Trademark Infringement in Composite Marks: Insights from the latest judgment of the Delhi High Court

Case Title: Royal County of Berkshire Polo Club Ltd. & Ors. v. Lifestyle Equities C V & Ors 

Date of Judgment: 28.08.2023

Case Number: FAO(OS) (COMM) 168/2019, CM APPL. 32083/2019 & CM APPL. 44128/2022 

Coram: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Mr. Justice Amit Mahajan 



The case involves a dispute between Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’) and Lifestyle Equities C V & Ors. (referred to as ‘BHPC’) over the alleged infringement of a logo mark used in the sale of fragrance products. 


Factual Background 

The appellants, Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’), appealed under Section 13 of the Commercial Courts Act against a judgment dated 06.05.2019. The judgment was passed by the learned Single Judge of the Delhi High Court in Suit bearing No. C.S. (COMM) 1031/2018. The learned Single Judge had granted an interim injunction against Berkshire, restraining them from selling or advertising products using a logo mark that the respondent, Lifestyle Equities CV & Ors. (referred to as ‘BHPC’), claimed was deceptively similar to their own logo mark. 


Contentions of the Appellants 

The appellants argued that the logo of a polo player on a horse is a common and descriptive image related to polo sports. They contended that BHPC’s claim of exclusivity over this image was unfounded, and several other companies, including Ralph Lauren, used similar imagery. The appellants also pointed out that they had been using their logo since 1985 and that the word “polo club” was not objected to by BHPC.

Contentions of the Respondent 

BHPC claimed that they held the registration of a logo mark depicting a “charging polo pony, the rider and the polo stick of mallet,” which they considered to be a distinctive and well-known trademark. BHPC claimed that their logo mark, consisting of a distinctive polo player device and the stylized word mark “Beverly Hills Polo Club,” was registered in various countries, including India, and was well-known. They alleged that Berkshire’s logo mark, which also included a polo player and horse, was deceptively similar to their logo mark and likely to cause confusion among consumers. They sought an injunction against Berkshire from using any product with a logo mark similar to theirs.  


Key Legal Issues 

  1. Whether Berkshire’s logo mark was deceptively similar to BHPC’s logo mark? 
  1. Whether there was a likelihood of confusion among consumers regarding both the trademarks? 
  1. Whether BHPC was entitled to an injunction against Berkshire’s use of the logo mark? 


Court’s Analysis and Decision 


The Division Bench of the High Court, comprising Justice Vibhu Bakhru and Justice Amit Mahajan, set aside the impugned judgment. The Court observed that while the Single Judge had correctly identified the essential feature of the respondent’s mark as the polo player device, the learned Single Judge erred in finding deceptive similarity based solely on this feature. 

The Appellate Court found that the learned Single Judge had misinterpreted the principles regarding trademark infringement. The Court emphasized that the competing marks should be considered as a whole and not dissected into individual components. It was noted that both companies used variations of the polo player device, which was also used by other entities like Ralph Lauren. The Appellate Court highlighted the dissimilarities in the marks, including the direction of the horses depicted, the positioning of the polo player device, and the co-existence of similar marks in various countries. 

The Court noted that both parties used the polo player device in conjunction with their respective names (“Royal County of Berkshire Polo Club” for the appellants and “Beverly Hills Polo Club” for the respondents). It was also highlighted that the marks were co-existing in other countries. The Court concluded that Berkshire’s use of its logo mark, along with its actual name “Royal County of Berkshire Polo Club,” did not constitute infringement under Section 29(1) of the Trademarks Act, 1999. It was held that the marks belonging to the two polo clubs were distinct and not likely to cause confusion among consumers. The Court ruled that the marks were not deceptively similar when viewed as a whole and that BHPC’s claim of infringement was not justified.  



This case demonstrates the complexity of determining trademark infringement when dealing with composite marks. The judgment emphasized that trademarks must be analyzed in their entirety and not dissected into individual elements for comparison, especially when dealing with marks that are used in conjunction with different words and upheld the importance of the overall commercial impression created by the mark. 


“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.” 


Written by – Ananya Chaudhary 

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Impact of Covid-19 pandemic on IPR Laws in India


The covid-19 pandemic has led to a dramatic loss of human life worldwide and presents an unprecedented challenge to the world of work. It has generated health concerns as well as social and economic crises which induced an acceleration of digitalization practices. It also exposed the existing inequalities of age, income, race, sex and geographical location which led to the inordinate impact of the pandemic on the vulnerable sections of the society.

The Covid-19 pandemic is very different from other forms of crisis as it had an impact on all forms of business, organisations, creative workers and users. The people were unable to feed themselves and their families due to no means of earning income during lockdown. The pandemic has shattered jobs and placed millions of livelihoods at risk.

Intellectual property is a category of property which includes intangible creations of the human intellect. It refers to the creations of the mind, such as invention, literary and artistic works, designs, symbols and many more. Article 2(viii) of the World Intellectual Property Organization defines intellectual property as, “Intellectual property shall include rights relating to literary, artistic, and scientific works, discoveries throughout all areas of human endeavour, scientific advances, industrial design rights, trademarks, service marks, and commercial names and designations, protection against unfair competition.” The World Trade Organization defines intellectual property rights as the rights given to the creators of the creations. These rights give a monopoly to the creator over their ideas for a specific time period and enable them to prevent others from using their creations. 

Now, the question arises, what intellectual property has got to do with Covid-19? Well, this article answers this question. In intellectual property, particularly patents are an inherent aspect when we talk about global healthcare or dealing with pandemics. In the context of Covid-19, vaccines, software applications, medical equipment, diagnostics and other innovations have critical intellectual property implications. 

TRIPS Agreement

The agreement on Trade-Related Aspects of Intellectual Property Rights is an international legal agreement between all the member nations of the World Trade Organization. It establishes minimum standards for the regulation of different forms of intellectual property.

The TRIPS Agreement requires member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial application.

Article 7 of the TRIPS Agreement describes the objectives of the IP system in terms of a balance of rights and obligations.

Article 8 states that members may adopt measures necessary to protect public health and nutrition and to promote public interest in sectors of vital importance to their socio-economic and technological development that are consistent with the provisions of the TRIPS Agreement.

The Doha Declaration on the TRIPS Agreement and Public Health, a landmark declaration adopted at the WTO Ministerial Conference in 2001, reaffirmed the objectives and principles of the Agreement as guidance for the implementation of TRIPS provisions in a manner that is responsive to public health objectives.

The Doha Declaration also clarified certain policy options, or “flexibilities”, within the framework of the TRIPS Agreement. It is thus a well-established principle that the TRIPS Agreement can be interpreted and implemented in line with public health policy objectives and that it provides wide latitude for members to take action to protect public health.

Policy options and flexibilities regarding other IPRs

As mentioned earlier, the role of policy options in other areas of IP rights has also been raised in discussions about intellectual property and Covid-19.


Copyright is a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression. 

Copyright provides exceptions and limitations that allow access to those works under certain special cases. Both copyright and exceptions and limitations to copyright have equal importance when considering the question of access to medical technology and innovation. 

During the Covid-19 pandemic, some of the copyrights-holders have taken action to make copyright protected content freely available to public access. 

Article 13 of the TRIPS Agreement permits limitations and exceptions to copyright if they are confined to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.

The COVID-19 pandemic has raised many questions about the permissible use of materials and content as campuses have migrated courses that were traditionally taught in-person to a virtual format. Faculty are understandably concerned about how to best use their course materials in this new digital format, including works from third parties that may be protected by copyright.

There are several exceptions to the Copyright Act that may allow faculty to use some copyrighted materials created by third parties in their educational content. This includes the Fair Use exception and the TEACH Act (Technology, Education and Copyright Harmonization Act of 2002), also known as the Distance Learning exception.


Trademark is a type of intellectual property consisting of a recognizable sign, design or expression that identifies products or services from a particular source and distinguishes them from others.

The trademark rules under the TRIPS Agreement also aim to provide for a balance between the rights of trademark-owners and the public interest. Article 17 of the TRIPS Agreement provides for exceptions that members may provide limited exceptions  to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Industrial Designs

An industrial design right is an intellectual property right that protects the visual design of objects that are purely utilitarian. Article 26.2 of the TRIPS Agreement provides for members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.


A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using or selling an invention for a limited period of time. The patent law forms an important part of a country’s national innovation system as it encourages technological progress and innovation.

Article 28 of the TRIPS Agreement grants exclusive rights to a patent holder to prevent others from producing, using or selling the patented product without their consent.

The TRIPS Agreement contains certain adaptability provisions which provide for exceptions where the World Trade Organization members can permit the use of patents without the authorization of the patent holder.

Article 30 of the TRIPS Agreement provides exceptions to rights conferred. It states that members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with the normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. 

Another key exception to patent rights, confirmed in TRIPS dispute settlement practice is the Bolar exception. It allows potential competitors to use a patented invention during the patent term without the consent of the patent owner for the purpose of obtaining marketing approval for a prospective generic product. In the context of COVID-19, this may be important in cases where the term of patent protection of possible treatments is approaching expiry.

Waiving patent rights for Covid-19 vaccine

The proposal for waiving IP and patent rights for Covid-19 vaccines was first introduced in October 2020, by South Africa and India at the World Trade Organization. This proposal was opposed by the UK and European Union, among other countries.

In June 2022, the World Trade Organization announced a compromise text that gained consensus among its members including the UK and European Union.

For five years, developing countries will be allowed to authorise the use of patented materials and ingredients for the manufacture of Covid-19 vaccines without the consent of the rights holder to produce vaccines, for domestic and eligible markets. Rights holders will be compensated.

Compulsory licences

Compulsory licence is an authorization granted by the Government to someone else i.e., a third party to produce a patented product without the consent of the patent owner who has been taking undue advantage of exclusive rights granted by patent.

According to Indian Patent Act, compulsory licence can be granted after the expiration of a period of three years from the date on which the patent has been granted.

Article 31 of the TRIPS Agreement allows compulsory licensing and government use of a patent without the authorization of its owner under a number of conditions aimed at protecting the legitimate interests of the patent-holder. The patent holders are entitled for remuneration. All members may grant such licences for health technologies, such as medicines, vaccines and diagnostics, as well as any other product or technology needed to combat COVID-19.

Compulsory licensing may serve as a useful policy tool to increase access to eventual treatments or vaccines for COVID-19, in particular in situations in which from a member’s perspective access to affordable health technologies in sufficient quantities cannot be otherwise secured.

Regarding the basis for a compulsory or government use licence, the TRIPS Agreement does not specifically list the reasons that might be used to justify compulsory licensing and thus leaves members the freedom to define the grounds for issuing a compulsory licence. Many laws include national emergency as one of the grounds for issuing a compulsory licence. A number of members have declared a national emergency in the context of the COVID-19 pandemic.

India’s first case of granting compulsory licence was to an Indian company called Natco Pharma for the generic production of Bayer Corporation’s Nexavar.

This medicine called Aspirin drug was used for treating Liver and Kidney Cancer, and one month’s worth of dosage costs around Rs 2.8 Lakh. Natco Pharma offered to sell it for around Rs 9000 making this potentially life saving drug easily accessible to all parts of the society and not just the rich people. The Government took this decision for the general public benefit. However, it was heavily criticised by the Pharmaceutical Companies as they felt the licence should not have been given.

However, Natco Pharma is paying the royalties to Bayer at a rate of 6% of all sales on a quarterly basis in accordance with the guidelines set by the United Nations Development Programme (UNDP).


The impact of covid-19 pandemic on India has been largely disruptive in terms of economic activity as well as a loss of human lives. Almost all the sectors have been adversely affected as domestic demand and exports sharply plummeted with some notable exceptions where high growth was observed.

Thus, when it comes to the impact of Covid-19 on the essential medicine laws under the Patents Act, the Indian Patent laws are self-sufficient and protect the interests of the general public.

When it comes to India’s role on a global platform, the argument for a global IP waiver in times of pandemics is an important argument that has been raised by India. Even though Indian laws may be self-sufficient, it may not be the case for all countries and thus it is necessary that companies and nations place the interests of the general public before their individual interests of obtaining patents and royalties arising from the use of such patents.

Works Cited

Introduction to TRIPs Agreement, https://www.jpo.go.jp/e/news/kokusai/developing/training/textbook/document/index/TRIPs_Agreement.pdf. Accessed 2 July 2023.

“15 October 2020 Page: 1/13 Original: English 1 THE TRIPS AGREEMENT AND COVID-19 INFORMATION NOTE1 Key points • A full response.” World Trade Organization, 15 October 2020, https://www.wto.org/english/tratop_e/covid19_e/trips_report_e.pdf. Accessed 2 July 2023.

Sehgal, Diganth Raj. “Intellectual property and COVID-19 : lessons for the future.” iPleaders, 18 November 2021, https://blog.ipleaders.in/intellectual-property-and-covid-19-lessons-for-the-future/. Accessed 2 July 2023.

“WTO | intellectual property – overview of TRIPS Agreement.” World Trade Organization, https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm. Accessed 2 July 2023.


“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.”

Written by- Meghana D