Delhi High Court - Orders
Eicher Motors Limited vs Http//Royalenfielddealerindia.In/ & ... on 6 May, 2025
$~31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 411/2025, I.A. 11295/2025-Stay
EICHER MOTORS LIMITED .....Plaintiff
Through: Mr. Peeyoosh Kalra, Mr. C. A.
Brijesh and Mr. Krishna Gambhir,
Advs.
versus
HTTP//ROYALENFIELDDEALERINDIA.IN/ & ORS.
.....Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 06.05.2025 I.A. 11301/2025-Extension of time for filing Court fees.
1. Vide the present application under Section 149 read with Section 151 of the Code of Civil Procedure, 1908 (CPC), the plaintiff seeks extension of time for filing the deficit Court fee.
2. Learned counsel for the plaintiff submits that since the deficit Court fee has since been filed, the present application has become infructuous.
3. Accordingly, the present application is disposed of as infructuous. I.A. 11298/2025-Exp from pre-institution mediation.
4. Vide the present application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of the CPC, the plaintiff seeks exemption from pre-litigation mediation.
5. Considering the averments made in the present application, as also since the plaintiff is seeking ex-parte ad-interim injunction in an accompanying application, and in view of the judgment passed by the CS(COMM) 411/2025 Page 1 of 11 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 29/06/2025 at 20:10:15 Hon'ble Supreme Court in Yamini Manohar v. T.K.D. Krithi 2024 (5) SCC 815, which has been followed by a Division Bench this Court in Chandra Kishore Chaurasia v. R. A. Perfumery Works Private Limited 2022:DHC:4454-DB, the plaintiff is exempted from instituting pre- litigation mediation.
6. Accordingly, the present application stands disposed of. I.A. 11297/2025-Exp
7. Exemption allowed, subject to all just exceptions.
8. The application stands disposed of.
I.A. 11300/2025-Exp from effecting advance notice on D-23 and 24
9. Vide the present application under Section 151 of the CPC, the plaintiff seeks exemption from effecting advance service on defendant nos.23 and 24 in view of the urgent reliefs sought.
10. Learned counsel for the plaintiff submits that since as per its own 'Affidavit of Service' the plaintiff has already served the said defendants, the present application has become infructuous and the same is not being pressed.
11. Accordingly, the present application is disposed of as not pressed. I.A. 11296/2025-Exp from serving an advance copy to D-1 to 14 and 26
12. Vide the present application under Section 151 of the CPC, the plaintiff seeks exemption from advance service upon the defendant nos.1 to 14 and 26.
13. Learned counsel for the plaintiff submits that the defendant nos.1 to 14 are likely to destroy all evidence of their engaging in the infringing activities, if advance service is effected, and the apprehensions of the CS(COMM) 411/2025 Page 2 of 11 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 29/06/2025 at 20:10:15 plaintiff will become a reality in case advance service is affected therefore, an exemption from effecting advance service is necessary.
14. For the reasons stated in the application, as also taking into account the aforesaid factors and in the interest of justice, the plaintiff is granted exemption from effecting advance service upon defendant nos.1 to 14 and 26.
15. Accordingly, the present application is allowed and disposed of. I.A. 11299/2025-Addl.doc.
16. Vide the present application under Order XI Rule 1(4) read with Section 151 of the CPC, the plaintiff seeks leave of this Court to file additional documents.
17. The plaintiff will be at liberty to file additional documents at a later stage, albeit, after initiating appropriate steps, strictly as per the provisions of the Commercial Courts Act, 2015 read with Section 151 of the CPC and the Delhi High Court (Original Side) Rules, 2018.
18. Accordingly, the present application stands disposed of. CS(COMM) 411/2025
19. Vide the present plaint, the plaintiff seeks grant of a permanent injunction restraining the defendants from infringement of trademark/ domain name, passing off, unfair trade competition, rendition of accounts and damages.
20. Let the plaint be registered as a suit.
21. Upon filing of the process fee, issue summons of the suit to the defendants through all permissible modes returnable before the learned Joint Registrar on 04.08.2025.
22. The summons shall state that the written statement be filed by the CS(COMM) 411/2025 Page 3 of 11 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 29/06/2025 at 20:10:15 defendants within a period of thirty days from the date of the receipt of the summons. Written statement be filed by the defendants along with affidavit of admission/ denial of documents of the plaintiff, without which the written statement shall not be taken on record.
23. Replication(s) thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement. The said replication(s), if any, shall be accompanied by with affidavit of admission/ denial of documents filed by the defendants, without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.
24. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
25. List before the learned Joint Registrar for marking exhibits of documents on 04.08.2025. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs. I.A. 11295/2025-Stay
26. Vide the present application, the plaintiff seeks the following reliefs:
"a. Pass an order of temporary injunction restraining Defendant Nos. 1 to 14 and 26 (such other websites/entities which are discovered during the course of the proceedings to be engaged in infringing the Plaintiff's trade mark Royal Enfield) their owners, proprietors, employees, partners, representatives and/or others acting for and on their behalf from using the trade mark Royal Enfield or any deceptively similar variant thereof, or in any manner amounting to infringement;
b. Pass an order of temporary injunction restraining Defendant Nos. 1 to 14 and 26 (and such other websites/entities which are discovered during the course of CS(COMM) 411/2025 Page 4 of 11 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 29/06/2025 at 20:10:15 the proceedings to be engaged in passing off the Plaintiff's Royal Enfield trade marks), their owners, proprietor, employees, partners, representatives and/or others acting for and on their behalf from using the Royal Enfield trademarks or any deceptively similar variant thereof, in any manner thus amounting to passing off their services as those of the Plaintiff;
c. Pass an order directing Defendant Nos. 15 to 22 to block access and suspend the impugned domain names www.royalenfielddealerindia.in; www.royalbikedealers.in; www.royalonfield.com; www.royalenfield.org; www.royalenfieild.com; www.royalenfield1.com; www.royal-enfield.com; www.royalenfiled.com; www.royalenfeild.com; www.royalsenfield.com; www.royalinfield.com; www.royaleenfield.com; www.royalenfleid.com to the Plaintiff as also disclose the contact particulars and KYC details of the registrants;
d. Pass an order directing Defendant No. 23 (DOT) and Defendant No. 24 (MEITY) to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the various impostor domain names identified by the Plaintiff and such other domain names that may subsequently be notified by the Plaintiff to be infringing of its exclusive rights; e. Pass an order directing Defendant No. 25 (NIXI) not to permit any domain name to be opened under the 'co.in' and 'in' extensions consisting of the mark 'ROYAL ENFIELD', where the words 'ROYAL' and 'ENFIELD' appear together other than that of the Plaintiff;
f. Grant orders in terms of prayer (a), (b), (c), (d) and (e) hereinabove ex-parte."
27. As per pleadings, the plaintiff is a public limited company organized under Indian laws and is manufacturing and selling motorcycles CS(COMM) 411/2025 Page 5 of 11 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 29/06/2025 at 20:10:15 and other accessories extensively over India, as also exporting to over sixty countries, under the trademark ROYAL ENFIELD and its variants since the year 1955 continuously and uninterruptedly.
28. The plaintiff has obtained registrations for the said ROYAL ENFIELD trademark and its variants under various Classes of the TM Act as enumerated in paragraph no.15 of the present application. Further, the ROYAL ENFIELD trademark has been declared a "well-known"
trademark in the motorcycle industry by the High Court of Madras vide the order dated 22.11.2023 in C.S. (Comm.Div.) No.77/2023 entitled Eicher Motors Ltd. v. Nitin Service Point & Automobiles and published in the Trade Marks Journal No.2146 dated 04.03.2024.
29. The plaintiff has made significant investments in promotional activities and generated substantial revenue from its ROYAL ENFIELD trademarks. The plaintiff has consequently acquired tremendous goodwill and reputation, and its motorcycles are known for their quality, reliability and toughness.
30. The plaintiff also promotes and advertises its products and services through its website www.royalenfield.com, which was registered on 19.10.1997. The plaintiff has presence on social media platforms as well.
31. In the second week of April, 2025, the plaintiff, upon conducting internet enquiries discovered certain domain names on the internet, being defendant nos.1 to 14 herein, incorporating the plaintiff's trademark, thereby infringing the same (impugned domain names), the complete details whereof have been masked and are not available with the plaintiff. Defendant nos.15 to 22 are domain name registrars (DNRs) for the impugned domain names. Defendant nos.23 to 25 are the Department of CS(COMM) 411/2025 Page 6 of 11 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 29/06/2025 at 20:10:15 Telecommunications (DoT), the Ministry of Electronics and Information Technology (MIETY) and the National Internet Exchange of India (NIXI) respectively who have been impleaded for compliance. Finally, defendant no.26 is the John Doe defendant for those unknown individuals/ entities who are found to violate the plaintiff's trademark rights in future and are currently unknown. A comprehensive list of the impugned domain names against their respective DNRs is produced in paragraph no.24 of the present application and is also annexed with this order as Schedule-I for ease of reference.
32. Based thereon, learned counsel for the plaintiff submits that the adoption of the plaintiff's long standing and well-known trademarks in the form of the impugned domain names is in complete bad faith, and is aimed at taking advantage of the goodwill and reputation of the plaintiff which is likely to cause confusion and monetary loss to the public at large. Further, that the said dishonest and fraudulent practices taking place using the impugned domain names and are causing irreparable harm to the plaintiff's intellectual property rights, and the balance of convenience is in favour of grant of temporary injunction restraining the said impugned domain names from continuing their infringing activities.
33. This Court has heard learned counsel for the plaintiff as also gone through the pleadings and documents on record.
34. On a bare perusal of the factual matrix involved, this Court is of the prima facie view that the defendants herein are engaging in carrying out fraudulent activities to defeat the legitimate intellectual property rights of the plaintiff by seeking refuge behind closed doors vis-à-vis masked domain names, making it virtually impossible to get to the real infringers CS(COMM) 411/2025 Page 7 of 11 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 29/06/2025 at 20:10:15 behind the infringing activities, which are unfortunately on the rise in today's digital age.
35. Going through the impugned domain names leaves no doubt that the defendants and their activities are aimed at coming as close as possible to the plaintiff's ROYAL ENFIELD trademarks so that a common layperson can mistake them for the legitimate websites of the plaintiff. The said websites are also offering motorcycles for sale and are clearly attempting to pass off their products for those of the plaintiff, which have been existing in the market for a significant amount of time and have gained some repute. This not only amounts to infringement and passing off but is also detrimental to public interest, given the high degree of likelihood of confusion.
36. In the aforesaid backdrop, keeping in mind the pronouncements made by this Court in UTV Software Communication Ltd. & Ors. v. 1337X.to & Ors. [2019:DHC:2047], Star India (P) Ltd. v. https//crichdplayer.org/ [2025 SCC OnLine Del 1968] and order dated 20.11.2023 in CS(COMM) 832/2923 entitled Eicher Motors Limited v. www.royalenfielddealerships.in & Ors. wherein it has been held that in issues like the present one, it is of utmost importance that the plaintiff of the present kind is to be granted protection against the third party infringers like the defendants herein. Therefore, this Court is of the view that the impugned domain names fall within the category of rogue websites, and the balance of convenience tilts in the favour of grant of a dynamic injunction against the registrants of the impugned domain names, as well as other infringing domain names that may be discovered in future.
37. Accordingly, till the next date of hearing:
CS(COMM) 411/2025 Page 8 of 11This 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 29/06/2025 at 20:10:15 a. Any person including the registrants of the defendant nos.1 to 14, their owners, proprietors, employees, partners, representatives and/ or others acting for and on their behalf are hereby restrained from using the trademark ROYAL ENFIELD or any other deceptively similar variant thereof amounting to infringement and/ or passing off;
b. Defendant nos.15, defendant no.16, defendant no.17, defendant no.18, defendant no.19, defendant no.20, defendant no.21 and defendant no.22 are directed to block access to and suspend the impugned domain names registered by defendant nos.1 to 7, defendant no.8, defendant no.9, defendant no.10, defendant no.11, defendant no.12, defendant no.13 and defendant no.14 respectively, as also to disclose their respective names, contact details and addresses;
c. DoT and MEITY are directed to call upon the various internet and telecom service providers registered under them to block access to the impugned domain names and other such domain names that may be subsequently notified by the plaintiff to be infringing its exclusive rights, as also NIXI is directed not to permit any domain name to be opened which are consisting of the trademark ROYAL ENFIELD and its variants;
d. The plaintiff is given liberty to implead any other websites and their registrants which may be discovered in the course of the proceedings to be infringing upon its ROYAL ENFIELD trademark and its variants.
38. Upon filing of process fee, issue notice to the defendants through all CS(COMM) 411/2025 Page 9 of 11 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 29/06/2025 at 20:10:15 permissible modes, including through email, returnable before the Court on 01.09.2025.
39. Reply be filed within four weeks. Rejoinder thereto, if any, be filed within two weeks thereafter.
40. The provisions of Order XXXIX Rule 3 of the CPC be complied with within one week.
41. List before Court on 01.09.2025.
SAURABH BANERJEE, J.
MAY 6, 2025/R CS(COMM) 411/2025 Page 10 of 11 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 29/06/2025 at 20:10:15 Schedule Impugned Domain Name Domain Name Registrar www.royalenfielddealerindia.in GoDaddy.com, LLC Defendant No. 1 Defendant No. 15 www.royalbikedealers.in GoDaddy.com, LLC Defendant No. 2 Defendant No. 15 royalonfield.com GoDaddy.com, LLC Defendant No. 3 Defendant No. 15 royalenfield.org GoDaddy.com, LLC Defendant No. 4 Defendant No. 15 royalenfieild.com GoDaddy.com, LLC Defendant No. 5 Defendant No. 15 royalenfieldl.com GoDaddy.com, LLC Defendant No. 6 Defendant No. 15 royal-enfield.com GoDaddy.com, LLC Defendant No. 7 Defendant No. 15 royalenfiled.com PDR Ltd. d/b/a Defendant No. 8 PublicDomainRegistry.com Defendant No. 16 royalenfeild.com Above.com Pty Ltd.
Defendant No. 9 Defendant No. 17royalsenfield.com Domainshype.com, LLC Defendant No. 10 Defendant No. 18 royalinfield.com Moniker Online Services LLC Defendant No. 11 Defendant No. 19 royaleenfield.com Hostinger operations, UAB Defendant No. 12 Defendant No. 20 royalenfleid.com NameCheap, Inc. Defendant No. 13 Defendant No. 21 royalenfild.com DropCatch.com Defendant No. 14 Defendant No. 22 CS(COMM) 411/2025 Page 11 of 11 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 29/06/2025 at 20:10:15