Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 26.09.2025
+ CS(COMM) 1051/2024, I.A. 46268/2024 & I.A. 20919/2025
SANDVIK INTELLECTUAL PROPERTY AB .....Plaintiff
versus
BHANWAR LAL DHABHAI AND ORS. .....Defendants
Advocates who appeared in this case
For the Plaintiff : Mr. Urfee Roomi, Ms. Janaki Arun & Mr.
Ayush Dixit, Advocates.
For the Defendants : Mr. Neel Mason, Ms. Pragya Jain & Ms.
Surabhi Katare, Advocates for D-6.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
I.A. 20919/2025
1. This Application has been filed on behalf of the Plaintiff under Order
VIII Rule 10 of the Code of Civil Procedure, 1908 (“ CPC ”), seeking
Pronouncement of Judgment against Defendant No. 1.
2. The Plaintiff has filed the present Suit for a decree of permanent
injunction restraining infringement of its Trade Mark, passing off, dilution,
CS(COMM) 1051/2024 Page 1 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
damages, rendition of accounts, delivery up, etc.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF:
3. Mr. Urfee Roomi, the learned Counsel for the Plaintiff submitted that
the Plaintiff, Sandvik Intellectual Property AB, is an intellectual property
holding Company that is organised and existing under the laws of Sweden.
The Plaintiff is part of the renowned group of Sandvik Group of Companies
(“ Plaintiff Group of Companies ”).
4. The learned Counsel for the Plaintiff submitted that the Plaintiff
Group of Companies was founded in 1862 and is a leading multinational
high-tech engineering company specialising in mining and rock excavation,
rock processing and metal cutting. The Plaintiff Group of Companies is
known for its innovative, digitalised and sustainable engineering solutions
that drive industry advancements. The Plaintiff Group of Companies
prioritises enhancing customer productivity, promoting sustainability and
ensuring safe operations across its business activities.
5. The learned Counsel for the Plaintiff submitted that the Plaintiff
utilises various “SANDVIK” Trade Marks (“ Plaintiff’s Marks ”) in
connection with its goods and services. The Mark ‘SANDVIK’ functions as
the Plaintiff's House Mark and corporate name and has been in continuous
and extensive use on a global scale since 1876. From the inception of its use,
the Plaintiff’s Mark has been applied to and is inherently associated with
mining, metal cutting, manufacturing, digital manufacturing solutions, tool
management solutions, metrology solutions and software, among other
offerings. Along with the Word Mark, the Plaintiff has also adopted the
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Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
6. Device Marks
.
7. The learned Counsel for the Plaintiff submitted that in 2023, the
Plaintiff introduced a new logo
inspired by its 1962 “SANDVIK” logo, as a homage to the Company's rich
history and legacy. The Plaintiff's new brand identity reflects its strategic
shift towards integrating hardware, software and digital solutions within the
mining, manufacturing and infrastructure industries. This transformation is
aimed at enhancing sustainability and productivity for customers on a global
scale.
8. The learned Counsel for the Plaintiff submitted that the Plaintiff's
Association with India dates back to 1950, following an official invitation
from India's first Prime Minister, Pt. Jawahar Lal Nehru, to establish
operations in the country. Since then, the Plaintiff has continuously used the
Plaintiff’s Marks in India and has significantly expanded its business
operations.
9. The learned Counsel for the Plaintiff submitted that to further
strengthen its presence in India, the Plaintiff has incorporated subsidiary
companies, including Sandvik Coromant India Pvt. Ltd. which was
established in 1960 and Sandvik Mining and Rock Technology India Pvt.
Ltd. which was established in 2019.
10. Over the years, the Plaintiff has obtained Trade Mark registrations for
the Plaintiff’s Marks for its diverse range of goods and services across
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Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
multiple jurisdictions worldwide. These jurisdictions include, but are not
limited to India, the United States of America, the United Kingdom,
Australia, the European Union, Canada, New Zealand, Indonesia, France,
Malaysia and China. The registrations obtained by the Plaintiff in India are
given below:
S. No. Mark Reg./ App
Class Date of
Status
No.
Filing
1. SANDVIK 141520 6 December
9, 1949
Registered
2. SANDVIK 583901 7 November
2, 1992
Registered
3. SANDVIK 1510458 6 December
12, 2006
Registered
4. SANDVIK 1656741 6, 7, 8,
11, 12,
37, 38
February
21, 2008
Registered
5. SANDVIK 1658699 9 February
27, 2008
Registered
6.
1673895 6, 7, 8,
9, 11,
12, 37,
38
April 8,
2008
Registered
7. SANDVIK IRDI No.
4392600
1, 4, 6,
7, 9, 12,
35, 36,
37, 40,
42
October
29, 2018
Protection
Granted
8.
IRDI No.
4392546
1, 4, 6,
7, 9, 12,
35, 36,
37, 40,
42
November
9, 2018
Protection
Granted
CS(COMM) 1051/2024 Page 4 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
11. The learned Counsel for the Plaintiff submitted that the term
“SANDVIK” holds no meaning in English, Hindi, or any Indian language
and therefore it is liable to be protected. Over the years, the Plaintiff has
experienced substantial growth in revenue due to its provision of services
and sale of goods under the Plaintiff’s Marks.
12. The learned Counsel for the Plaintiff submitted that Defendant No. 1
is the proprietor of three entities, namely, Industrial Mining Equipment
Zone, Vedanta Dhatu Metal India and Prince Metal Powder Industries.
Defendant No. 1, and other person / entities are clandestinely, dishonestly
and illegally using the ULTRA SANDVIK and ULTRA SANDVIK Device
Marks,
and
(“ Impugned Marks ”) on and in relation to rock mining tools, hammers,
drills, bits and other tools and equipment.
13. The learned Counsel for the Plaintiff submitted that Defendant No. 1
is carrying out his illegal activities and unauthorizedly using the following
email IDs to operate his business, i.e., ultrasandvik12@gmail.com,
princemetalpowderindustries@gmail.com and vendantadhatu@gmail.com.
Moreover, Defendant No. 1 is also using the following contact numbers for
his illegal activities, i.e., +91-9414171899, +91-7426071899 and +91-
8005836997.
14. The learned Counsel for the Plaintiff submitted that the Plaintiff was
first alerted by its Indian business about Defendant No. 1 in the second week
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Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
of July 2024, when the Plaintiff’s customers reported having received the
Defendant No. 1’s brochures offering rock mining tools under the Impugned
Marks. The Plaintiff’s India business also discovered that the Defendant No.
1 was visiting the Plaintiff’s offices in India to enquire about the price rates
of rock tools sold under the Plaintiff’s Marks. The Plaintiff apprehended that
Defendant No. 1 was attempting to determine the competitive market rates
of such rock mining tools in order to sell his own goods bearing the
Impugned Marks. Immediately, on learning about Defendant No. 1, in July
2024, the Plaintiff’s Indian representative engaged the services of an
investigation firm to investigate Defendant No. 1 and use of the Impugned
Marks. The investigation revealed that Defendant No. 1 is using the
Impugned Marks in a clandestine manner.
15. The learned Counsel for the Plaintiff submitted that Defendant No. 1
was rapidly shifting his bases, and conducting business from different
locations, in order to avoid any scrutiny of his activities. The Defendant No.
1 informed the investigator that he was using the Impugned Marks on and in
relation to mining tools, hammers, etc. for the past two to three years. He
also disclosed to the investigator that whenever he receives a bulk order for
goods bearing the Impugned Marks, he has them manufactured through
third-party vendors, and supplies them through an undisclosed location in
Nathdwara, Rajasthan and Hyderabad, Telangana to consumers all across
India, including consumers in Delhi.
16. A comparison of the Plaintiff’s Marks and the Impugned Marks is as
under:
CS(COMM) 1051/2024 Page 6 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
S.No. Plaintiff’s Marks Impugned Marks
1. SANDVIK ULTRA SANDVIK
2.
17. The learned Counsel for the Plaintiff submitted that the Impugned
Marks are nearly identical / deceptively similar to the Plaintiff's Marks. The
Defendant No.1 has merely added the word ULTRA to the Plaintiff’s Mark
to arrive at the Impugned Marks, which does not help in differentiating the
rival Marks, since the word ULTRA is a laudatory term, and the distinctive
and prominent element of the Impugned Marks continues to be the word
SANDVIK. Moreover, the device elements in the Impugned Marks do not
help differentiate the rival Marks.
18. The learned Counsel for the Plaintiff submitted that Defendant No. 1
is dealing with identical goods for which the Plaintiff uses and enjoys
registration for the Plaintiff’s Marks in India. Moreover, the Trade Channels
as well as the consumers of the Defendant No. 1 are identical to that of the
Plaintiff. It is apparent that the Defendant No. 1 adopted the Impugned
Marks with a mala fide intention to ride on the goodwill and reputation
attached to the Plaintiff’s Marks.
CS(COMM) 1051/2024 Page 7 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
SUBMISSIONS ON BEHALF OF THE DEFENDANTS:
19. Defendant No. 1 is the contesting Defendant. Defendant No. 1 has not
entered appearance despite service and is proceeded ex parte . Defendants
Nos. 2 to 6 have complied with the directions given vide Order dated
27.11.2024.
20. The learned Counsel for Defendant No. 6 submitted that Defendant
No. 6 will comply with any orders passed by this Court. However, there is a
typographical error in one of the email IDs, being
princemtalpowderinustries@gmail.com, provided by the Plaintiff in
Paragraph No. 62(g) of the Plaint, and if the Plaintiff can provide on
Affidavit the correct email ID of Defendant No. 1, Defendant No. 6 will
comply with the Order passed by this Court. The Plaintiff has filed an
Affidavit dated 27.08.2025 clarifying the email ID of Defendant No. 1. The
Affidavit is taken on record.
PROCEEDINGS IN THE PRESENT SUIT:
21. Vide Order dated 27.11.2024, an ex-parte ad-interim injunction was
granted against the Defendant No. 1 restraining Defendant No. 1 from using
the Impugned Marks or any other Mark which is deceptively or confusingly
similar to the Plaintiff's Marks. Further, Defendant No. 2 was directed to
furnish details of the Bank Account No. 065505002867 belonging to
Defendant No. 1 and file the same before this Court within a period of four
weeks from date, Defendant Nos. 3 to 5 were directed to provide complete
details of the registrants of the mobile numbers +91-9414171899,
+91-7426071899 and +91-8005836997 and file the same before this Court
within a period of four weeks from the date of the Order. Furthermore,
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Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
Direction was issued to Defendant No. 6 to provide complete details and
particulars of the associated numbers of the email IDs
ultrasandvik12@gmail.com, princemtalpowderinustries@gmail.com and
vedantadhatu@gmail.com and file the same before this Court within a period
of four weeks from the date of the Order.
22. Vide Order dated 18.03.2025 it was recorded that Defendant Nos. 3 to
6 had complied with the Order dated 27.11.2024. Vide Order dated
08.07.2025, it was recorded that Defendant No. 1 has been served through
e-mail on 14.01.2025 and via speed post on 23.01.2025. As none had
appeared on behalf of Defendant No. 1 despite service and no Written
Statement had been filed on behalf of Defendant No. 1, the right to file
Written Statement was closed. It was further recorded that Defendant No. 2
had complied with the Order dated 27.11.2024 and filed an Affidavit of
Compliance in this regard.
ANALYSIS AND FINDINGS:
23. The Plaint has been duly verified and is supported by the affidavit of
the Plaintiff. In view of the fact that no Written Statement has been filed on
behalf of the Defendant No. 1, all the averments made in the Plaint have to
be taken to be admitted. Further, since no Affidavit of Admission / Denial
has been filed on behalf of the Defendant No. 1 in respect of the documents
filed with the Plaint, in terms of Rule 3 of the Delhi High Court (Original
Side) Rules, 2018, the same are deemed to have been admitted.
24. From the averments made in the Plaint and the evidence on record,
the Plaintiff has been able to prove that it is the registered proprietor of the
Plaintiff’s Marks. Due to its long and extensive use, the Plaintiff has also
been able to demonstrate and prove its goodwill and reputation in respect of
CS(COMM) 1051/2024 Page 9 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
the same. The Plaintiff has placed on record images of the Impugned Marks
to show that the Defendant No. 1 is indulging in the infringement and
passing off of the Plaintiff’s Marks.
25. From the comparison of the Plaintiff’s Marks and the Impugned
Marks, it is evident that the Impugned Marks are deceptively similar to the
Plaintiff’s Marks. Defendant No. 1 has merely added the word ULTRA
before the word SANDVIK. The word ULTRA in the Impugned Marks does
not help differentiate the rival Marks. Defendant No. 1’s adoption of the
Impugned Marks is ex facie dishonest and seems to be a deliberate ploy on
part of Defendant No. 1 to come as close as possible to the Plaintiff’s Marks,
in order to piggyback on the goodwill and reputation of the Plaintiff. The
rival Trade Marks when looked at in their entirety, are nearly identical /
deceptively similar in appearance, sound and structure.
26. Defendant No. 1 is dealing with identical goods. Even the Trade
Channels as well as the consumers of the Defendant No. 1 are identical to
that of the Plaintiff.
27. Based on the discussion above, a clear case of infringement of Trade
Mark is made out. Defendant No. 1 has taken unfair advantage of the
reputation and goodwill of the Plaintiff's Marks and has also deceived the
unwary consumers into believing their association with the Plaintiff by
dishonestly adopting the Plaintiff's Marks without any plausible explanation.
Therefore, the Plaintiff has established a case of passing off as well.
28. Since Defendant No. 1 has failed to contest the present Suit, despite
having been served and passing of an ad interim injunction order, it is
evident that there is no defence to put forth on merits.
CS(COMM) 1051/2024 Page 10 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35
29. Counsel for the Plaintiff presses for declaration of the Mark
“SANDVIK” as a well-known Mark. However, the right of the Plaintiff to
get its Mark “SANDVIK” declared as well-known is kept open and the same
may be pursued by the Plaintiff in an appropriate proceeding.
30. Considering the aforesaid discussion, it is directed that:
i. The Suit is decreed against the Defendant No. 1 in terms of
Paragraph No. 62(a) to (c) of the Prayer Clause.
ii. Defendant No. 2 shall permanently close / freeze the bank account
No. 065505002867 belonging to Defendant No. 1.
iii. Defendant Nos. 3 and 4 shall permanently block access of the Phone
Nos. +91 7426071899 and +91 9414171899 belonging to Defendant
No. 1.
iv. Defendant No. 6 shall block access of the email IDs,
ultrasandvik12@gmail.com, vedantadhatu@gmail.com and
princemetalpowderindustries@gmail.com belonging to Defendant
No. 1
v. Defendant No. 1 shall pay an amount of ₹5,00,000/- (Rupees Five
Lacs Only) to the Plaintiff as damages and costs within a period of
eight weeks from date.
31. Let the decree sheet be drawn up.
32. The present Suit and the pending Applications are disposed of.
TEJAS KARIA, J
SEPTEMBER 26, 2025
‘AK’
CS(COMM) 1051/2024 Page 11 of 11
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:26.09.2025
16:57:35