A New Era for Trademark Law: Inside the Madras High Court’s IP Division
Have you ever wondered how brands, from global giants to local businesses, protect their identities? In India, a significant shift is underway, and the Madras High Court’s Intellectual Property (IP) Division is at the forefront. This specialized court is not just interpreting the law; it’s actively redefining it with a series of groundbreaking judgments that have far-reaching implications for brand protection and fair competition.
This transformation began with the Tribunals Reforms Act, 2021, which dissolved the Intellectual Property Appellate Board (IPAB) and transferred its massive caseload back to the High Courts. In response, the Madras High Court proactively established its own IP Division (IPD) in April 2023, creating a hub of judicial expertise dedicated to the complexities of intellectual Property law and Trademark Rights. Let’s explore some key cases that demonstrate the court’s pragmatic, balanced, and fair approach to trademark law, serving as a guiding light for trademark litigants and IP lawyers in India.
Let’s dive into some of the key cases that showcase the court’s pragmatic, balanced, and fair approach to trademark jurisprudence.
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The Power of a “Well-Known Mark”
One of the most powerful concepts in trademark law is the “well-known mark.” This status grants a brand exceptionally broad protection that extends beyond its specific products to cover all classes of goods and services. The court examines several factors to grant this status, including the brand’s reputation, duration of use, and global presence.
Key Cases and Rulings:
- Lego vs. Leo Foods: The court protected the iconic toy brand Lego against a confectionery company using a nearly identical mark. It ruled that Lego’s well-known status protected it across different product classes, especially since the defendant’s adoption was deemed to be in “bad faith.”
- Royal Enfield: The court formally declared Royal Enfield a well-known mark, protecting not just its name but its entire “trade dress”—the look and feel of its showrooms. This case confirms that both the High Court and the Trademark Registry can grant this powerful status.
- Cycle Brand: This case involved incense sticks versus safety matches. The court found that even though the products were in different classes, they were “allied and cognate” (related in use and sold together), making consumer confusion likely. This reinforces that well-known marks are protected across classifications, especially when goods are related.
Also Read : Can You Trademark a Common Word? A Deep Dive into the ‘STAR’ Battle
When Well-Known Mark Protection Has Its Limits
While powerful, the “well-known” status isn’t an absolute trump card. The court has shown it will protect honest, long-standing businesses in unrelated fields.
Key Cases and Rulings:
- Paragon (Footwear) vs. Paragon (Electric Motors): The footwear giant Paragon, despite its well-known status declared in 2017, could not stop a company that had been honestly using the same name for electric motors since 1977. The court prioritized the respondent’s decades of independent, good-faith use in a completely distinct market, ruling that a later “well-known” declaration cannot retroactively cancel established rights.
- PhonePe vs. BundlePe/LatePay: Digital payment leader PhonePe failed in its attempt to claim exclusive rights over the suffix “Pe.” The court ruled that “Pe” is a common transliteration of a Hindi word and is widely used in the industry (e.g., Google Pay, Paytm). This case shows that popular brands cannot claim ownership over generic or descriptive terms common to their industry.
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Defining “Deceptive Similarity” and Upholding Fairness
A core issue in trademark infringement is deceptive similarity—whether one mark is so similar to another that it’s likely to confuse consumers. The court applies a “sound, sight, and meaning” test from the perspective of an average person with an imperfect memory.
Key Cases and Rulings:
- Lenovo’s “Think” Family vs. “ThinBook”: The court found “ThinBook” to be phonetically and deceptively similar to Lenovo’s famous “Think” family of marks (ThinkPad, ThinkBook). This ruling sets a strong precedent for protecting a “family of marks.”
- Star Plastics vs. S Star Trading Co.: The court protected the petitioner’s use of the common word “Star,” which had acquired distinctiveness through long and extensive use. The defendant’s attempt to hide the words “Trading Co.” in a tiny font was seen as evidence of bad faith.
- Pandian vs. The Registrar of Trademarks: A trademark owner missed the renewal deadline because the Trademark Registry failed to send a mandatory expiry notice. The court ruled in favor of the owner, stating that the Registrar’s failure to provide notice preserves the owner’s right to renew.
- Ramya S. Moorthy vs. The Registrar of Trademarks: The court protected an applicant whose trademark application was deemed “abandoned” after she denied receiving an electronic notice from the registry. It held that the clock for response times starts upon actual receipt of a notice, not just its dispatch, championing the fundamental right to be heard.
Also Read : Rectification & Counterclaims: Procedural Innovations in Madras High Court IP Cases
Strategic Litigation and the Bigger Picture
Sometimes, winning a case isn’t enough; you have to win the right way.
In Gold Medal Electricals vs. S.L. Singh, Gold Medal won its case but appealed a specific finding in the judgment. The registrar, while ruling in their favor, had noted that the marks “Gold Medal” and “Silver Medal” were not similar. Gold Medal feared this observation could be used against them in future disputes. The High Court agreed to set aside that specific adverse finding, showcasing the importance of scrutinizing every part of a legal order to protect a brand’s long-term enforceability.
Conclusion
The Madras High Court’s IP Division is building a reputation for being pragmatic, balanced, and fair. Its judgments consistently look beyond rigid rules to consider commercial realities, protect the rights of honest businesses, and ensure due process for all. By doing so, the court is not only resolving disputes but is also crafting a sophisticated and forward-thinking trademark jurisprudence that will shape the future of intellectual property law in India.
If an IP dispute is impacting your revenue or brand in Chennai or anywhere in Tamil Nadu, don’t wait. Connect with Trademark Lawyers or Legal Consultants in Chennai to review your documents, stress-test your legal position, and outline clear, actionable options to enforce you trademark rights.
Author:
Suresh Kumar is an Advocate at the Madras High Court and Managing Attorney at Unimarks Legal Solutions, Chennai. Since 2008, he has focused on trademark enforcement and litigation across the Madras HC IP Division, Commercial Courts, and District Courts in Tamil Nadu.
Disclaimer: The content provided here for Information purpose only; it shall not be construed as a legal advice. Last reviewed: August 2025.
