Well-known trademark recognition has lost significance: Chander Lall

Senior Advocate Chander Lall has questioned the continuing relevance of “well-known” trademarks in the internet age, arguing that the concept has been overtaken by the realities of digital commerce.

Speaking at a panel discussion organised by the PHD Chamber of Commerce and Industry (PHDCCI) on Navigating Intellectual Property Rights in the Digital Age, Lall observed,

"I think today the well-known mark concept has lost its significance with the internet. We are still fighting battles from an age when the internet wasn’t there. Today, every mark is available online and is almost protectable under common law. I would say every foreign mark of some significance anywhere in the globe can be treated as well-known."

He, however, clarified that the concept carries significance for the pharma industry even today.

The discussions held at PHD House, New Delhi on August 30 brought together judges of the Delhi High Court, senior advocates, academics, regulators and industry counsel. It aimed to address pressing issues around copyright and trade secrets, trademark enforcement, anti-piracy strategies and valuation of intellectual property as a strategic business asset.

Three sitting judges of the Delhi High Court – Justices Tejas Karia, Amit Bansal and Saurabh Banerjee – provided perspectives on how the courts are adapting to new waves of intellectual property disputes

Justice Bansal, who recently completed a stint in the Intellectual Property Division (IPD), pointed to the migration of disputes from physical piracy to online infringements.

"Courts have to be vigilant in dealing with them and provide timely relief to trademark holders,” he said.

He flagged the rise of domain squatting, fake online dealerships and franchises, and counterfeit luxury goods on e-commerce sites. He also noted that influencer marketing has led to a spurt in disparagement and defamation cases, while the advent of AI-generated videos and deepfakes posed fresh challenges.

Justice Karia underlined the role of intermediaries, stressing,

“Intermediaries are facilitators in the process of protecting ideas…Their role is not proactive monitoring but facilitating enforcement of intellectual property rights."

Explaining the regulatory framework, Karia detailed how the 2021 Information Technology Rules expanded grievance redressal mechanisms. He also acknowledged proportionality concerns when dealing with end-to-end encrypted services, where courts may have no choice but to block accounts rather than individual pieces of content.

Justice Banerjee, responding to questions on damages, emphasised the difficulties of valuation in trademark and copyright disputes.

“IP is priceless for its owner, but from the court’s perspective, quantification is extremely challenging,” he remarked

He noted three broad approaches - actual losses, damages suffered by the proprietor, and gains made by the infringer - but said that many infringers operate “under the shadows.”

The industry voice was represented by Dinesh Gupta, Senior Vice-President (Legal) and Company Secretary of Radico Khaitan, who spoke of the alco-bev sector’s unique vulnerabilities. With advertising restricted by law, Gupta said that courts had often applied a lower threshold to determine consumer confusion.

"For me, brand image, brand equity and consumer trust are non-negotiable. If that is gone, we are gone,” he said.

Gupta underlined the need for constant vigilance at the trademark registry, robust enforcement actions, and collaboration with ISPs, e-commerce platforms and social media companies.

The panel also revisited the Delhi High Court’s pioneering role in dynamic injunctions and site-blocking orders, which allow rights holders to disable access to entire rogue websites rather than chasing infringing URLs one by one.

Speakers agreed that while these measures have reduced enforcement delays, the rapid pace of online infringement still demands quicker redress. The emphasis, they said, should be on striking a balance between protecting IP rights, preserving privacy and free speech, and ensuring that intermediaries are not overburdened with judicial responsibilities.

Apart from the judges and senior counsel, the conclave also featured contributions from Senior Advocate Swathi Sukumar; Eashan Ghosh (Professor, National Law University, Delhi); Satish Kumar (Assistant Director, Ministry of MSME); Simranjeet Singh (Director, Seven Colors Entertainment); Saikrishna Rajagopal (Managing Partner, Saikrishna & Associates); Jasdeep Dhillon (Counsel, Novex); Gagan Arora (General Manager, Unisys Infosolutions); Parul Tuli (Juris Legal); Nadine Kolliyil (Assistant Manager Legal, Jyothy Labs); and Nikhil Chawla (Partner, Nikhil Chawla & Associates).