Delhi High Court - Orders
X And Anr vs Y on 28 March, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 277/2025 with I.A. 8127-8133/2025
X AND ANR .....Plaintiffs
Through: Mr. Kunal Khanna, Advocate.
versus
Y .....Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
ORDER
% 28.03.2025 I.A. 8130/2025 (exemption from filing originals, certified/ clearer/ translated copies of documents, etc.)
1. Allowed, subject to the plaintiffs filing certified/ clearer/ translated copies of the documents and documents with prescribed margins within four (4) weeks from today.
2. The plaintiffs are exempted from filing originals at this stage.
3. The application stands disposed of.
I.A. 8132/2025 (seeking exemption from effecting advance service upon the defendant)
4. The plaintiffs seek urgent interim relief against the defendant with regard to infringing products and for this purpose, an ex-parte appointment of Local Commissioner is also sought to confiscate the infringing products. 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.
CS(COMM) 277/2025 Page 1 of 12This 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 25/04/2025 at 22:01:29
5. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the defendant is granted.
6. The application is disposed of.
I.A. 8133/2025 (u/s 149 of the CPC)
7. Mr. Kunal Khanna, counsel appearing on behalf of the plaintiffs, submits that the requisite court fees shall be paid within one (1) week. 7.1. The aforesaid statement of counsel for the plaintiffs is taken on record.
8. The application is disposed of.
I.A. 8129/2025 (u/s 12A of Commercial Courts Act, 2015)
9. 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.
10. The application stands disposed of.
I.A. 8131/2025 (seeking to mask the identities of parties to the instant suit)
11. This application has been filed on behalf of plaintiffs seeking masking the name of the defendant.
12. It is submitted that there is a possibility that the defendant might get the knowledge of the present suit and remove the infringing products.
13. For the reasons stated in the application, the plaintiffs are permitted to mask the identities of the parties to the present suit.
14. It is directed that the identities of the parties shall remain masked till the filing of the report of the Local Commissioner.
15. The Registry shall be at liberty to reflect the actual cause title of the present case after filing of the report of the Local Commissioner.
CS(COMM) 277/2025 Page 2 of 12This 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 25/04/2025 at 22:01:29
16. The application stands disposed of.
CS(COMM) 277/2025
17. Let the plaint be registered as a suit.
18. Issue summons.
19. Summons be issued to the defendant through all permissible modes. The summons shall state that the written statement shall be filed by the defendant within thirty (30) 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.
20. Liberty is given to the plaintiffs to file replication, if any, within thirty (30) days from the receipt of the written statement. Along with the replication filed by the plaintiffs, affidavit of admission/ denial of the documents of the defendant be filed by the plaintiffs.
21. 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.
22. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
23. List before the Joint Registrar on 14th May, 2025 for completion of service and pleadings.
24. List before the Court on 10th September, 2025. I.A. 8127/2025 (u/O-XXXIX Rules 1 and 2 of the CPC)
25. The present suit has been filed seeking permanent/ perpetual CS(COMM) 277/2025 Page 3 of 12 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 25/04/2025 at 22:01:30 injunction restraining the defendant from infringement of design, trade mark and copyright of the plaintiffs and passing off along with other ancillary reliefs.
26. The plaintiffs are group companies engaged in the manufacture and sale of motorcycles, scooters and their parts and accessories under the well- reputed trade mark HERO.
27. The plaintiff no.1, Hero Invest Corp Private Limited, and the plaintiff no.2, Hero MotoCorp Limited, are companies incorporated under the laws of India. It is stated that the plaintiff no.1 is the owner and proprietor of the marks HERO, , and (hereinafter 'HERO marks') and has been continuously, uninterruptedly and extensively using the same for nearly 60 years in relation to scooters, motorcycles and parts thereof as well as lubricant and engine oil.
28. It is averred that the HERO marks have been protected by the plaintiff no.1 through numerous registrations across several countries. The plaintiff no.1 has also obtained registrations for the HERO marks in India. The details of the registrations of the HERO marks in favour of the plaintiff no.1 are given below:
Trade mark Class TM Registration Valid
Application Upto
No.
HERO (word mark) 4 2205777 15.09.2011 15.09.2031
HERO (word mark) 12 235780 13.06.1966 13.06.2028
9, 12, 16, 25, 2191293 16.08.2011 16.08.2031
CS(COMM) 277/2025 Page 4 of 12
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 25/04/2025 at 22:01:30 (H device) 35, 36, 37, 4, 42 9, 12, 16, 25, 2191294 16.08.2011 16.08.2031 35, 36, 37, (Device mark) 41, 42 and 99 4 2314273 12.04.2012 12.04.2032 (Device mark) 4 2314274 12.04.2012 12.04.2032 (H device)
29. It is stated that the plaintiff no.2, vide authority letter dated 10th May, 2022, is exclusively authorized to use the HERO marks.
30. The plaintiffs are also the registered owner of the artwork of the unique device.
31. The plaintiffs manufacture and sell lubricants under their sub-brands HERO GENUINE ENGINE OIL/ HERO GENUINE 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.
32. The sales figures and advertising and promotional expenses incurred by the plaintiffs in respect of their HERO GENUINE ENGINE OIL/ HERO GENUINE OIL are given in paragraph no.23 of the plaint.
33. It is submitted that the defendant, SM Plast & Chemicals, is carrying CS(COMM) 277/2025 Page 5 of 12 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 25/04/2025 at 22:01:30 out its business of manufacturing and supplying plastic bottles as well as bottle caps and plastic moulds for usage in different industry from its premises located at Nangloi, Delhi, the design of which is deceptively similar to the suit designs used by the plaintiffs to sell their lubricant engine oils.
34. It is submitted that the defendant is listed on IndiaMart where its is making sale of the impugned products, i.e., plastic bottles identical with/ similar to the suit designs and the same are listed in the section of lubricant bottles. The plaintiffs' investigator also visited the defendant's premises on 24th February, 2025. A photograph of the defendant's listing on IndiaMart is provided in the plaint and the same is reproduced below for ease of reference:
CS(COMM) 277/2025 Page 6 of 12This 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 25/04/2025 at 22:01:30
35. It is stated that the plaintiffs have a credible apprehension that the impugned bottles sold by the defendant bear the plaintiffs' HERO marks.
36. It is further submitted that by adopting and using the impugned designs in relation to identical goods, i.e., lubricants, the defendant is misrepresenting and deceiving the public and tarnishing the plaintiffs' goodwill, reputation and globally recognised brand image.
37. A comparative table illustrating the similarities between the design and labels of the products of the plaintiffs and the impugned products of the defendant is set out below:
Plaintiffs' Product/ Registered Suit Defendant's Infringing Product/ Designs Design FRONT VIEW FRONT VIEW REAR VIEW REAR VIEW CS(COMM) 277/2025 Page 7 of 12 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 25/04/2025 at 22:01:30 SIDE VIEW SIDE VIEW SIDE VIEW SIDE VIEW
38. The comparison above categorically shows that the defendant has copied the registered suit designs of the plaintiffs almost in its entirety including the hexagonal shape, the dotted surface pattern, the gold colour composition and/ or the unique composition of lines.
39. Based on the averments made in the plaint, the plaintiffs have established their statutory as well as common law rights over the designs used for products sold under the HERO marks including the mark HERO GENUINE OIL.
40. On a prima-facie view, the impugned products being sold by the CS(COMM) 277/2025 Page 8 of 12 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 25/04/2025 at 22:01:30 defendant appear to be a slavish imitation of the registered suit designs of the plaintiffs. Clearly, an attempt has been made by the defendant to create an impression that the impugned products being sold by the defendant are associated with the plaintiffs.
41. Balance of convenience is in favour of the plaintiffs and against the defendant. Irreparable loss, harm and injury would be caused to the plaintiffs if the defendant continues to sell the impugned products. Prejudice would also be caused to the public as the impugned design of the defendant's impugned products is deceptively similar to the plaintiffs' suit designs and is likely to cause confusion in the market.
42. Consequently, till the next date of hearing, the defendant, its proprietor/ partners, associates, agents, officers, employees, distributors, franchisees, representatives and assignees are restrained from manufacturing, trading, supplying, selling, marketing, in any manner including online sale or dealing in any other way with:
i. Any bottle/ packaging which is identical with or deceptively similar to the plaintiffs' suit designs.
ii. Any product bearing any trade mark identical with/ similar to the plaintiffs' HERO marks.
43. Issue Notice.
44. Notice be issued to the defendant through all permissible modes, including e-mail.
45. Reply be filed within four (4) weeks.
46. Rejoinder thereto, if any, be filed within two (2) weeks thereafter.
47. In view of the fact that the plaintiffs have sought appointment of a Local Commissioner to seize the infringing products, the very purpose of CS(COMM) 277/2025 Page 9 of 12 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 25/04/2025 at 22:01:30 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 the CPC at the time of execution of the commission which shall not be later than two (2) weeks from today. The affidavit in terms of Order XXXIX Rule 3 of the CPC shall be filed by the plaintiffs within one (1) week thereafter.
48. List before the Joint Registrar on 14th May, 2025 for completion of service and pleadings.
49. List before the Court on 10th September, 2025. I.A. 8128/2025 (O-XXVI Rule 9 of the CPC)
50. 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 products and packaging/ promotional material, etc. using/ bearing the impugned design (hereinafter referred to as 'infringing material') and effect seizure of the same.
51. In view of what is stated above, the plaintiffs have made out a case for appointment of a Local Commissioner.
52. Accordingly, Mr. Sarthak Bhardwaj, (Mobile No. +91 9718119042) is appointed as a Local Commissioner to visit the premises of the defendant situated at:
S M Plast & Chemicals, C-1, Naresh Park Extension, Nangloi, West Delhi, New Delhi-110041.CS(COMM) 277/2025 Page 10 of 12
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 25/04/2025 at 22:01:30
53. The following directions are passed in this regard:
a. The Local Commissioner, along with a representative of the plaintiffs and their 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 material. c. The Local Commissioner shall make an inventory of all the 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 plaintiffs 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 material.
f. The defendant and its representatives are directed to provide full assistance to the Local Commissioner for executing the present commission.
g. 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.CS(COMM) 277/2025 Page 11 of 12
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 25/04/2025 at 22:01:30 h. 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.
54. The Local Commissioner shall file his 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.
55. 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.
56. The application stands disposed of in the above terms.
57. The order passed today shall not be uploaded for a period of two (2) weeks from today.
58. Dasti.
AMIT BANSAL, J MARCH 28, 2025 at CS(COMM) 277/2025 Page 12 of 12 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 25/04/2025 at 22:01:30