Ultratech Cement Limited And Anr vs Shiv Cement Co.
- Court
- Bombay High Court
2026:BHC-OS:11103
901-COMIP-126-2016
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL IP SUIT NO. 126 OF 2016
UltraTech Cement Limited & Anr. …Plaintiffs
Versus
M/s. Shiv Cement Co. …Defendant
-----
Mr. Hiren Kamod a/w. Mrs. Alka Parelkar i/b. VA Associates for the Plaintiffs.
None for the Defendant.
Mr. Dhiraj D. Zatke, representative of the Court Receiver, present.
-----
CORAM : ARIF S. DOCTOR, J.
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RESERVED ON : 24 MARCH 2026
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PRONOUNCED ON : 28 APRIL 2026
P.C.
1. The present Suit is filed for infringement of trade mark combined with a
cause of action for passing off. The Plaintiffs in the present Suit are
companies incorporated under the Companies Act, 1956, having their
registered offices at the addresses mentioned in the cause title of the Plaint.
The Plaintiffs seek a permanent injunction to restrain the Defendant from
infringing the Plaintiffs’ registered ‘UltraTech’ trade marks as set out in
UltraTech trade marks
Exhibit P9 (“ ”) and from committing the tort of
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passing off by using the trade marks “Ultraplus Cement” / , “Ultra
HiTouch” / “Ultra HiTouch Cement bemisal Majbuti”/, and
“UltraPower” (“ impugned marks ”) in relation to the Defendant’s goods,
namely building materials / cement (“ impugned goods ”).
2. It is the case of the Plaintiffs’ that the impugned marks are nearly identical
with and/or deceptively similar to the Plaintiffs’ UltraTech trade marks and
that the impugned marks are used by the Defendant in relation to the sale of
cement for which the Plaintiffs have secured registration and are using their
“UltraTech” trade marks.
3. Mr. Kamod, Learned Counsel for the Plaintiffs, at the outset submitted that
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by an Order dated 1 August 2016, this Court had granted ex-parte ad-
interim reliefs in respect of prayers (a) and (c) of Notice of Motion (L) No.
63 of 2016. He then, drew my attention to the Court Receiver’s Report dated
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12 August, 2016, to point out that pursuant to the ex-parte ad-interim order,
the representative of the Court Receiver, had visited the premises of the
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Defendant and had seized the impugned goods, i.e., cement bags bearing the
impugned trade marks containing ULTRA, namely ‘ULTRA PLUS 42’,
‘ULTRA Hi Tech 950’, ‘ULTRA Uttan 10’, and ‘UltraGold 100’. He
submitted that over 1102 bags bearing the impugned trade marks had been
seized and sealed at the Defendant’s premises.
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4. He then submitted that vide an Order dated 30 August 2016, this Court
allowed the Plaintiffs’ Leave Petition No. 217 of 2016 and granted leave
under Clause XIV of the Letters Patent. He also pointed out that by a
separate Order of the same date, this Court disposed of the Notice of Motion
by confirming the ad-interim order additionally granting relief to the
Plaintiffs in respect of passing off in terms of prayer (b) of the Notice of
Motion.
5. Mr. Kamod then submitted that despite service of the writ of summons on
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30 September 2016, the Defendant had neither appeared in person nor
through an advocate. The Suit was, accordingly, transferred to the list of
undefended Suits as per the Order of the Prothonotary and Senior Master
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dated 21 December 2016.
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6. By the Order dated 2 December 2025, the Plaintiffs were directed to file
the Affidavit of Evidence and Compilation of Documents and Affidavit of
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Documents. Thereafter, vide an Order dated 27 January 2026, the Affidavit
of Examination in Chief of the Plaintiff's witness, Mr. Tim S. Gupta, the
Senior Manager – Legal and Constituted Attorney of Plaintiff No. 1, and the
Affidavit of Documents and Compilation of Documents were taken on
record and marked in evidence.
Submissions on behalf of the Plaintiffs:
7. Mr. Kamod, submitted that in 2001, Plaintiff No. 2 acquired a 10% stake
in L&T Ltd., which was increased to approximately 20% by 2002. In 2003,
L&T Ltd. undertook a demerger of its cement business into a separate
entity, namely UltraTech Cemco Limited. He submitted that in the same
year, Plaintiff No. 2 acquired an additional 8.5% equity stake from L&T
Ltd. and thereafter made an open offer to acquire 30% of the equity share
capital of UltraTech Cemco Limited with a view to obtaining management
control thereof. Pursuant thereto, in 2004, Plaintiff No. 2 acquired a
controlling stake in UltraTech Cemco Limited, which was subsequently
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renamed UltraTech Cement Limited, being Plaintiff No. 1 herein. He
further submitted that Plaintiff No. 1 had originally been incorporated as
L&T Cement Limited, and that its name was thereafter changed to
UltraTech Cemco Limited and subsequently to its present name, UltraTech
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Cement Limited, with effect from 14 October 2004. Copies of the
Certificates of Incorporation evidencing these name changes were
produced and marked as Exhibit P-7.
8. He then submitted that the Plaintiffs had applied for and secured registration
of the UltraTech trade marks shown at Exhibit P9 and that Plaintiff No. 2 is
the registered proprietor of the trade mark i.e. Ultra in the
Devanagari script bearing No. 3999722 in Class 19. He submitted that the
mark “Ultra” is a distinctive mark by itself and also forms a distinctive part
and an essential and prominent part/feature of the trade marks which are
already registered in the name of the Plaintiffs and/or pending registration.
9. Mr. Kamod submitted that initially Plaintiff No. 1 was the registered
proprietor of some of the UltraTech trade marks and had, by a Deed of
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Assignment dated 30 September 2009, inter alia, , assigned the UltraTech
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trade marks along with the goodwill of the business concerned in favour of
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Plaintiff No. 2. A copy of the Deed of Assignment dated 30 September
2009 was marked in evidence as Exhibit P9 pursuant to which Plaintiff No.
2 had come on record on the Register of Trade Marks as the registered
proprietor of the trade marks assigned in its favour by Plaintiff No. 1. He
then submitted that at present, Plaintiff No. 2 is the proprietor of the
UltraTech trade marks shown at Exhibit P9 and that the said registrations
are valid and subsisting. Mr. Kamod then pointed out that by virtue of a
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License Agreement dated 29 June 2011, a Supplementary Agreement dated
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19 October 2015, and a Registered User Agreement dated 3 May 2018,
all of which were marked in evidence as Exhibit P11. He submitted that
Plaintiff No. 2 had thereafter granted a license to Plaintiff No. 1 to use, inter
alia, the UltraTech trade marks and that use of the UltraTech trade marks by
Plaintiff No. 1 was for and on behalf of Plaintiff No. 2 and that such use
would enure to the benefit of Plaintiff No. 2 since Plaintiff No. 2 owned the
goodwill and reputation in the UltraTech trade marks. He submitted that the
Plaintiffs were also the registered proprietors of the trade mark UltraTech
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internationally in various countries and that the registration certificates in
relation to the Plaintiffs’ trade mark registrations in foreign jurisdictions
were marked in evidence as Exhibit P18.
10. Mr. Kamod then submitted that the Plaintiffs had been openly, continuously
and extensively using the UltraTech trade marks in relation to the building
materials, including cement, since the year 2003 and that the Plaintiffs
presently manufacture and market various products under the trade marks
inter alia
containing the mark 'UltraTech', of which ‘Ultra’ is a leading,
essential, and prominent feature. He pointed out that a representation of the
Plaintiffs’ cement bag bearing the UltraTech trade mark was marked in
evidence as Exhibit P13.
11. He then submitted that by virtue of such open, continuous and extensive use
of the UltraTech trade marks since 2003, the same have acquired immense
reputation and goodwill and have acquired a secondary meaning and have
come to be associated with the Plaintiffs alone. He then placed reliance upon
copies of Plaintiffs’ sales invoices for the years 2004 to 2025 in relation to
the Plaintiffs’ goods bearing the UltraTech trade marks which were marked
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in evidence as Exhibits P15 and P19. He also placed reliance upon the
Plaintiffs’ Chartered Accountants’ Certificates, providing a certified
statement of the Plaintiffs’ sales turnover and promotional expenditure in
relation to the UltraTech trade marks for the financial years 2003-2004 to
2024-2025, which was marked in evidence as Exhibit P16. He also placed
reliance on various advertisements and promotional material published in
Superbrand magazine and in various other print media, which were marked
in evidence as Exhibits P16 and P17.
12. Mr. Kamod then submitted that the market presence of the Plaintiffs was
evident from the volume of shares transacted in relation to Plaintiff No. 1,
which could be discerned from the Annual Reports of Plaintiff No. 1 for the
years 2003-2004, 2015-16, and 2024-2025, all of which were marked in
evidence as Exhibit P14. He also placed reliance upon orders in which
several Courts had recognised and protected the Plaintiffs’ rights in the
UltraTech trade marks by restraining third parties from using infringing
marks identical with and / or deceptively similar to the Plaintiffs’ UltraTech
trade marks. He pointed out that this Court had taken judicial notice of the
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fact that the Plaintiffs’ trade mark UltraTech has attained the status of a well-
known trade mark in India, subsequent to which the office of the Trade
Marks Registry has added the trade mark UltraTech to the list of well-known
trade marks. The list of well-known trade marks as published and
downloaded from the official website of the Trade Mark Registry showing
the Plaintiff’s trade mark in the list of well-known marks was marked in
evidence as Exhibit P20.
13. Mr. Kamod then submitted that, in or about July 2012, the Plaintiffs came
across the impugned goods bearing the impugned trade marks ‘ULTRA
PLUS’, ‘ULTRA HI-TOUCH’ & ‘ULTRA POWER’ being sold in the
market all in connection with the sale of cement. The Plaintiffs, therefore,
conducted a search in the Trade Mark Registry and found that the Defendant
had made applications for registration of the impugned trade marks
‘ULTRA PLUS’, ‘ULTRA HI-TOUCH’, and ‘ULTRA POWER’ under
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Application Nos. 2026655, 2035426, and 2214242, dated 21 September
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2010, 11 October 2010, and 3 October 2011, respectively, all in Class 19.
He submitted that the Plaintiffs therefore addressed a cease and desist notice
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dated 25 July 2012 to the Defendant calling upon the Defendant to cease
and desist using the impugned marks, including from manufacturing,
marketing, distributing, selling, offering for sale, advertising or otherwise
howsoever dealing in 'Cement' or any similar product bearing the impugned
trade marks ‘ULTRA PLUS’, ‘ULTRA HI-TOUCH’, and ‘ULTRA
POWER’ or any other mark that is identical or deceptively similar to the
Plaintiffs’ registered UltraTech trade marks but the parcel containing the
said notice was returned with the remark ‘Address incomplete without
Father’s name’.
14. He then submitted that the name and address of Defendant and other details
were confirmed by the Plaintiffs’ marketing department and also verified
from the records available on the Trade Mark Registry’s website and were
found to be correct. The Plaintiffs, through their Advocates, issued a
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reminder notice dated 20 September 2012 to the Defendant. He submitted
that this notice was also returned with the same remark. Mr. Kamod then
submitted that the marketing department of Plaintiff No. 1 was thereafter
unable to trace any product being sold under the impugned trade marks
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which led the Plaintiffs to believe that the Defendant was no longer using
the impugned trade marks to sell cement.
15. However, in November 2013, the Plaintiffs came across an advertisement of
the Defendant’s trade mark application under No. 2291944 in Class 19 for
the impugned trade mark ‘Ultra Cement’ in the Trade Marks Journal No.
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1614 dated 11 November 2013, by which the Defendant had applied for
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registration of the mark with a user claim of 1 April 2011. Mr. Kamod took
pains to point out that in the said application the Defendant’s address was
the same as the address at which the notices were sent by the Plaintiffs. He
thus submitted that it was clear the Defendant was intentionally dodging
service of the said notices.
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16. Mr. Kamod then pointed out that on 10 December 2013, the Plaintiffs filed
a Notice of Opposition to oppose the registration of the Defendant’s trade
mark application under No. 2291944, however, despite the passage of
considerable time, no counter statement or reply was filed by the Defendant.
The Plaintiffs, through their attorneys, followed up with the Trade Marks
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Registry vide letters dated 29 March 2014 and 4 December 2015, and the
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Plaintiffs’ marketing team also simultaneously conducted searches in the
market to locate the Defendant’s cement bags bearing the mark ULTRA
CEMENT but were at that time unable to trace any cement bag bearing the
mark ULTRA CEMENT.
17. He submitted that it was only thereafter that the Plaintiffs, through their
advocates, learnt that the Defendant’s trade mark application for the trade
mark ULTRA CEMENT under No. 2291944 had been abandoned due to
non-filing of a counter statement by the Defendant.
18.
Mr. Kamod then submitted that in or around June 2016, the Plaintiffs’
marketing department came across cement bags bearing the marks UltraPlus
CEMENT / and UltraHiTouch CEMENT/
manufactured by Defendant in the year 2016, which were identical with
and/or deceptively similar to the Plaintiffs’ UltraTech trade marks. He
pointed out that the said cement bags did not reveal any specific address of
the Defendant. He submitted that given the Plaintiffs’ past attempts at
serving the Defendant having failed, it was clear that the Defendant was
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clearly a fly-by-night operator who was using the impugned trade marks to
sell cement.
19. He submitted that the Plaintiffs also came across an article in a local
newspaper with circulation in Punjab called Jagbani (Chandigarh Edition)
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dated 22 June 2016, which carried an article regarding the increase in the
usage and selling of duplicate cement in Punjab. He submitted that the said
article reported on the increase in the sale of duplicate cement under trade
marks which were deceptively similar to well-known trade marks including
those of the Plaintiffs. He submitted that the Plaintiffs also learnt that the
Defendant was also involved in the racket of selling cement for use in
government projects and pointed out that the said article in fact carried an
image of a cement bag bearing the impugned trade mark UltraHiTouch
CEMENT.
20. Mr. Kamod reiterated that all of the impugned marks, namely ULTRA
PLUS/ULTRAPLUS CEMENT/ , ULTRA HITOUCH/ ULTRA
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HITOUCH CEMENT BEMISAL MAJBUTI/ , and ULTRA
POWER contain the leading and essential feature “ULTRA”, which is also
the essential feature of the Plaintiff’s registered trade mark ‘UltraTech’ trade
marks. He also pointed out that the placement of features, getup, colour
scheme, and general idea of the impugned marks was identical with and / or
. He also
deceptively similar to the Plaintiffs’ ‘UltraTech’ trade marks
pointed out that the impugned marks as a whole were visually, structurally,
and phonetically identical with and, in any event, deceptively similar to the
Plaintiffs’ registered and well-known UltraTech trade marks. He submitted
that the Defendant had made minor and insignificant changes to the
UltraTech trade marks to form the impugned marks and that such
inconsequential modifications did not make the impugned marks distinctive
or dissimilar to the UltraTech trade marks. He submitted that the impugned
marks were used for the same goods for which the Plaintiffs are registered
and were using their UltraTech trade marks.
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21. Basis the above, he submitted that the dishonesty on the part of the
Defendant was plainly evident and that the Defendants’ use of the impugned
marks in respect of the sale of cement was likely to cause confusion,
deception, and misrepresentation amongst consumers and members of the
trade. He further also submitted that the use of the impugned marks was
without due cause and was likely to take advantage of and be detrimental to
the distinctive character and repute of the Plaintiffs’ well-known mark
UltraTech. Mr Kamod, therefore, submitted that the Defendants’ use of any
of the impugned marks would amount to an infringement of the Plaintiffs’
registered UltraTech trade marks and also to passing off.
22. Mr. Kamod then submitted that the Defendant had used the impugned marks
only with a view to trade upon and cash in on the goodwill and reputation
of the Plaintiffs’ registered marks. He further submitted that since the
impugned mark was used in respect of cement, the same seriously exposes
the trade and public to an inevitable risk of deception and/or confusion and
jeopardises the public interest at large, more so given that the cement was of
substandard quality. He reiterated that the substandard quality of the cement
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manufactured/sold by the Defendant by using the impugned marks was also
reported in Jagbani (Chandigarh Edition), and that the representative of the
Court Receiver had also found goods manufactured under the impugned
mark when he visited the Defendant’s premises. Mr. Kamod submitted that
the Plaintiff continued to track the Defendant’s activity right from the year
July 2012 and had incurred substantial costs towards investigation,
prosecution, and litigation to the tune of ₹ 16,48,006/- (Rupees Sixteen
Lakhs Forty-Eight Thousand and Six Only) and tendered a statement of the
expenses incurred by the Plaintiff.
23. Mr. Kamod then placed reliance on the decision of this Court in the case of
1
Hiralal Prabhudas v. Ganesh Trading Company & Ors , to point out the
principles laid down for determining deceptive similarity viz.
“5. What emerges from these authorities is (a) what is the main idea or
salient features, (b) marks are remembered by general impressions or
by some significant detail rather than by a photographic recollection of
the whole, (c) overall similarity is the touchstone, (d) marks must be
looked at from the view and first impression of a person of average
intelligence and imperfect recollection, (e) overall structure, phonetic
similarity and similarity of idea are important and both visual and
phonetic tests must be applied, (f) the purchaser must not be put in a
1
AIR 1984 BOM 218.
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state of wonderment, (g) marks must be compared as a whole,
microscopic examination being impermissible, (h) the broad and
salient features must be considered for which the marks must not be
placed side by side to find out differences in design and (i) overall
similarity is sufficient. In addition, indisputably must also be taken into
consideration the nature of the commodity, the class of purchasers, the
mode of purchase and other surrounding circumstances.”
Basis the above, he submitted that in the present case, given how identical
or then deceptively similar the impugned marks were to the Plaintiff’s
registered Trade Mark, the aforesaid decision would squarely apply.
24. Mr. Kamod then also placed reliance upon the decision of this Court in the
2
case of Ultra Tech Cement Ltd. v. Alaknanda Cement (P) Ltd. , to point
out that Plaintiff No. 1 herein had, in that case, sought to protect its rights in
the UltraTech trade marks against a third party and that this Court had
granted an injunction after holding that even though Plaintiff No. 1 did not
have a registration for the trade mark Ultra Tech per se , the same was
distinctive of Plaintiff No. 1’s goods and that the objection raised by the
Defendant therein under Section 17 of the Trade Marks Act, 1999 was not
tenable. He submitted that this decision was confirmed by the Division
2
2011 SCC OnLine Bom 783.
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Bench of this Court in Alaknanda Cement (P) Ltd. v. Ultratech Cement
3
Ltd. in which the Division Bench held as follows, viz.
“32 .The Defendants have next relied on Section 17 of the Trade & Marks
Act, 1999 in support of their contention that the registration granted to the
plaintiff does not confer any exclusive right in the matter “ULTRA” and
“ULTRATECH” which form only a part of the whole of the plaintiff's
registered trade mark. Section 17 of the Act is for the sake of convenience
reproduced here under :-
“17. (1) When a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive right to the
use of the trademark taken as a whole.
(2) Notwithstanding anything contained in sub-section
(1), when a trade mark –
(a) contains any part –
(i)which is not the subject of a separate application by the
proprietor for registration as a trade mark; or
(ii)which is not separately registered by the proprietor as a trade
mark; or (b) contains any matter which is common to the trade or
is otherwise of a non-distinctive character; The registration
thereof shall not confer any exclusive right in the matter forming
only a part of the whole of the trade mark so registered.”
33. From the language used in Section 17 it is clear that when a trade mark
consists of several marks the registration confers upon the proprietor
exclusive rights to the use of trade mark taken as a whole. As held in the
aforestated decisions while comparing the marks, the Court has to consider
and compare the essential features of both the marks. If the essential features
are similar, then confusion and deception can be said to arise. As submitted
by the plaintiff, all that Section 17 lays down is that the registration of a trade
mark shall not confer any exclusive rights in the matter forming only a part
of the whole of trade mark so registered unless the part is the subject matter
3
2011 SCC OnLine Bom 1487.
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of a separate application for registration or is separately registered or is
distinctive. The provisions of Section 17 contained in Sub Section 2(a)(i) and
2(a) (ii) and Sub Section (b) show that the three things mentioned therein are
disjunctive and not cumulative. In the present case the word ULTRATECH is
distinctive. As submitted by the plaintiff, the fact that the plaintiff’s mark is
registered without any disclaimers or limitations itself shows that the word
ULTRATECH is a distinctive mark and the plaintiff has satisfied the criteria
laid down in Sections 9 and 11 of the Trade & Marks Act, 1999. Therefore in
the present case though the word ULTRATECH is not separately registered
nor is a subject of a separate application, the same being distinctive shall not
be hit by Section 17 (2) as submitted by the defendants. Both the Ld.
Advocates have relied on various paragraphs of the decision of the Calcutta
High Court in the case of Three-N Products Private Ltd., V/s. Emami Ltd.,
GA Nos. 2951 and 3976 of 2007 and CS No.204 of 2007, Paragraph 35 of the
said decision is relevant and is reproduced hereunder:
“35. The words ‘the registration thereof shall not confer any
exclusive right” towards the end of Section 17(2) have to be
understood in the context. The import of such words is that the
registration of the composite mark will not ipso facto confer any
exclusive right as to the parts of the composite mark. But if the owner
can establish exclusivity alone, the owner can assert the exclusivity.
The registered owner is entitled to protection of its goodwill in such
prominent features as in an action for passing off unless the
registered owner seeks to rely on Section 17(2)(b) of the Act in
respect of a distinctive matter not common to the trade.”
34. In view thereof, the defendants' contentions/arguments with regard to
reliance on Section 17 of the Trade Marks Act, 1999 is misplaced.”
25. Basis the above, Mr. Kamod submitted that the Plaintiffs have squarely
made out a case for and are entitled to the grant of reliefs in terms of prayer
clauses (a), (b), (c), and (d) of the present Suit in respect of infringement of
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trade mark, passing off, damages, and destruction of the infringing goods
and materials.
26. In addition to the above, Mr. Kamod submitted that the present Suit, being
a Commercial Suit, is governed by Section 35 of the Civil Procedure Code,
1908, as amended by Section 16 of the Commercial Courts Act, 2015,
entitling the Plaintiff to an order of costs against the Defendant. He
submitted that under the provisions of Section 35, the costs contemplated
thereunder would include legal fees and all other expenses incurred in
connection with the proceedings. He also pointed out that Section 35(3) of
the amended Code of Civil Procedure, 1908, provides that while awarding
costs, due regard is also required to be given to the conduct of the Defendant.
27. In the aforesaid context, Mr. Kamod submitted that given the dishonest
adoption of the impugned marks by the Defendant, the Defendant's malafide
intention to ride upon the goodwill and reputation of the UltraTech trade
marks, the Defendant’s inferior / spurious nature of the cement being sold
under the impugned marks, and the failure/neglect of the Defendant to
appear before this Court, show that the conduct of the Defendant was plainly
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dishonest. He submitted that in view of such conduct of the Defendant, not
only are the Plaintiffs entitled to an order of damages and costs, but they are
also entitled to an order of exemplary costs. Mr. Kamod then submitted that
in addition to costs as contemplated under the Commercial Courts Act, 2015,
this Court also has the inherent power under Section 151 of the Civil
Procedure Code, 1908, to grant exemplary costs in favour of the Plaintiffs
and that such an order was required to be passed to act as a deterrent to other
dishonest parties.
28. Basis the above, Mr. Kamod submitted that the Defendant was liable to pay
punitive damages. Furthermore, considering the nature of infringement and
passing off, the nature of rival goods being cement which are used in, inter
alia, sensitive areas including the construction of homes, bridges, public and
private infrastructure, and with a view to dissuading others from indulging
in such activities, it is imperative that exemplary costs (including an order
for costs of the litigation) be awarded to the Plaintiffs. He submitted that in
the event this Court was not inclined to award the damages of ₹1,00,00,000/-
as claimed by the Plaintiffs in the Suit, the Court Receiver’s Report dated
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12 August 2016 demonstrated that the Defendant had manufactured and
was selling substantial quantities of cement bearing the impugned marks. He
submitted that in these facts and circumstances, and given the fact that the
Defendant had chosen not to file its Written Statement or Reply, this is a fit
case for the Court to order and decree the Defendant to render a true and
faithful account of all the profits earned by the Defendant by use of the
impugned marks by themselves and/or any other mark containing the
impugned marks and/or the word Ultra by itself or in combination with any
other word or device and that the Defendant be further ordered and decreed
to pay to the Plaintiffs such amount as may be found due on such account
being taken.
29. After having heard Mr. Kamod and having considered the evidence led by
the Plaintiff, none of which is even controverted, much less denied, I am
satisfied that the Plaintiffs have made out a case which entitles the Plaintiffs
to the reliefs sought for. The reasons are as follows:
A. There is no dispute that the Plaintiffs are the registered proprietors of
the UltraTech trade marks as is evident from the legal proceedings
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certificates marked in evidence at Exhibit P9. The Plaintiffs have also
proved through the evidence of the Plaintiffs’ witness, i.e., Mr. Tim S.
Gupta, that the Plaintiffs have been openly, continuously, and
extensively using the UltraTech trade marks since the year 2003. The
Plaintiffs have, in support of their use of the said trade mark, produced
in evidence several sales invoices from the year 2004 onwards; a
statement of sales and promotional expenditure in relation to the
Plaintiffs trade marks for the financial years 2003-2004 to 2024-2025,
duly certified by a Chartered Accountant; (iii) copies of various
advertisements and promotional material published in Superbrand
magazine and in various other print media; and (iv) the Annual Report
of Plaintiff No. 1 for the years 2003-2004 and 2015-16. None of the
Plaintiffs’ evidence has been challenged.
B. The Plaintiff has thus, on the basis of the evidence produced and as set
out in (A) above, clearly proved the extensive commercial use of the
UltraTech trade marks by the Plaintiffs. The evidence led by the
Plaintiff’s witness has also established that UltraTech has acquired
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distinctiveness and is exclusively associated by the public and persons
in the trade with the Plaintiffs alone. The Plaintiffs have also relied
upon the decision of the Bombay High Court in the case of UltraTech
Cement Limited and Ors v. Dinesh Kothari and Ors to point out that
the UltraTech trade mark has been recognised by the Court as a well-
known trade mark. Thus, the Plaintiffs have clearly established the
immense goodwill and reputation in the registered UltraTech trade
marks including in ULTRA, in the context of cement in Class 19.
C. The Plaintiffs also, on the basis of orders which have been marked as
Exhibit P21 in evidence, including orders of this Court, have
recognised and protected Plaintiffs’ proprietary rights in the UltraTech
trade marks. As already noted in (B) above, this Court has held that
the Plaintiffs’ trade mark UltraTech has acquired the status of a well-
known trade mark in India. The said trade mark has also been included
in the list of well-known trade marks which has been marked in
evidence as Exhibit P20.
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D. From a bare perusal of the rival trade marks, I have not the slightest
hesitation in holding that the impugned marks, namely, ULTRA
PLUS/ULTRAPLUS CEMENT/ , ULTRA HITOUCH/
ULTRA HITOUCH CEMENT BEMISAL MAJBUTI/ and
ULTRA POWER as a whole are visually, structurally, and phonetically
virtually identical to, and, in any event, deceptively similar to the
Plaintiffs’ registered and well-known UltraTech trade marks. The
impugned marks nearly contain the entirety of the Plaintiff’s mark,
ULTRA, which is also the leading and essential feature of the other
UltraTech trade marks. The manner in which the impugned marks are
used on the Defendant’s impugned cement bags, more particularly, the
get-up, placement, colour scheme, and general idea of the impugned
marks, which makes evident the Defendant’s mala fide adoption and
use of the impugned marks. The similarities between the rival trade
marks cannot be a matter of coincidence. The rival goods are also the
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same, i.e., cement. Hence, the Defendant’s use of the impugned trade
marks in respect of the impugned goods is more than likely to cause
confusion, deception, and misrepresentation amongst consumers and
members of the trade. The possibility of the association of the
Defendants’ impugned goods bearing the impugned marks with the
Plaintiffs’ goods bearing the UltraTech trade marks cannot be ruled
out.
E. In the context of the above, I have no hesitation in holding that the use
of the impugned marks is without due cause and is likely to take
advantage of the distinctive character and goodwill associated with the
Plaintiffs’ trade marks. In this context, I find the reliance placed upon
the decisions in Hiralal Prabhudas , Ultra Tech Cement Ltd. , and
Alaknanda Cement (P) Ltd. to be entirely apposite since the
Defendants’ use of the impugned marks clearly amounts to
infringement of the Plaintiffs’ registered trade marks and passing off
the cement manufactured by the Defendant as being that of the
Plaintiff.
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F. The dishonesty and lack of bonafides on the part of the Defendant is
also apparent from the fact that the Defendant has not at any stage of
the Suit appeared, either in person or through its Advocate, despite due
service of the Writ of Summons. The Defendant has also chosen not to
even file a Written Statement to justify the Defendant's adoption and
use of the impugned trade marks. The Defendant has, neither led
evidence nor cross-examined the Plaintiff's witness. Thus, the case as
pleaded in the Plaint has gone uncontroverted, and the evidence
unchallenged. Furthermore, the evidence led by the Plaintiff has not
been tested, nor have the documents been denied.
G. Hence, for the reasons set out in (A) to (F), I find that the Plaintiffs
have made out a clear case for infringement of trade mark and passing
off. The Plaintiffs are entitled to the grant of relief of injunction in
terms of prayer clauses (a), (b) and (d) of the present Suit.
H. Insofar as the prayer for damages is concerned, the Plaintiffs have not
led any evidence to establish their claim for damages in the sum of
₹1,00,00,000. However, it is well-settled in the context of trade mark
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infringement and passing off suits that, in appropriate cases, the Court
may award damages of a compensatory as well as punitive nature,
particularly where the infringement is deliberate, dishonest, or
calculated to unjustly enrich the Defendant. It is also well settled that
in cases where precise quantification of loss is inherently difficult,
especially in matters involving infringement of intellectual property
rights, the Court is not precluded from awarding damages on a
reasonable and rational basis. Further, where a Defendant has despite
service, chosen not to appear the Court would be justified in drawing
an adverse inference and in ensuring that such conduct does not result
in the Defendant escaping liability. In the present case, the conduct of
the Defendant is ex facie dishonest and lacking in bona fides.
I. Further, the present Suit, being a Commercial Suit, is governed by the
provisions of Section 35 of the Code of Civil Procedure, 1908, as
amended by Section 16 of the Commercial Courts Act, 2015, which
mandates that costs shall ordinarily follow the event and be awarded to
the successful party. The provision further requires the Court, while
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determining costs, to have due regard, inter alia, to the conduct of the
parties. In the facts of the present case, the record reflects that the
Defendant, in spite of being duly served, has chosen not to defend the
Suit nor even cross-examine the Plaintiff’s Witness. The Defendant’s
negligent conduct compelled the Plaintiff to incur substantial and
avoidable expenditure. The Defendant's adoption of the impugned
mark was entirely dishonest and was actuated in bad faith. In these
circumstances, having regard to the conduct of the Defendant and the
statutory mandate under Section 35 of the Civil Procedure Code, 1908,
as amended, the Plaintiff is entitled to an award of costs.
30. Hence, for the aforesaid reasons, I pass the following order:
ORDER
i.
The Suit is decreed in terms of prayer clauses (a), (b), and (d), which are
reproduced below:
a) that the Defendant by itself, its servants, agents and distributors or
representatives or any person claiming through or under it and the like be
restrained by a perpetual order and injunction from in any manner in
relation to any of its goods from using the marks “UltraPlus CEMENT
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or any mark
” & “UltraHiTouch CEMENT ”
containing words together or by
“UltraPlus” & “UltraHiTouch”
themselves or with any other word or device and/or any other mark
containing the impugned marks as shown in Exhibit J1-J8, and/or the word
Ultra by itself or in combination with any other word or device and/or other
deceptively similar words written in a stylized manner or in any manner
which is identical with and/or deceptively similar to all the registered and
well known trademarks bearing No. 1244745 / bearing No.
1326528 “ ” trademarks or parts thereof bearing
Registration Nos. 1575299, 1544648, 1544649, 1340606, 1525671,
1525672, 1908355, 1908356, 2080447, 2080448, 2080449and 2103267 so
as to infringe the Plaintiffs said registered trademarks or part thereof;
b) that the Defendant by itself, its servants, agents, representatives or any
person claiming through or under it and the like be restrained by a perpetual
order and injunction of this Hon’ble Court from using the marks “UltraPlus
CEMENT ” & “UltraHiTouch CEMENT ” or any
mark containing the words “UltraPlus” & “UltraHiTouch” together or by
themselves or with any other word or device and/or any other mark
containing the impugned marks as shown in Exhibit J1-J8, the word Ultra
by itself or in combination with any other word or device and/or any other
deceptively similar words written in a stylized manner or in any manner
and/or any other deceptively similar mark to the Plaintiff’s “UltraTech
CEMENT with Sun Device”/ ” trademarks or parts thereof
so as to pass off and/or enable others to pass off the Defendant’s goods as
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and for the goods of the Plaintiffs or in some way connected with the
Plaintiffs;
d) that the Defendant be ordered and decreed to deliver up to the
Plaintiffs for destruction thereof all the bags, stationery, brochures,
pamphlets, forms and all promotional advertising, literature, packing
material, poly bags and other materials, articles and effects of the Defendant
bearing the impugned marks along with all stamps, dies, articles, papers
and things, bearing the impugned marks
“UltraPlus CEMENT
” & “UltraHiTouch CEMENT ” or any mark the containing
words “UltraPlus” & “UltraHiTouch” together or by themselves and or
any other mark containing the impugned marks and/or the word Ultra by
itself or in combination with any other word or device and/or any other
articles or materials used for printing the impugned marks/labels;
ii. In view of (H) and (I), the Defendant shall pay costs of Rs. 50,00,000/-
(Rupees Fifty Lakhs only) to the Plaintiff within a period of 8 weeks from
today.
iii. The Defendant shall also pay the Plaintiff a sum of Rs. 16,48,006/–
(Rupees Sixteen Lakhs Forty Eight Thousand and Six) as per the
Statement of Expenses incurred by the Plaintiff within a period of 8
weeks from today.
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iv. In the event the Defendant does not comply with (ii) and (iii) above, the
Defendant shall be liable to pay interest at the rate of 8% per annum.
v. The Court Receiver shall stand discharged without passing of the
accounts on the Plaintiff’s undertaking to make payment of all necessary
costs, charges, and expenses of the Court Receiver.
vi. The Suit is disposed of in the aforesaid terms.
[ARIF S. DOCTOR, J.]
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