When Vifor attempted to assert broader protection through the doctrine of equivalents after having narrowed their claims during prosecution to overcome novelty objections, the court applied prosecution history estoppel to prevent the expansion of rights.

The court’s analysis hinged on a critical examination of the prosecution history. It found that Vifor had admitted during prosecution that iron carbohydrate complexes were already known, and their invention specifically resided in preparing these complexes using Maltodextrin and aqueous Hypochlorite as the oxidizing agents. The defendants’ use of Oxone instead of Hypochlorite provided significant advantages, including avoiding undesired chlorinated by-products and improving product purity. The Court held that No party can be permitted to approbate and reprobate at the same time and the prosecution history estoppel becomes pronounced on account of the fact that the patent was obtained by representing that the novel properties in the product were attributable to characteristic features of the process mentioned therein. There is wealth of judicial precedents, both in India and abroad, where prosecution history estoppel has been a well-recognized parameter to adjudicate issues pertaining to patents, particularly, at the stage of grant of interim injunctions, which is a discretionary relief and one of the factors that goes into the decision-making process is the conduct of the party seeking equitable relief.

 

The court ultimately ruled against Vifor, holding that they could not claim infringement when the defendants used a different process, especially since Vifor had consciously limited their claims during prosecution to a specific oxidizing agent. The court noted that the stand taken by Vifor before the Controller of Patent during the prosecution of their patent was that “the essence of the present invention is that by appropriately selecting suitable maltodextrins having specific dextrose equivalent as defined in the claims”. This decision reinforces that patent owners seeking interim injunctions must demonstrate that the rival process is identical to their asserted process, particularly in product-by-process claims. To preserve the rights under the doctrine of equivalents, patent owners must adopt careful strategies from the earliest stages of patent prosecution. This includes drafting claims to minimize the need for amendments, making only necessary amendments during prosecution, and maintaining detailed records of the reasons for any changes. Continuing applications should be considered to maintain broader protection where possible, and potential equivalent technologies should be contemplated during the drafting process.

The relationship between prosecution history estoppel and the doctrine of equivalents continues to evolve as courts balance the rights of patent owners with the public need for clarity of patent boundaries. This evolution emphasizes the importance of considering potential equivalents early in the patent process and managing prosecution history carefully to ensure robust patent protection. The key takeaway is that any amendment or argument presented during prosecution can limit the ability to claim infringement under the doctrine of equivalents. This highlights the need for strategic foresight and diligent prosecution management to maintain strong patent protection.

‘Design’ Eligibility of an ‘Artistic’ Work

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 Section 15(2) of the Copyright Act provides that Copyright in any design, which is capable of being registered under the Designs Act, 2000 (16 of 2000) but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person. This section prevents someone from claiming copyright protection for designs that are actually mass-produced through an industrial process.

In Cryogas Equipment Pvt. Ltd. v. Inox India Ltd, the Supreme Court of India passed an interesting judgement in April 2025, on the interpretation of this Section. The respondent Inox claimed that the drawings of the design of their tanker and other internal parts of semi-trailers were protected as “artistic work” under the Copyright Law, and alleged infringement against the Appellant.  The Appellants, sought the rejection of the suit on the grounds that it was not maintainable under Section 15(2) of the Copyright Act,1957. Their main contention was that the drawings for which Inox has claimed copyright protection fall under the definition of a ‘design’ under Section 2(d) of the Designs Act, and the articles bearing the designs were reproduced more than 50 times. This would bring them within the scope of of Section 15(2) of the Copyright Act.

The Supreme Court established a structured “two-pronged approach” to essentially resolve the challenge caused by Section 15 (2) of the Copyright Act. This requires an analysis of whether:

1. the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act, or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act;
2. if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act.

Further, the Supreme Court observed that the High Court was correct in rejecting the Appellants’ application under Order VII Rule 11 CPC and reaffirmed that the said provision cannot be used as a means to prejudge factual disputes in complex IP matters. Even though the Supreme Court did not decide regarding the ‘design eligibility’ of the Respondent’s drawings or whether the work in question is copyright protected or not, the analysis done by the Court brings clarity to the complexities arising from Section 15(2) of the Act.

Copyright – Use of Film Songs at Weddings

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Indian weddings over the years have moved on from the sombre settings of religious rituals to more exuberant functions with relatives and friends joining in. Modern-day weddings are curated by professional event managers or wedding planners. Film music, and songs have always been a part and parcel of these occasions, then and now. It is a practice to share images and video recordings of these functions with creative content creators, and editors who add film songs of their choice that aptly blend in with the on-screen image, with nary a thought of infringing copyright. Many  copyright owners and authors have voiced their concern against use of their content. In their opinion, such use that leads to service providers, like DJs, wedding planners and event managers making commercial gain, is infringement of rights over their creativity.

In the Indian context, fair use exception for social festivities is covered under Section 52(1) of the Copyright Act 1957 which expressly stipulates as follows: (za) the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority. Explanation. —For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage. Despite the provision under Section 52(1) (za) in the Indian Copyright Act of 1957, which exempts weddings and associated functions from copyright infringement actions, confusion prevails. The DPIIT’s public notification dated 24^th  July 2023, issued by the Ministry of Commerce and Industry, clarified that playing music at wedding functions does not constitute copyright infringement under Section 52(1) (za) of the Copyright Act, 1957. This notification also cautioned the General Public to not accede to any uncalled demand from any individual/ organisation/ copyright society in violation of Section 52(1) (za).

In the recent matter of Canvas Communication vs Phonographic Performance Limited (PPL), the plaintiff had relied on DPIIT’s 2023 notification to press for an N.O.C.  In an I.A. filed in this case,  a decree of declaration was sought, that the utilization of the defendant’s sound recordings by the plaintiff, as part of wedding-related events, does not constitute an infringement of the defendant’s copyright. The Plaintiff, an event management company wanted an NOC from the defendant for a wedding event in February 2024 comprising a pre-wedding sangeet, the marriage solemnization ceremony, and a post-wedding cocktail party, at separate venues in Delhi, However, the defendant refused them an NOC.  The defendant’s counsel argued that the exemption under Section 52(1) (za) of the Copyright Act, 1957, applies only to the bona fide religious ceremony i.e. solemnization of the marriage alone and not to other wedding-related events. The Senior Counsel further contended that the exemption does not extend to marriage ceremonies held at commercial premises or to event planners under the said provision.

After hearing the parties, the Delhi High Court asked the plaintiff to pay a deposit of One Lakh Rupees for playing the music-sound recordings of the defendant at the sangeet and cocktail party. While passing the order, the Court stated that its order was just a pro-tem measure, which would have no bearing on the merits of the case. In  January 2024, the State of Goa also issued a circular following the DPIIT notification of July 2023. It stated that (i) no permission or NOC is needed for using sound recordings at religious ceremonies, including weddings; (ii) requiring permission from copyright societies violates section 52(1) (za); and (iii) action should be taken against copyright societies or hotels demanding royalties for such use. PPL challenged this circular in court, claiming the Government exceeded its authority by interpreting the law and broadening the scope of Section 52(1) (za). The Bombay High Court ruled in favour of PPL, declaring the circular as ultra vires and infringing copyright holders’ statutory rights.

The recent DPIIT ‘s 2024 notification places the 2023 public notice in abeyance, pending the outcome of the appeal against the order issued in the Novex case by the Punjab and Haryana High Court. Accordingly, the 2023 notice will either be upheld or revoked based on the decision in the pending appeal.

In this context, key question is whether the provisions of Section 52(1) (za), as regards the interpretation of the character of “bonafide religious ceremony” stand the test of time. This is especially pertinent given the highly commercialised nature of contemporary theme weddings or destination weddings, which prioritize spectacle over solemnity. Such events often take away the ‘religious’ character of the wedding function which are  overshadowed by commercial interests. Suffice to say that until the courts come out with a firm interpretation and ruling, all those who shake a leg to filmy songs at wedding functions are skating on thin ice. Event managers can push their luck and continue to test the limits, while copyright societies are left grinding their teeth.

 

WIPO Treaty on IP, Genetic Resources, and TK

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After nearly 25 years, at the Diplomatic Conference to Conclude an International Legal Instrument  Relating to Intellectual Property, Genetic Resources and Traditional  Knowledge Associated with Genetic Resources, the WIPO adopted a landmark Treaty on Intellectual Property, Genetic Resources, And Associated Traditional Knowledge in May 2024. For biodiversity-rich countries like India, the Treaty is highly significant. The Ministry of Commerce and Agriculture hailed the treaty as a “big win for India and the Global South.” The treaty recognizes the connection between local communities and their genetic resources (GR) and Alternative Traditional Knowledge (ATK) in the global IP community.

It is expected that the mandatory disclosure regime will enable countries, especially those party to the Convention on Biodiversity (CBD) or the Nagoya Protocol, to fulfil their obligations on equitable benefit sharing. The treaty is specifically designed to address the intricacies and conflicts arising within the intellectual property system, particularly with regards to patents related to traditional knowledge. Its primary objective is to ensure that provider countries of genetic resources and associated traditional knowledge receive fair compensation and rightful recognition. This Treaty would play a vital role in promoting sustainable development, fostering innovation, and ensuring equitable benefits for Indigenous communities, while also upholding ethical research standards and clarifying patent application processes related to genetic resources and traditional knowledge.

The treaty has also faced criticism for not effectively tackling the issue of biopiracy of genetic resources and associated traditional knowledge using patents. One major concern is that the treaty undermines the ability of countries to take action. Article 5 of the Treaty limits the freedom of countries to revoke patents in case of failure to disclose information. As per the treaty, a contracting party cannot revoke, invalidate, or render a patent unenforceable based solely on an applicant’s failure to disclose, unless there is evidence of fraudulent intent with regard to such disclosure.

India’s patent regime, as governed by the Indian Patents Act and the Biological Diversity Act, 2002, provides robust protection for genetic resources (GRs) and associated traditional knowledge (ATK). However, the implementation of the Treaty may lead to conflicts with the existing Indian regulations, particularly regarding retroactive cancellation of patents and disclosure requirements. Critics argue that the treaty could undermine the existing benefit-sharing regime and fail to create an effective disclosure regime. This could inadvertently legitimize biopiracy. Nevertheless, the treaty is being considered a much-needed step in the right direction towards better protection of biodiversity and traditional knowledge on a global scale. It is anticipated that the Government of India will ratify the treaty in the near future, given the treaty’s significance in safeguarding Biological Diversity (BD) and Traditional Knowledge (TK).

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