Delhi High Court - Orders
Hero Investcorp Private Limited & Anr vs M.M. Oil Traders on 21 February, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~34
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 155/2025 and I.A. 4661/2025, I.A. 4662/2025, I.A.
4663/2025, I.A. 4664/2025, I.A. 4665/2025 & I.A. 4666/2025
HERO INVESTCORP PRIVATE LIMITED & ANR ......Plaintiffs
Through: Mr. Pramod Kumar Singh and Mr.
Armaan Bhardwaj, Advocates.
versus
M.M. OIL TRADERS .....Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
ORDER
% 21.02.2025 I.A. 4663/2025 (u/O XI Rule 1(4) of CPC, 1908)
1. The present application has been filed on behalf of the plaintiffs seeking leave to file additional documents under the Commercial Courts Act, 2015.
2. The plaintiffs are permitted to file additional documents in accordance with the provisions of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.
3. Accordingly, the application is disposed of.
I.A. 4664/2025 (seeking exemption from filing original/clear and translated copies etc.)
4. Allowed, subject to the plaintiffs filing original, legible and translated copies of the documents within four weeks from today.
5. The application stands disposed of.
CS(COMM) 155/2025 Page 1 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:46 I.A. 4665/2025 (seeking exemption from serving advance notice)
6. The plaintiffs seek urgent interim relief against infringing products and for this purpose, an ex-parte appointment of Local Commissioner is also sought to confiscate the goods. It is submitted that there is a probability that the defendant may remove the infringing products if the defendant is given advance service of the plaint paper book. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the defendant is granted.
7. The application is disposed of.
I.A. 4666/2025 (u/S 12-A of the Commercial Courts Act, 2015)
8. As the present suit contemplates urgent interim relief, in light of the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Krithi, 2023 SCC Online SC 1382, exemption from the requirement of pre-institution mediation is granted.
9. The application stands disposed of.
CS(COMM) 155/2025
10. Let the plaint be registered as a suit.
11. Issue summons.
12. Summons be issued to the defendant through all modes. The summons shall state that the written statement shall be filed by the defendant within thirty days from the date of the receipt of summons. Along with the written statement, the defendant shall also file affidavit of admission/denial of the documents of the plaintiffs, without which the written statement shall not be taken on record.
13. Liberty is given to the plaintiffs to file replication, if any, within thirty days from the receipt of the written statement. Along with the replication filed CS(COMM) 155/2025 Page 2 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:46 by the plaintiffs, affidavit of admission/denial of the documents of the defendant be filed by the plaintiffs.
14. The parties shall file all original documents in support of their respective claims along with their respective pleadings. In case parties are placing reliance on a document, which is not in their power and possession, its detail and source shall be mentioned in the list of reliance, which shall also be filed with the pleadings.
15. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
16. List before the Joint Registrar on 9th April, 2025 for completion of service and pleadings.
17. List before the Court on 30th July, 2025.
I.A. 4661/2025 (u/O XXXIX Rules 1 and 2 of CPC)
18. The present suit has been filed for permanent injunction for infringement of the design, trademark and copyright, along with passing off and other ancillary reliefs.
19. The plaintiffs are group companies engaged in the manufacture and sale of motorcycles, scooters and their parts, and accessories under the well- known trademark 'HERO'.
20. The plaintiff no.1 [Hero Invest Corp Private Limited] and plaintiff no.2 [Hero MotoCorp Limited], are companies incorporated under the laws of India. It is stated that the plaintiff no.1 has been continuously, uninterruptedly and extensively using the 'HERO' trademarks, devices and label attached to it for more than 60 years in India and globally. The plaintiffs use the label and CS(COMM) 155/2025 Page 3 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 device marks for its diverse range of products which include auto parts of motorcycles and scooters as well as lubricant oil and engine oil under the name 'HERO GENUINE ENGINE OIL'.
21. It is averred that the mark 'HERO' has been protected by the plaintiff no.1 through numerous registrations across several countries. The plaintiff no.1 has also obtained the registrations of the trademark 'HERO', both as a word mark and its various artistic representations in India. The details of the registrations of the 'HERO' trademarks in favour of the plaintiff no.l are given as under:
Trademark Class TM Registration Valid
Application Upto
No.
HERO 4 2205777 15.09.2011 15.09.2031
(word
mark)
HERO 12 235780 13.06.1966 13.06.2028
(word
mark)
4, 12, 16, 2191293 16.08.2011 16.08.2031
25, 35,
(H device)
36, 37, 4,
42
9, 12, 16, 2191294 16.08.2011 16.08.2031
25, 35,
(Device
CS(COMM) 155/2025 Page 4 of 13
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 mark) 36, 37, 41, 42 and 99 4 2314273 12.04.2012 12.04.2032 (Device mark) 4 2314274 12.04.2012 12.04.2032 (H device)
22. The plaintiffs are also the registered owner of the artwork of the unique device and label . The plaintiffs own the exclusive rights in the artwork of the device and by virtue of the Copyright Act, 1957, the plaintiffs hold the exclusive rights to its use on all its products.
23. The plaintiffs manufacture and sell lubricant oils under their sub-brand 'HERO GENUINE ENGINE OIL'. The aforesaid product is sold using a bottle with a novel and unique design. The design of the bottle has been registered by the plaintiffs via two design applications bearing nos. 311300 and 311301 on 25th October, 2018 (hereinafter, 'suit designs'). It is averred in the plaint that the aforesaid registrations are valid and subsisting.
24. The sales figures and advertising and promotional expenses incurred by the plaintiffs in respect of its 'HERO GENUINE OIL' are given in paragraph 25 of the plaint.
CS(COMM) 155/2025 Page 5 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47
25. The defendant operating its business under the brand name 'M.M. Oil Traders' is manufacturing lubricant/engine oils in three different types of bottles/containers.
26. It is averred that one of the bottle/container used by the defendant for one of its engine oil under the name 'ENGINOL LUBRICANTS' is identical to the bottles/containers used by plaintiffs for its engine oil under its registered trademarks 'HERO'.
27. It is submitted that the other two engine oil/lubricants manufactured and sold by the defendants bear the mark ' ' and ' ' which are identical and/or deceptively similar to the plaintiffs' registered 'HERO' trademarks.
28. In January, 2024, during routine visits of the authorised personnel of plaintiff no.2/ Hero MotoCorp Limited, they came across the defendant running its business from its manufacturing/filling unit at AG-376-377 (B), Sanjay Gandhi Transport Nagar, Near Rohini Sec-18 Metro Station, New Delhi.
29. It is stated that the plaintiffs' authorised personnel during a visit to the defendant's manufacturing/stocking/filling unit purchased three samples of infringing products with similar suit designs and bottles bearing 'HERO' marks along with their respective copyright of the plaintiffs.
30. A comparative table illustrating the similarities between the designs of the products of the plaintiffs and the impugned products of the defendant is set out below:
CS(COMM) 155/2025 Page 6 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 PLAINTIFFS' PRODUCT/ DEFENDANTS' PRODUCT/ REGISTERED SUIT DESIGN DESIGNS FRONT VIEW FRONT VIEW REAR VIEW REAR VIEW CS(COMM) 155/2025 Page 7 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 SIDE VIEWS SIDE VIEWS
31. The comparison above categorically shows that the defendant has copied the registered suit designs of the plaintiffs almost in its entirety CS(COMM) 155/2025 Page 8 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 including the hexagonal shape, the dotted surface pattern, the gold colour composition, the black coloured cap and the unique composition of lines.
32. Furthermore, a comparison between the other two products of the plaintiffs and the defendant is given in the tables below:
33. On a prima-facie view, the unauthorized use of the well-known trademarks 'HERO' by the defendant, who is selling the impugned products, appears to be infringing the trademarks of the plaintiffs.
34. Balance of convenience is in favour of the plaintiffs and against the defendants. Irreparable injury would be caused to the plaintiffs if the defendants continue to use the impugned marks/labels. Prejudice would also be caused to the public as the marks/labels of the defendants are deceptively similar to that of the plaintiffs and likely to cause confusion in the market.
CS(COMM) 155/2025 Page 9 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47
35. Consequently, till the next date of hearing, the defendant, its associates and agents, directors, officers, employees, distributors, franchisee, representatives and assignees are restrained from using the 'HERO' marks and 'suit designs' along with their respective copyrights which are identical and/or deceptively, confusingly, phonetically and visually similar to registered 'HERO' marks and 'suit designs' along with their respective copyrights of the plaintiffs and/or any other mark/design deceptively and confusingly similar to 'HERO' marks and 'suit designs' along with their respective copyrights of the plaintiffs or packaging as used by the defendant which is identical to the plaintiffs' copyright vested in 'HERO' and ' ' on its products thereby infringing the trademarks, design and copyright of the plaintiffs and passing off its products as that of plaintiffs.
36. In view of the fact that the plaintiffs have sought appointment of a Local Commissioner to seize the infringing goods, the very purpose of grant of ex- parte ad interim injunction would be defeated if the defendant is given notice contemplated in Order XXXIX Rule 3 of Code of Civil Procedure, 1908 (hereinafter "CPC") prior to the execution of the commission. Hence, it is directed that the plaintiffs shall serve notice under Order XXXIX Rule 3 of CPC at the time of execution of the commission which shall not be later than two (2) weeks from today.
37. Issue Notice.
38. Notice be issued to the defendant through all permissible modes, including e-mail.
39. Reply be filed within four (4) weeks.
CS(COMM) 155/2025 Page 10 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47
40. Rejoinder thereto, if any, be filed within two (2) weeks thereafter.
41. List before the Joint Registrar on 9th April, 2025 for completion of service and pleadings.
42. List before the Court on 30th July, 2025.
I.A. 4662/2025 (u/O-XXVI Rule 9 of the CPC, 1908)
43. The present application has been filed under Order XXVI Rule 9 of the CPC seeking appointment of a Local Commissioner to visit and inspect the premises of the defendant, make an inventory of all the products, labels, packaging/ promotional material, etc. bearing the impugned marks (hereinafter referred to as 'infringing material') and effect seizure of the same.
44. In view of what is stated above, the plaintiffs have made out a case for the appointment of Local Commissioner.
45. Accordingly, Ms. Purnima Vashishtha, Advocate (Mobile No. +91 8369169092) is appointed as a Local Commissioner to visit the premises of the defendant/M.M. Oil Traders situated at:
AG-376 B, 1st Floor, Sanjay Gandhi Transport Nagar, Near Rohini Sec-18 Metro Station, New Delhi - 110042
46. The following directions are passed in this regard:
a. The Local Commissioner, along with a representative of the plaintiffs and its counsel, shall be permitted to enter upon the premises of the defendant mentioned above or any other location/premises that may be identified during the course of commission, in order to conduct the search and seizure.
b. The Local Commissioner shall conduct a search at the defendant's premises and seize the infringing goods, including any packaging/ CS(COMM) 155/2025 Page 11 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 promotional material reflecting infringement. c. The Local Commissioner shall make an inventory of all the infringing products including but not limited to label/packaging material (hereinafter referred to as 'infringing material'). d. After seizing infringing material, the same shall be sealed and signed by the Local Commissioner, in the presence of the parties, and released on superdari to the defendant on their undertaking to produce the same as and when further directions are issued in this regard. e. The Local Commissioner shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the infringing products. f. The defendant and their representatives are directed to provide full assistance to the Local Commissioner for executing the present commission.
g. In case, the aforesaid premises of the defendant or any part thereof is found locked, the Local Commissioner is permitted to break open the locks and doors for execution of the commission. h. To ensure an unhindered and effective resolution of this order, the SHO of the local police station having jurisdiction of the aforesaid premises and the DCP concerned are directed to render the necessary protection and assistance to the local commissioner, if and when sought. i. The Local Commissioner shall have the liberty to take photographs and/or videos of the stock seized and to take a sample of the infringing products to be filed along with the Report.
47. The Local Commissioner shall have the liberty to take photographs and/ or videos of the stock seized and to take a sample of the infringing CS(COMM) 155/2025 Page 12 of 13 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47 material to be filed along with the Report.
48. The Local Commissioner shall have the liberty to take photographs and/ or videos of the stock seized and to take a sample of the infringing material to be filed along with the Report.
49. The Local Commissioner shall file his/her Report within two (2) weeks of executing the commission, along with photographs/ videos taken and photocopies of the books of account and stock and the inventory procured pursuant thereto.
50. The fees of the Local Commissioner, to be borne by the plaintiffs, is fixed at Rs.1,00,000/-. The plaintiffs shall also bear expenses for travel and lodging of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission.
51. The application stands disposed of in the aforesaid terms.
52. The order passed today shall not be uploaded for a period of two (2) weeks from today.
53. Dasti.
AMIT BANSAL, J FEBRUARY 21, 2025 Vivek/-
CS(COMM) 155/2025 Page 13 of 13This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2025 at 21:49:47