India

DSK Legal advised and assisted KUMARI JETHI T. SIPAHIMALANI CO-OPERATIVE HOUSING SOCIETY LIMITED (“Society”) in respect of redevelopment of its property being land admeasuring 14,600.45 square meters together with 20 (twenty) residential buildings standing thereon situate, lying and being at Mahim, Mumbai by TEN X REALTY WEST LIMITED. DSK Legal advised the Society on its redevelopment project by guiding it through compliance with the guidelines issued under Section 79A of the Maharashtra Co-operative Societies Act, 1960. The firm advised the Society on structuring the transaction and conversion of part of the property from Class II to Class I Occupancy The firm also assisted the Society in negotiating, and finalizing key transaction documents such as Development Agreement, Power of Attorney, Permanent Alternate Accommodation Agreement, and other ancillary documents. Mr. Sajit Suvarna (Deputy Managing Partner) was the lead engagement partner for the transaction. DSK Legal team representing the Society comprised of Mr. Viral Rathod (Associate Partner), and Mr. Manav Majmudar (Associate).

DSK Legal Receives Regulatory Approvals to Open Offices in Abu Dhabi and Dubai, Strengthening the India–UAE Legal Corridor DSK Legal, one of India’s leading full-service law firms, has secured regulatory approvals to establish offices in Dubai, and ADGM in Abu Dhabi, marking a significant step in the firm’s strategic international expansion and its commitment to serving clients across the India–UAE business corridor, as also in the MENA region. With these new offices, DSK Legal aims to support Indian clients with operations in the MENA region, as well as international clients looking to enter or enhance their presence in the Indian market. The firm will offer integrated legal solutions across key sectors, including for projects, real estate, technology, energy, financial services, sports, media, and representing clients in international arbitrations. “We are very excited with these developments. There has been a clear and growing interest from our clients and other Indian businesses to establish or expand their footprint in the UAE across several sectors” said Anand Desai, Managing Partner, DSK Legal. “With the establishment of our offices in Abu Dhabi and Dubai, we are well-positioned to support Indian companies with operations in the UAE, as well as foreign clients with interests in India. We envision a robust and seamless India–UAE corridor, with DSK Legal as a trusted advisor on both sides.” This move comes at a time when India and the UAE are deepening bilateral ties across trade, investment, and strategic cooperation. DSK Legal’s on-ground presence in the region will enhance its ability to advise clients on cross-border matters, including the legal aspects of market entry strategies, leveraging the firm's strong track record and range of ranked practices. Vinodh Kumar, who has been based in the United Arab Emirates for nearly two decades, will be DSK Legal’s resident partner in the UAE. With extensive experience as a General Counsel, Vinodh has successfully led and managed legal teams for major conglomerates operating across Middle East and Africa. His deep regional knowledge and expertise make him a valuable addition to DSK Legal. Justice Ali Mohammad Magrey, former Chief Justice of the Jammu & Kashmir and Ladakh High Court, having very wide experience as a practitioner, Judge and Arbitrator, will be senior advisor for the firm’s UAE offices.    The UAE offices will work closely with the firm’s offices in India to provide clients with cohesive legal support. With this expansion, DSK Legal becomes one of the few Indian law firms to establish a direct presence in both Abu Dhabi Global Market (ADGM) and in Dubai—two leading global financial and legal hubs. About DSK Legal: DSK Legal was set up in 2001 and has since established an excellent reputation for its integrity and value-based, proactive, pragmatic and innovative legal advice and its ability to help clients effectively traverse the complex legal and regulatory regime in India. With offices in Mumbai, Delhi, Bengaluru and Pune, DSK Legal has grown rapidly on the strength of its expertise to a multi-disciplinary team with over 300 professionals, including 60 partners and associate partners, as well as experienced consultants.

The intersection of fashion and intellectual property (IP) presents a complex and often contradictory legal landscape. In contemporary fashion, the cyclical emergence of trends poses complex challenges for legal protection, particularly in the context of intellectual property (IP). A central and on-going question in this context is whether a design can be so "trendy" or common that it cannot receive trademark protection. This inquiry examines the main principles of trademark law, particularly the ideas of distinctiveness and aesthetic functionality. It also highlights the risky situation for a design that suffers from its own commercial success. Trademark Law in Fashion: Foundational Principles Trademark law is vital in the fashion world, serving as a legal mechanism that safeguards distinctive elements, like a brand’s name, logo, or design that differentiate its offerings from others. However, its scope is limited; it does not extend to every creative aspect, but rather focuses on protecting identifiers that signify brand origin. Instead, it aims to help consumers consistently recognize the origin of goods and services based on distinctive signs, safeguarding both consumer trust and commercial goodwill. Each creation represents an intangible asset that, if not adequately protected, may be vulnerable to imitations, counterfeiting, and strategic information leaks that could compromise the company’s position. India’s trademark system operates under the provisions of the Trademark Act enacted in 1999. It enables designers to secure legal rights over brand names, logos, emblems, or even distinctive visual elements that define their fashion lines. Trademark law in fashion is anchored in several core principles. First, a mark must possess distinctiveness, to be recognized as identifying a specific source. Secondly, the non-functionality rule ensures that utilitarian features. To secure legal protection, trademarks must be actively utilized in the marketplace. This entails their visible presence on products or within advertising materials, serving to identify and distinguish the source of goods or services. Mere registration without genuine commercial use does not suffice; continuous and lawful use is essential to establish and maintain trademark rights. Finally, trademark law provides protection against consumer confusion, allowing fashion brands to take action against imitators whose products may mislead consumers about their origin. Why Most Fashion Designs Don't Qualify for Trademarks Fashion designs, despite their inherent creativity, rarely secure trademark protection due to specific legal criteria. Trademark law primarily guards’ elements that uniquely identify a product's source. Most clothing designs—be it particular cuts, silhouettes, or aesthetic details—are perceived as decorative or functional rather than brand identifiers. Unless a design achieves singular, widespread recognition as originating from one specific company (e.g., Burberry's distinct check), it falls short of this core trademark purpose. A key hurdle is distinctiveness. Designs must either be inherently unique or gain consumer association with a single source through extensive, exclusive use, as exemplified by Louis Vuitton's renowned monogram. However, fashion trends, by their very nature, are widely adopted and imitated, rapidly diluting any potential distinctiveness and preventing them from serving as reliable source indicators. Furthermore, trademark law excludes features that are primarily functional or essential to a product's use, such as a basic garment construction. Similarly, purely ornamental elements that don't convey commercial origin, like generic patterns, are not eligible for trademark status. This framework also aims to preserve the "fashion commons," preventing perpetual monopolies over design elements crucial for the industry's artistic and economic dynamism, thereby fostering continuous innovation rather than hindering it. The Impact of Trendiness on Trademark Eligibility A fashion design that is too trendy is often, by nature, fleeting and widely adopted by many actors in the industry. This widespread adoption undermines its distinctiveness—a core requirement for trademark registration. When a trend is generic, ephemeral, or lacking in source-identifying function, trademark protection is inappropriate: Furthermore, when a design becomes popularized across the market, it risks being viewed as a common style rather than a proprietary mark. As a result, the more a fashion feature blends into a trend, the less likely it is to qualify for trademark protection, as it may fail to signal a single source or avoid consumer confusion. In Aditya Birla Fashion and Retail Ltd. v. Manish Johar,[1] Aditya Birla Fashion, owner of the “ALLEN SOLLY” brand, discovered that Manish Johar was manufacturing and selling counterfeit goods bearing deceptively similar branding. These products were also being circulated online. The Hon’ble Saket District Court recognized plaintiff’s trademark rights and found that the defendant’s goods were intended to deceive consumers. Permanent injunctive relief was granted, and the Hon’ble Court ordered that counterfeit stock be seized and destroyed. This ruling showcased Indian court’s increasing attention to impose stringent remedies against counterfeiting, including injunctions and destructions of infringing products, thereby protecting consumer trust and brand’s goodwill. In the case of Ritika Private Limited v. BIBA Apparels Private Limited[2], owner of the celebrated “RITU KUMAR” label sued BIBA Apparels. Ritika alleged that BIBA had copied its garment designs. However, the Hon’ble Delhi High Court clarified that once an artistic work is industrially applied and reproduced more than 50 times, copyright protection discontinues as per Section 15(2) of the Copyright Act unless the design is registered under the Designs Act, 2000. Since, Ritika’s designs were unregistered, its claim failed. Similarly, in the case of Microfibres Inc. v. Girdhar & Co.,[3] Microfibres, a textile manufacturer claimed that Girdhar & Co. had copied its upholstery fabric designs. The plaintiff pleaded that the patterns should be protected as artistic works under the Copyright Act. The Hon’ble Delhi High Court emphasized that once an artistic work is applied to an industrial product; it ceases to qualify for copyright and falls within the ambit of the Designs Act. Since Microfibres had not registered its designs, no protection was available. The Hon’ble Supreme Court later affirmed this decision underlining the legislative intent to prevent dual protection and harmonize the two statutes. In the case of Rajesh Masrani v. Tahiliani Design Private Ltd.,[4] Rajesh Masrani alleged that Tarun Tahiliani’s fashion house had copied his fabric prints. The defense argued that the works were unregistered designs, and hence not enforceable under the Designs Act. The Hon’ble Delhi High Court held that the plainitff’s prints were original artistic works as per Section 2(c) of the Copyright Act, and therefore protectable since the designs had not been mass produced beyond the threshold of Section 15(2), copyright subsisted. The defendant’s appeal was dismissed. Aesthetic Functionality Doctrine A significant obstacle in securing trademark protection for fashion designs lies in the doctrine of aesthetic functionality. This principle holds that a feature cannot be monopolized as a trademark if it is primary appeal lies in its aesthetic value or if it confers a competitive advantage of source identification. The rationale is to ensure that no single brand can claim exclusivity over design elements that consumer are drawn to for their beauty or style, rather than for brand association. Courts frequently reply on competitive necessity test to determine whether a feature qualifies as aesthetic functionality. The more a design reflects a prevailing trend, the greater the likelihood that it will be regarded as an aesthetic choice necessary for the competitors to adopt freely. In such circumstances, trademark protection is denied to avoid restricting legitimate competition in the marketplace. A recent and instructive example of Indian jurisprudence can be found in the case of Royal Country of Berkshire Polo Club Ltd & Ors v. Lifestyle Equities C V & Ors[5], also known as Beverly Hills Polo Club (BHPC) case. In early 2025, the Hon’ble Delhi High Court ordered an Amazon subsidiary to pay USD 39 Million (approximately INR 340 Crore) in damages for selling apparel featuring a logo nearly indistinguishable from the BHPC trademark. The Hon’ble Delhi High Court’s ruling emphasized that brand identifying elements, regardless of aesthetic appeal are entitled to protection where they serve as strong indicators of source and reputation. Unlike cases involving purely decorative motifs that fail to signal origin and thus fall prey to the doctrine of aesthetic functionality, BHPC’s logo had achieved brand distinctiveness and consumer recognition. The Hon’ble Delhi High Court’s approach reinforces that courts will protect decorative designs when they play a clear source identifying role, reaffirming that distinctiveness, not ornamentally, remains the guiding principle in trademark enforcement. For fashion and lifestyle brands, the BHPC decision provides a compelling blueprint i.e., registering and cultivating distinctive, recognizable designs is essential to ensuring legal protection, not just foe aesthetic merit, but as embodiments of brand identity. Conclusion A design cannot be deemed “too trendy” to trademark in the legal sense; rather, trendiness itself is antithetical to the distinctiveness and source-indicating function necessary for trademark protection. Trend-driven, short-lived designs usually enter the public domain, available for all to use, unless and until they gain sufficient secondary meaning to become inextricably linked with a single brand. For fashion innovators, robust protection lies in a layered IP strategy involving design registration, trademark cultivation, and copyright protection. [1] TM No. 7/2017 [2] CS(OS) No. 182/2011 [3] 128 (2006) DLT 238 [4] FAO (OS) No. 393/2008 [5] 2023 SCC OnLine Del 5347 Authored by Mr. Ketan Joshi, Senior Associate

The Bombay High Court in Harkisandas Tulsidas Pabari & Anr. v. Rajendra Anandrao Acharya & Ors[1]. exercised its jurisdiction under Section 37 of Arbitration & Conciliation Act, 1996 (“Act”) to dismiss the Arbitration Appeals filed by the Appellants and upheld the Order passed by the Single Judge under Section 34 of the Act which set aside Arbitral Award dated September 21, 2005 (“Impugned Award”) on the grounds that the (i) Arbitrator lacked authorisation to recommence the arbitral proceedings; (ii) Memorandum of Understanding dated July 20, 1994 (“MoU”) did not constitute a concluded contract between the parties and (iii) MoU was impossible of being specifically performed through execution of the Impugned Award. Brief Facts: A MoU was executed between the parties whereunder the Respondents agreed to sell their respective undivided shares, title and interest in the property to the Appellants for a consideration. The Respondents terminated the MoU on account of the Appellants’ failure to pay the balance consideration and breaches of the MoU committed by them. The Appellants referred the disputes under the MoU to a Sole Arbitrator (“Arbitrator”) who passed an arbitral award in favour of the Appellants on April 1, 1998 (“1st Award”). The Bombay High Court (“Court”) set aside the 1st Award on September 28, 1998 on the ground that notice of closure of arbitral proceedings was not given to the Respondents. The Court further sent the original record of the arbitral proceedings back to the Arbitrator and directed the parties to commence the arbitral proceedings afresh with the intervening time being excluded under Section 43(4) of the Act (“Remand Order”). The Appellants approached the same Arbitrator who fixed dates for hearings in the arbitral proceedings. The Respondents objected to the continuation of the arbitral proceedings before the same Arbitrator but the same were rejected by him. The Arbitrator passed the Impugned Award in favour of the Appellants holding that MOU is binding on the parties. Pursuant to a challenge raised by the Respondents under Section 34 of the Act, the Court set aside the Impugned Award. The Appellants challenged the said order in Section 37 of the Act before the Court on the ground that the Single Judge exceeded its jurisdiction under Section 34 of the Act to set aside the Impugned Award. Arguments advanced by the parties concerned:     The Appellants contended that the Single Judge, by acting as an Appellate Authority over the Impugned Award, exceeded its jurisdiction under Section 34 of Act. The terms of the MoU were ignored to hold that there was no concluded contract between the parties and that the MoU could not be specifically performed. The Single Judge erroneously held that there was non-compliance of the provisions of Section 21 of the Act on account of the Appellants’ failure to give notice before proceeding with the arbitral proceedings. It was further contended that the provisions of Section 21 of the Act are not mandatory and that the requirements can be clearly waived. On the other hand, the Respondents contended that the Impugned Award was rightly set aside as the same was passed in ignorance of contractual and statutory provisions. The Impugned Award was either based on no-evidence or ignored vital evidence which demonstrated the breach of MoU by the Appellants. There was no concluded contract between the parties as it was neither a development agreement nor an agreement for sale. The Impugned Award suffered from absence of jurisdiction as the Arbitrator unilaterally assumed jurisdiction after passing of the Remand Order. Since the reference of the Arbitrator had come to an end, the Appellants ought to have issued notice under Section 21 of the Act for commencing the arbitral proceedings, which they failed to do so. The Court’s findings:  Lack of authorisation to same Ld. Arbitrator to recommence the arbitral proceedings- The Appellants as well as the Arbitrator erroneously presumed that the Court vide Remand Order remitted the arbitral proceedings back to the same Arbitrator whereas in actuality, the Remand Order warranted commencement of arbitral proceedings afresh. The power of remanding the matter to the same Arbitrator under Sections 33 and 34(4) of the Act can be exercised before an award is set aside and is not permissible after the 1st Award was set aside. Mere remittance of the original records to the Arbitrator did not mean that he had the mandate to resume/recommence the arbitral proceedings. The granting of liberty to the parties to ‘move afresh’ along with Court’s specific direction that the intervening period would be saved by virtue of provisions of Section 43(4) of the Act made it clear that the arbitral proceedings had to commence afresh. For commencing the arbitral proceedings by taking benefit of limitation under Section 43(4) of the Act, the procedure under Section 21 became mandatory. Non-compliance with Section 21- The Appellants unilaterally wrote to the same Ld. Arbitrator for resumption of arbitral proceedings. The Appellants did not follow the procedure mandated in Section 21 of the Act and erroneously presumed that the Court directed remission of proceedings to the same Ld. Arbitrator.. MOU was not a concluded contract and hence impossible to specifically perform- Since the proposed course of action of either reconstructing the building or constructing additional floors was not clearly set out, there was no concluded contract between the parties. This vital material was excluded by the Arbitrator who merely concentrated on acceptance of part consideration by the Respondents. The specific performance of the MoU was impossible and MOU did not constitute a concluded contract. Therefore, setting aside of an arbitral award warrants compliance of Section 21 and commencement of arbitral proceedings afresh and not a resumption of the arbitration proceedings by the same Arbitrator. [1] Arbitration Appeal No.62 of 2007 Authored by Ms. Prachi Garg, Associate Partner, DSK Legal & Ms. Prerna Verma, Senior Associate, DSK Legal