Maldives Enacts Landmark Trademark Act 2025: First Comprehensive Statutory Framework Replacing Cautionary Notice System

 

Summary

The Republic of Maldives enacted its first comprehensive Trademark Act (Law No. 19/2025), establishing a modern registration regime aligned with international standards to replace the long-standing informal cautionary notice system. The Act introduces examination procedures, opposition processes, protection for well-known marks, and civil and criminal remedies, with a twelve-month implementation period before taking effect on November 11, 2026.

Historic Legislative Development

On November 11, 2025, the Republic of Maldives achieved a historic milestone in intellectual property law by enacting the Trademark Act (Law No. 19/2025), establishing the country's first comprehensive statutory framework for trademark protection. This landmark legislation represents a transformative shift from the Maldives' traditional reliance on informal cautionary notice publications to a modern, internationally aligned registration system featuring robust examination procedures, structured opposition mechanisms, and comprehensive enforcement remedies. The Act is scheduled to come into force twelve months after its enactment, on November 11, 2026, providing a transition period for stakeholders to prepare for the new regime and for the government to establish the necessary administrative infrastructure, procedural regulations, and fee structures.

Institutional Framework: Maldives Intellectual Property Office Act 2025

The Trademark Act will operate in conjunction with the Maldives Intellectual Property Office Act 2025 (Law No. 12/2025), which establishes the institutional infrastructure necessary for effective intellectual property administration in the Maldives. The IP Office Act creates the legal foundation for a dedicated intellectual property office responsible for examining trademark applications, maintaining the national trademark register, conducting opposition proceedings, and administering enforcement mechanisms. The IP Office Act is set to come into effect on January 1, 2026, providing a ten-month period for the IP Office to operationalize before the substantive provisions of the Trademark Act take effect. This staggered implementation ensures that administrative capacity, trained personnel, and operational systems are in place before trademark applications can be filed and processed under the new statutory regime.

Regulatory Framework and Implementation Timeline

While the Trademark Act establishes the substantive legal framework for trademark protection, the detailed procedures, fee schedules, and operational requirements will be governed by implementing regulations that have not yet been published. The legislation mandates that these regulations must be promulgated and brought into force no later than May 11, 2027—eighteen months after the enactment of the Act and six months after the Act itself takes effect. These regulations will prescribe critical operational details including application procedures, examination standards, opposition filing requirements, renewal processes, recordal procedures for assignments and licenses, and fee structures for all trademark-related services. Until the regulations are published, certain operational aspects of the new system will remain unclear, requiring trademark practitioners and rights holders to monitor regulatory developments closely.

Key Features of the Maldives Trademark Act 2025

Broad Definition of Trademark

The Act adopts a modern, expansive definition of a trademark as "any sign capable of distinguishing the goods or services of one undertaking from those of another." This definition encompasses traditional word and device marks, as well as diverse forms of brand identification including names, letters, numbers, figurative elements, symbols, shapes, patterns, and combinations thereof. The broad definition aligns with international best practices and permits registration of non-conventional marks such as three-dimensional shapes, color combinations, and potentially other non-visual signs, subject to their capacity to function as source identifiers and comply with graphical representation requirements that will be specified in the implementing regulations.

Certification Marks and Collective Marks

The Act provides statutory recognition and protection for certification marks and collective marks, reflecting international standards for specialized categories of trademarks. Certification marks indicate that goods or services possess particular characteristics, quality standards, geographical origin, or other attributes certified by the mark owner. Collective marks are used by members of associations or groups to identify goods or services originating from members of the collective. These provisions enable industry associations, cooperatives, geographical indication groups, and standards organizations to protect collective branding and quality certification systems under Maldivian law.

Convention Priority

The Act includes provision for claiming convention priority, allowing applicants who have filed trademark applications in other jurisdictions to claim the benefit of their foreign filing dates when filing subsequent applications in the Maldives, provided the Maldives application is filed within six months of the initial foreign filing. However, it is important to note that the Maldives has not yet acceded to the Paris Convention for the Protection of Industrial Property, which establishes the international framework for reciprocal priority rights. Until the Maldives formally accedes to the Paris Convention, the practical utility of the convention priority provision may be limited, as foreign applicants may not be able to claim Maldivian priority when filing in Paris Convention member states, and vice versa. Nevertheless, the inclusion of this provision signals the Maldives' intention to align with international intellectual property norms and potentially accede to the Paris Convention in the future.

Protection for Well-Known Marks

The Act expressly provides protection for well-known marks, recognizing that certain trademarks have acquired such extensive reputation and recognition that they merit protection beyond the specific goods and services for which they are registered. This provision allows owners of well-known marks to prevent registration and use of identical or similar marks on dissimilar goods or services where such use would indicate a connection with the well-known mark owner and would likely damage the owner's interests. The protection of well-known marks reflects international standards established by the Paris Convention and the TRIPS Agreement, ensuring that famous international brands receive appropriate protection in the Maldivian market even if they are not registered or used extensively in the country.

Examination on Absolute and Relative Grounds

The Act establishes a substantive examination system requiring the Maldives Intellectual Property Office to examine trademark applications on both absolute and relative grounds. Absolute grounds for refusal include objections based on lack of distinctiveness, descriptiveness, deceptiveness, public policy considerations, and functional characteristics. Relative grounds for refusal involve conflicts with earlier registered or pending trademarks, including likelihood of confusion with prior marks. This dual examination framework ensures that only distinctive, non-conflicting marks receive registration, protecting both the public interest and the rights of earlier trademark owners. The detailed examination standards and procedures will be specified in the implementing regulations.

Three-Month Opposition Period

Following substantive examination, applications that meet registration requirements will be published for opposition, providing third parties with a three-month period to file oppositions challenging the registration. This opposition mechanism allows earlier rights holders, competitors, and other interested parties to protect their interests by objecting to registrations that may conflict with their prior rights or violate substantive legal requirements. The three-month opposition period aligns with international practice and ensures adequate opportunity for third-party participation in the registration process while maintaining reasonable procedural timelines.

Ten-Year Registration Terms and Renewal

Trademark registrations under the Act will have an initial term of ten years from the filing date, renewable for successive ten-year periods upon payment of prescribed renewal fees. The Act provides a six-month grace period following the expiration of a registration term, during which renewal may still be effected upon payment of additional late renewal fees. This renewable protection structure aligns with international standards and provides trademark owners with indefinite protection so long as they maintain their registrations through timely renewal and continue to use their marks in commerce.

Vulnerability to Cancellation for Non-Use

The Act introduces a use-it-or-lose-it principle, rendering trademark registrations vulnerable to cancellation for non-use after five years from the date of registration. Any interested party may petition for cancellation of a registration on the grounds that the trademark has not been genuinely used in the Maldives in connection with the goods or services for which it is registered during a continuous five-year period. This provision prevents trademark warehousing and ensures that the register reflects marks that are actually in commercial use, freeing up unused marks for adoption by bona fide commercial users. The trademark owner may defend against a non-use cancellation action by demonstrating genuine use during the relevant period or by establishing valid reasons for non-use.

Civil and Criminal Remedies for Infringement and Counterfeiting

The Act establishes comprehensive civil and criminal enforcement mechanisms to protect trademark rights. Civil remedies available to trademark owners include injunctions restraining infringement, damages or accounts of profits compensating for economic harm, delivery up and destruction of infringing goods, and declaratory relief. Criminal penalties are prescribed for intentional trademark infringement and counterfeiting, reflecting the serious nature of trademark piracy and the need for deterrent sanctions. The availability of both civil and criminal remedies provides trademark owners with flexible enforcement options tailored to the severity and nature of the infringement.

Border Control Enforcement

Recognizing that the Maldives serves as both a destination for imported consumer goods and a transshipment point for regional trade, the Act includes border control enforcement provisions empowering customs authorities to detain and seize suspected counterfeit goods at ports of entry. Trademark owners may record their registrations with customs authorities and request suspension of release of goods bearing infringing marks. This ex officio enforcement mechanism provides a critical line of defense against the importation and distribution of counterfeit products, protecting both trademark owners and Maldivian consumers from fraudulent goods.

Status of Existing Cautionary Notices

For decades, trademark protection in the Maldives has been achieved through the publication of cautionary notices in newspapers and official gazettes, warning the public against unauthorized use of particular marks. While this informal system provided a degree of public notice and potential common-law rights, it lacked the legal certainty, enforceability, and international recognition associated with formal trademark registration systems. A critical question arising from the enactment of the Trademark Act concerns the legal status and treatment of existing cautionary notice publications.

Absence of Express Transitional Provisions: The Act contains no express transitional provisions governing the treatment of marks previously published as cautionary notices. This absence creates legal uncertainty regarding whether, and to what extent, cautionary notice holders can claim statutory priority, seniority, or other preferential rights when applying for formal registration under the new system. In the absence of such provisions, trademark owners should not expect to automatically claim statutory priority or seniority for their marks based solely on cautionary notice publication history. The publication dates of cautionary notices will not be recognized as official filing dates or priority dates under the new registration system unless specific transitional regulations are promulgated to confer such rights.

Evidential Value of Cautionary Notices: Notwithstanding the lack of statutory priority, existing cautionary notice publications are anticipated to serve as valuable evidence of prior use and established trademark rights when applying for formal registration under the new Act. Evidence of long-standing cautionary notice publication, coupled with proof of actual commercial use in the Maldives, may be relevant in several contexts: (i) demonstrating acquired distinctiveness for marks that might otherwise be considered descriptive or non-distinctive; (ii) establishing earlier rights in opposition proceedings against conflicting applications; (iii) supporting claims for well-known mark status; and (iv) defending against non-use cancellation actions by demonstrating historical use predating formal registration. While such evidence may not constitute legal priority under the Act, it could prove decisive in examination proceedings, opposition disputes, and litigation concerning trademark validity and ownership.

Recommendation to Maintain Cautionary Notices: In light of the legal uncertainty surrounding the status of cautionary notices and the potential evidential value of continued publication, we strongly recommend that trademark owners maintain their existing cautionary notice publications until the new registration system is fully operational and they have secured formal registrations for their marks. Continued publication during the transition period ensures maximum protection of trademark rights, preserves evidence of continuous use, and safeguards against potential arguments that rights were abandoned during the transition to the new system.

Reported 'Transition' Period: November 11, 2026 to November 11, 2027

It has been reported in intellectual property circles that the Maldives government intends to establish a twelve-month 'transition' period running from November 11, 2026 (when the Act takes effect) to November 11, 2027, during which trademark owners who previously relied on cautionary notices must formally register their marks in order to preserve their prior rights. The reported purpose of this transition period is to provide cautionary notice holders with a priority window to file formal applications and secure registrations before the general public can apply for the same marks.

Legal Uncertainty: In the absence of express transitional provisions in the Act itself granting priority or seniority rights to marks published as cautionary notices, the legal mechanism by which such a transition period would operate remains unclear. Absent specific statutory language or implementing regulations establishing the terms, conditions, and legal effects of the transition period, it is difficult to determine: (i) which cautionary notices would qualify for transitional benefits; (ii) what evidence would be required to demonstrate entitlement; (iii) whether transitional applications would receive accelerated examination or registration; (iv) how conflicts between multiple cautionary notice holders claiming rights to the same mark would be resolved; and (v) what legal consequences would flow from failure to file during the transition period.

Anticipated Regulatory Clarification: It is expected that the implementing regulations, which must be published no later than May 11, 2027, will clarify the existence, parameters, and legal effects of any transition period. Rights holders are advised to monitor regulatory developments closely and prepare to file applications promptly when the registration system opens to avoid potential loss of priority or preferential treatment.

Strategic Recommendations for Rights Holders

Trademark owners with commercial interests in the Maldives should undertake the following preparatory measures in anticipation of the new registration system:

First, conduct a comprehensive audit of existing trademark portfolios to identify all marks currently protected through cautionary notices, assess their continued commercial relevance, and determine priority for formal registration under the new Act.

Second, compile and organize documentation evidencing prior use of marks in the Maldives, including dated samples of use on goods and in advertising, sales data, market research demonstrating reputation and recognition, and records of cautionary notice publications. This evidence will be critical in supporting applications, defending against oppositions, and establishing priority in disputes.

Third, monitor the publication of implementing regulations to understand procedural requirements, fee structures, and any transitional provisions that may affect filing strategies and timelines.

Fourth, maintain existing cautionary notice publications throughout the transition period to preserve evidence of continuous use and avoid potential challenges to rights.

Fifth, prepare to file applications promptly when the registration system opens, particularly if a transitional priority period is established for cautionary notice holders.

International Alignment and Future Accessions

The enactment of the Trademark Act positions the Maldives to participate more fully in the international intellectual property system. While the country has not yet acceded to key international treaties such as the Paris Convention, the Madrid Protocol, or the Nice Agreement, the establishment of a modern trademark registration system aligned with international standards represents an essential precondition for such accessions. Future participation in these international frameworks would enable Maldivian trademark owners to secure protection abroad more efficiently through the Madrid System for international registration, while facilitating foreign trademark owners' access to the Maldivian market through streamlined international filing procedures. The Maldives' adoption of international classification systems, well-known mark protection, and convention priority provisions signals a clear trajectory toward fuller integration into the global IP regime.

Significance

The enactment of the Maldives Trademark Act 2025 (Law No. 19/2025) represents a watershed transformation in the country's intellectual property landscape, replacing decades of informal cautionary notice practice with a modern, comprehensive statutory registration system. The Act introduces internationally aligned standards for trademark protection, including broad definitions of protectable signs, specialized provisions for certification and collective marks, protection for well-known marks, substantive examination on absolute and relative grounds, structured opposition procedures, renewable ten-year registration terms, use-based cancellation mechanisms, and robust civil and criminal enforcement remedies including border control measures. The staggered implementation timeline—with the IP Office Act taking effect on January 1, 2026, the Trademark Act taking effect on November 11, 2026, and implementing regulations due by May 11, 2027—provides a transitional period for establishing administrative infrastructure and clarifying operational procedures. The absence of express transitional provisions for cautionary notices creates legal uncertainty that will hopefully be resolved through implementing regulations, but trademark owners are advised to maintain cautionary notice publications and prepare comprehensive evidence of prior use while monitoring regulatory developments. The reported twelve-month transition period from November 11, 2026 to November 11, 2027 may provide priority filing opportunities for cautionary notice holders, subject to regulatory clarification. This historic legislative development elevates the Maldives' trademark system to international standards, providing enhanced legal certainty and enforcement mechanisms for domestic and foreign brand owners, and positions the country for potential accession to key international IP treaties. Rights holders should conduct portfolio audits, compile evidence of prior use, and prepare for timely transition to avoid loss of protection in this rapidly evolving legal landscape.

Nepal Issues Critical Compliance Deadlines for Pending Trademark Applications Following September 2025 Civil Unrest

 

Summary

The Government of Nepal has issued mandatory compliance deadlines for trademark applicants following the destruction of physical trademark files during the September 2025 GenZ protest. Applicants with pending applications exceeding seven years must submit required documents by February 28, 2026, while applicants whose marks completed opposition periods must apply for registration certificates by May 31, 2026, failing which applications will be automatically cancelled.

Background and Context

On December 1, 2025, the Department of Industry, Ministry of Industry, Commerce and Supplies, Government of Nepal, issued a critical notice regarding trademark registration procedures following unprecedented civil disturbances. This notice supersedes and clarifies an earlier notification dated August 19, 2025, which had been temporarily suspended by order dated September 24, 2025. The suspension was necessitated by widespread arson, vandalism, and looting that occurred nationwide on September 9, 2025, during the GenZ protest. These incidents resulted in the destruction of numerous physical trademark application files maintained by the Industrial Property Section of the Department of Industry, creating a hostile operational environment and severely disrupting administrative functions.

Impact on Trademark Registry Operations

The civil unrest caused significant damage to the physical infrastructure and documentary records of Nepal's trademark administration system. The destruction of paper files, many of which contained original application materials, supporting documents, and correspondence dating back several years, has necessitated a comprehensive review of pending applications and the establishment of strict compliance timelines to reconstitute the official record. The Department has acknowledged that the hostile conditions created by the September 9 incidents temporarily paralyzed departmental operations, requiring a systematic approach to resume normal trademark registration services while addressing the documentary gaps created by the file destruction.

Mandatory Requirement 1: Applications Pending Due to Incomplete Documents

The Department has established a 90-day compliance window expiring on February 28, 2026 for all trademark applicants whose applications have been pending for more than seven (7) years due to incomplete documentation. This category encompasses applications that were filed with the Nepal Trademarks Registry but remain incomplete because the applicant failed to submit required supporting documents, respond to official objections, or comply with formal requirements during the examination process.

Mandatory Action Required: All affected applicants must file a formal request for resumption of examination, together with all outstanding required documents, within the 90-day period commencing from December 1, 2025. The submission must include all documents that were previously requested by the Registry but not supplied, as well as any additional materials necessary to complete the examination of the application.

Consequence of Non-Compliance: The Department has explicitly warned that failure to submit the required documents by the February 28, 2026 deadline will result in automatic (suo moto) cancellation of all trademark applications that have been pending for a period exceeding seven years. This cancellation action will be taken unilaterally by the Trademarks Registry, without requiring any further notice to the applicant. Once cancelled, such applications will be deemed abandoned and permanently removed from the official records of the Registry. No revival or reinstatement of abandoned applications will be permitted after the deadline.

Policy Going Forward: The Department has announced that this seven-year rule will apply prospectively to all trademark applications. Any application that remains pending for more than seven years due to the applicant's failure to submit required documents will, henceforth, be automatically deemed abandoned and removed from official records. This represents a significant policy shift aimed at clearing the backlog of dormant applications and ensuring that only active applicants with genuine commercial interests maintain their place in the registration queue.

Mandatory Requirement 2: Applications Completing Opposition Period

The Department has established a six-month compliance window expiring on May 31, 2026 for trademark applicants whose marks were published in the Industrial Property Bulletin prior to the issuance of this December 1, 2025 notice, and whose opposition period has expired without any third-party opposition being filed.

Under Nepal's trademark registration system, applications that successfully pass examination are published in the Industrial Property Bulletin, allowing third parties an opportunity to file oppositions against registration. If no opposition is filed within the statutory opposition period, the application becomes eligible for final registration, and the applicant must submit a formal request for issuance of the Registration Certificate, along with payment of prescribed fees and submission of any final documents required by the Registry.

Mandatory Action Required: All applicants whose trademark applications were published in the Industrial Property Bulletin before December 1, 2025, and which have completed the opposition period without facing opposition, must submit a formal application for issuance of the Registration Certificate within six months from December 1, 2025 (i.e., by May 31, 2026). The application must be accompanied by all required documents, including proof of payment of registration fees, power of attorney (if filed through an agent), and any other materials specifically requested by the Registry.

Consequence of Non-Compliance: If the application for issuance of the Registration Certificate is not submitted within the six-month deadline, the underlying trademark applications will be cancelled by the Registry. This cancellation will result in the loss of the application's priority date and all rights associated with the pending application. Applicants who fail to meet this deadline will be required to file entirely new applications if they wish to pursue trademark protection, and such new applications will be subject to the priority dates of any intervening applications or registrations for similar marks.

Legal and Procedural Implications

The December 1, 2025 notice represents an extraordinary administrative measure prompted by exceptional circumstances. The Department's decision to impose strict compliance deadlines reflects the need to reconstitute the official trademark record following the file destruction incident, while also addressing the longstanding problem of dormant applications that occupy the register without progressing toward registration. The automatic cancellation provisions serve multiple policy objectives: (i) clearing backlogs created by inactive applicants; (ii) ensuring that only applicants with genuine commercial interests maintain their applications; (iii) freeing up trademark availability for active commercial users; and (iv) facilitating administrative efficiency by removing files that have been pending without progress for extended periods.

Recommendations for Affected Parties

Trademark applicants and their legal representatives in Nepal should take immediate action to identify applications falling within the two categories specified in the notice. For applications pending due to incomplete documents for more than seven years, applicants should prioritize gathering all outstanding materials and filing comprehensive responses by February 28, 2026. For applications that have completed opposition periods, applicants should verify publication dates and opposition period expiry dates, and ensure that applications for registration certificates are filed well before the May 31, 2026 deadline. Given the strict and automatic nature of the cancellation provisions, compliance with these deadlines is essential to preserve trademark rights and avoid loss of priority dates.

Broader Context: Trademark Administration in Nepal

Nepal's trademark registration system operates under the Patent, Design and Trademark Act, 1965, and is administered by the Department of Industry under the Ministry of Industry, Commerce and Supplies. The system has historically relied on paper-based filing and record-keeping, making it vulnerable to the type of physical file destruction experienced during the September 2025 civil unrest. The Department's response to this crisis—imposing strict compliance deadlines and establishing automatic cancellation mechanisms—reflects both the immediate need to address the documentary gaps created by file destruction and the longer-term policy goal of modernizing trademark administration by eliminating inactive applications and encouraging digitalization of records.

International and Regional Implications

For foreign trademark owners and international businesses with pending applications in Nepal, the December 1, 2025 notice requires urgent attention. Many multinational corporations maintain defensive trademark portfolios in Nepal as part of broader South Asian regional strategies. Failure to comply with the February 28, 2026 and May 31, 2026 deadlines could result in loss of trademark rights in the Nepalese market, creating opportunities for bad-faith applicants to register identical or similar marks. International applicants are advised to coordinate with local Nepalese trademark agents to ensure compliance with the notice requirements and to verify the status of all pending applications in light of the file destruction incident.

Significance

The December 1, 2025 notice by Nepal's Department of Industry represents a watershed moment in the country's trademark administration, prompted by the extraordinary circumstances of the September 2025 civil unrest and file destruction incident. The imposition of strict compliance deadlines—February 28, 2026 for incomplete applications pending over seven years, and May 31, 2026 for applications completing opposition periods—coupled with automatic cancellation provisions, reflects a decisive administrative response aimed at reconstituting official records while simultaneously addressing longstanding backlog issues. The establishment of a prospective seven-year abandonment rule signals a permanent policy shift toward more rigorous application management. This development has significant implications for domestic and international trademark applicants, requiring immediate action to preserve rights and avoid automatic cancellation. The notice also highlights the vulnerabilities of paper-based trademark administration systems and may accelerate Nepal's transition toward digital record-keeping and modernized trademark examination procedures. For the broader South Asian intellectual property landscape, Nepal's response provides a case study in how trademark offices can address extraordinary disruptions while implementing structural reforms to improve administrative efficiency and reduce application backlogs.

Delhi High Court Holds That Trademark Proprietor Cannot Claim Monopoly Over Entire Class of Goods

Summary

The Delhi High Court clarified that trademark protection extends only to the specific goods within the class for which the mark is registered, and a proprietor cannot claim exclusivity over all goods in that class merely because of a similar mark, particularly when not using the mark for those goods.

Introduction

This appeal challenges the judgment of the Patiala House District Court, which dismissed the Appellant's application for interim injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. The underlying suit seeks permanent injunction restraining the Respondent from using the trademark "PRUEASE" (Impugned Mark) on the ground that it is deceptively similar to the Appellant's trademark "PRO-EASE" (Subject Mark). Both marks are registered in Class 5 of the Trade Marks Registry, but are used for entirely different product categories within that class.

Background and Facts

The Appellant conceived and adopted the Subject Mark "PRO-EASE" in 2012 for use in relation to sanitary napkins, sanitary towels, sanitary pads, menstruation pads, menstruation briefs, sanitary panties, panty liners for hygienic or menstrual purposes, deodorizing agents and refresheners, panty shields for hygienic or menstrual purposes, menstruation tampons, sanitary wipes, paper wipes impregnated with sanitizers, paper wipes impregnated with disinfectants, and allied and other cognate goods. The Respondents, on the other hand, adopted the Impugned Mark "PRUEASE" in 2017 for medicinal and pharmaceutical preparations specifically intended for treating constipation, containing the active pharmaceutical ingredient Prucalopride.

Appellant's Contentions

The Appellant contended that the learned District Judge failed to appreciate that the Appellant is entitled to extend the use of the Subject Mark to allied and cognate goods, including pharmaceuticals for treating menstrual cramps and other related conditions. The Appellant argued that the Respondents cannot be permitted to adopt a deceptively similar mark merely on the basis that the Appellant is not presently using its trademark for those particular pharmaceutical goods. The Appellant further submitted that as the registered proprietor of the Subject Mark in Class 5, it is entitled to protection against the Respondents' unauthorized use, and that the Respondents cannot claim proprietorship over a similar mark within the same class.

Respondent's Contentions

The Respondents submitted that they independently conceived and adopted the Impugned Mark for medicinal and pharmaceutical preparations and have been continuously using it since 2017 without interruption. They contended that the element "PRU" in their mark is derived from the active pharmaceutical ingredient Prucalopride, while "Ease" denotes ease or relief from constipation. According to the Respondents, infringement requires a likelihood of confusion among the public, which is neither probable nor possible in the present case, as no reasonable consumer would confuse a sanitary pad with a pharmaceutical product intended for constipation relief.

The Respondents also argued that the Appellant is not entitled to discretionary relief due to suppression of material facts, including the Respondents' user affidavit demonstrating use of the Impugned Mark since 2017. They further submitted that the Appellant concealed its own earlier position in its reply to the Examination Report and in the counter-statement before the Registry, wherein it had expressly stated that sanitary napkins, pharmaceutical goods, and ayurvedic medicines are distinct, and that concurrent use of the marks would not cause confusion. The Respondents contended that the Appellant is estopped from approbating and reprobating and cannot now take a contradictory stand.

The Respondents emphasized that although the parties' goods fall under Class 5, they are entirely distinct and cannot be regarded as allied or cognate. The goods move through different trade channels, and there is no likelihood of confusion or even initial interest confusion due to their inherently different nature. They asserted that they have no intention of using the Impugned Mark for sanitary pads, napkins, or related goods, which is evident from their withdrawal of oppositions filed against the Appellant's applications for such goods. Additionally, the Respondents sought deletion of "hygiene and sanitary preparations" from the specification of goods in their own trademark application for the Impugned Mark, demonstrating their bona fides.

High Court's Analysis and Findings

The Delhi High Court observed that there is no dispute regarding the nature of the parties' respective goods. The Appellant uses the Subject Mark for sanitary napkins, sanitary towels, pads, and related feminine hygiene products, whereas the Respondents use the Impugned Mark for a pharmaceutical preparation intended to relieve constipation. The Court held that these goods are neither allied nor cognate. It agreed with the findings of the learned District Judge that the nature, purpose, trade channels, and consumer base of the respective goods are entirely distinct, leaving no likelihood of confusion arising from the concurrent use of the marks.

Key Legal Principle: No Monopoly Over Entire Class

The High Court emphasized a critical principle of trademark law: a trademark proprietor cannot claim monopoly over all goods within an entire class, particularly when the proprietor is not using the mark for certain goods falling within that class. This principle prevents trademark owners from warehousing rights over products they do not manufacture or sell, merely because those products fall within the same broad classification. The Court found that the Appellant's registration in Class 5 does not confer absolute rights over all pharmaceutical, sanitary, and health-related products within that class, but only extends to the specific goods for which the mark is actually used.

No Passing Off Established

The Court also found no case of passing off, noting that the packaging, presentation, and overall trade dress of the parties' products do not suggest any possibility of confusion. Consumers purchasing feminine hygiene products would not reasonably confuse them with constipation relief medication, given the entirely different purposes, purchasing contexts, and product characteristics.

Three-Fold Test for Interim Injunction

For the grant of an interim injunction, the Appellant was required to satisfy the three-fold test of: (i) establishing a prima facie case; (ii) demonstrating balance of convenience; and (iii) showing that irreparable harm would result if relief were denied. The Court held that the Appellant failed to establish a prima facie case. It further found that the balance of convenience favoured the Respondents, who had prima facie demonstrated continuous use of the Impugned Mark since 2017—nearly seven years before the filing of the suit.

Bona Fide Adoption and Industry Practice

The Respondents' adoption of the Impugned Mark was found to be bona fide and consistent with pharmaceutical industry practice, wherein parts of the chemical compound name are combined with additional descriptive elements to formulate a coined mark. In this case, the Respondents adopted "PRU" from the active ingredient Prucalopride and added "Ease" to indicate the relief provided by the medication. This method of trademark creation is widely recognized in pharmaceutical branding.

Irreparable Injury Not Established

With respect to irreparable injury, the Court held that the Appellant could always be compensated by damages should it ultimately succeed in the suit, and therefore no irreparable harm was established warranting the extraordinary remedy of interim injunction.

Significance

This judgment reinforces important limitations on the scope of trademark rights and clarifies that registration in a particular class does not grant blanket monopoly over all goods within that class. The decision emphasizes the importance of actual use, distinctiveness of goods, and likelihood of confusion in trademark infringement analysis. It protects legitimate competitors from overbroad trademark claims and ensures that trademark law serves its intended purpose of preventing consumer confusion rather than granting unjustified monopolies. The ruling also highlights the doctrine of estoppel, preventing parties from taking contradictory positions in different proceedings. This case will serve as valuable precedent in disputes involving similar marks used for different goods within the same class, particularly in the pharmaceutical and health products sectors. 

Supreme Court Formulates Two-Pronged Test to Determine Eligibility for Protection Under Designs Act

 

Summary

The Supreme Court of India developed a comprehensive two-pronged test to resolve complexities arising from Section 15(2) of the Copyright Act, providing clarity on whether a work qualifies for protection under the Designs Act and establishing standards for distinguishing artistic works from industrial designs.

Introduction

This appeal concerns a dispute regarding alleged infringement of intellectual property rights relating to the design and manufacture of internal components of Cryogenic Storage Tanks and Distribution Systems mounted on Trailers and Semi-Trailers used for efficient transportation of industrial gases, liquefied natural gas (LNG), and similar substances. On September 24, 2018, Respondent No. 1, Inox India Limited (Inox), filed Trademark Suit No. 3/2019 before the Commercial Court against the Appellants, Cryogas Equipment Private Limited (Cryogas) and LNG Express India Private Limited (LNG Express). Inox alleged that the Appellants infringed two categories of copyright: (i) engineering drawings of LNG Semi-trailers created by Inox (Proprietary Engineering Drawings), and (ii) written details, processes, descriptions, and narrations prepared by Inox employees in developing those drawings (Literary Works). Inox claimed these intellectual property materials were developed to address specific requirements for designing and manufacturing advanced LNG Semi-trailers suitable for Indian road conditions.

Arguments Advanced by the Appellants

The Appellants' counsel contended that LNG and Cryogenic Semi-trailers worldwide are designed in accordance with international standard-setting bodies, including the American Society of Mechanical Engineers (ASME) and the Pressure Equipment Directive (PED). Consequently, all industry participants, including the parties involved, comply with PED requirements and guidelines issued by the Ministry of Road Transport and Highways of India. The Appellants argued that the suit is barred under Section 15(2) of the Copyright Act, as Inox's Proprietary Engineering Drawings are capable of registration under the Designs Act. The Appellants submitted that Inox failed to disclose in its plaint the number of Semi-trailers manufactured through industrial processes. Instead, Inox employed strategic pleading by merely mentioning revenue of ₹122 crores—an attempt to avoid Section 15(2) implications. Given this revenue scale, it is reasonable to infer that Inox produced more than fifty Semi-trailers, thereby attracting the statutory bar under Section 15(2) of the Copyright Act.

Arguments Advanced by the Respondents

The Respondents' counsel refuted these assertions, submitting that the suit concerns two distinct copyright categories: Proprietary Engineering Drawings and Literary Work. Consequently, the reliefs sought are separate in nature, and each intellectual property claim must be evaluated independently, considering its specific attributes and legal implications. They argued that Section 15(2) of the Copyright Act has no application because the Proprietary Engineering Drawings are not capable of registration under the Designs Act, and the Literary Work is not subject to the statutory bar under Section 15(2). The Respondents contended that the Commercial Court erred in treating the Literary Work—which includes details, processes, and descriptions—as merely ancillary to the Proprietary Engineering Drawings. This approach incorrectly presumes that all rights asserted in the plaint are inherently tied to engineering drawings. According to the Respondents, alleged infringement arising from misappropriation of confidential information constitutes a separate legal issue unaffected by Section 15(2). They further argued that the three intellectual property issues raised in the suit are distinct, a fact overlooked by the Commercial Court while allowing LNG Express's application under Order VII Rule 11 of the Code of Civil Procedure.

Supreme Court's Analytical Framework

To resolve this legal conundrum, the Supreme Court examined established jurisprudence and comparative legal frameworks, analyzing: (i) the approach adopted by Indian courts; (ii) factors considered by courts in the United States of America; and (iii) broader international principles illuminating the interplay between copyright and design protection. The Court held that the inquiry cannot proceed on the simplistic assumption that any work not qualifying as an 'artistic work' under the Copyright Act would automatically fall within protection of the Designs Act. Although protection under the Designs Act is of shorter duration than copyright, it is not granted by default and must satisfy specific statutory criteria.

Two-Pronged Test Formulated by the Supreme Court

The Court observed that Indian courts and courts abroad consistently apply the test of 'functional utility' to determine whether a work is eligible for design protection. The Court formulated a two-pronged test to address complexities arising from Section 15(2) of the Copyright Act and to determine whether a work qualifies for protection under the Designs Act:

First Prong: Examine whether the work is purely an 'artistic work' entitled to copyright protection, or whether it is a 'design' derived from an artistic work and subjected to an industrial process, as contemplated under Section 15(2).

Second Prong: If the work does not qualify for copyright protection, apply the test of 'functional utility' to ascertain its dominant purpose and determine whether it qualifies for registration under the Designs Act.

The Court emphasized that this inquiry must be case-specific, guided by statutory provisions, judicial precedents, and comparative legal principles, ensuring that rights under each regime serve their intended objectives without encroaching upon the other. This framework clarifies treatment of works situated at the intersection of copyright and design law, promoting consistency in application of intellectual property rights in India.

Distinction Between Section 15(1) and Section 15(2)

The Court further clarified that Section 15(1) of the Copyright Act applies where a design has been registered under the Designs Act, thereby barring any claim of copyright protection. In contrast, Section 15(2) requires substantive inquiry into whether the drawing in question falls within the ambit of the Designs Act. This necessarily means that a suit cannot be dismissed at the threshold under Order VII Rule 11(d) of the Code of Civil Procedure solely on the basis of the plaint. The central issue remains whether the Proprietary Engineering Drawings constitute 'artistic works' under Section 2(c) of the Copyright Act or fall within the definition of a 'design' under Section 2(d) of the Designs Act—an issue that warrants detailed examination.

Procedural Implications

The Court held that the issue of whether the original artistic work falls within the definition of a 'design' under the Designs Act cannot be determined at the stage of deciding an application under Order VII Rule 11 of the Code of Civil Procedure. At that stage, the court is confined to prima facie examination limited to assessing whether the plaint discloses a cause of action. Determining the true nature of 'Proprietary Engineering Drawings' involves a mixed question of law and fact, which cannot be resolved at a preliminary stage based on superficial or cursory reading of the plaint. Such determination requires full-fledged trial where both parties have opportunity to lead evidence.

Significance

This landmark judgment provides crucial clarity on the intersection between copyright and design law in India. The two-pronged test offers a structured analytical framework for courts, practitioners, and rights-holders to determine whether works qualify for protection under the Copyright Act or the Designs Act. By emphasizing functional utility analysis and requiring case-specific examination, the Supreme Court has ensured that intellectual property regimes operate harmoniously without overlap or conflict. The ruling reinforces that threshold dismissals under Order VII Rule 11 are inappropriate for complex questions involving mixed law and fact, particularly in intellectual property disputes where detailed evidentiary examination is necessary. This decision will significantly influence litigation strategy in copyright and design disputes, ensuring that substantive rights are not defeated by premature procedural determinations. The judgment establishes India's position on applying functional utility tests aligned with international best practices while maintaining fidelity to domestic statutory frameworks.