Hero Investcorp Private Limited & Anr. vs. Ashok Kumar And Ors

$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of Decision: 20 February, 2024.
+ CS(COMM) 605/2022, I.A. 14143/2022
HERO INVESTCORP PRIVATE LIMITED & ANR. ..... Plaintiffs
Through: Mr. Zeeshan Khan, Mr. Akshey
Bhardwaj, Advocates.

versus

ASHOK KUMAR AND ORS ..... Defendants
Through: None.

CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
1. The Plaintiffs, owners of the trademark “HERO”, “
”
“
/
”, have filed the present suit seeking various remedies including
permanent injunction restraining Defendants from selling counterfeit ‘Hero
genuine 4t plus motorcycle engine oil’, which bear the Plaintiffs’ marks and
identical packaging.
2. Defendants No. 2-4 were served through newspaper publication on
nd
22 March, 2023 and Defendants No. 5-11 through courier. Despite being
served with summons in the suit and being restrained by an ex-parte ad-
nd
interim injunction order on 2 September,2022, the Defendants have failed
to contest the present proceedings. The time to file their written statement
rd th
has also since expired, as recorded in orders dated 23 March 2023 and 11
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 1 of 14

August, 2023.
3. The matter is now before the Court for final disposal.
The Plaintiffs’ Case
4. The Plaintiff Nos.1 and 2 are ‘Group Companies’ carrying on their
business under the house mark “HERO”. The trademark “HERO” is also
used as label and device marks “
” “
” [Collectively referred to as
“HERO marks”]. They are engaged in the business of manufacturing and
selling of various automative products and services under the trademark
HERO. One such product of the Plaintiffs is the ‘Hero genuine 4t plus
motorcycle engine oil’ [hereinafter, “HERO Oil”] which is designed to cater
to modern driving behaviour and road conditions in India. It is averred that
HERO Oil's superior quality results from extensive research by the
Plaintiffs, and their unique elements, sets HERO oil apart, making it distinct
and superior to others.
5. The Plaintiffs have spent considerable amount of money towards
promoting and popularizing the products/services under the HERO Marks.
The annual sales and advertisement figures pertaining to Plaintiffs’ HERO
oil for the past few years are as follows:

6. The Plaintiffs have also received various accolades for their products
under the HERO marks as delineated in paragraph 21 of the Plaint.
7. Plaintiff No.1 is the registered proprietor of trademark “HERO” and
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 2 of 14

its variants. The specifics of Plaintiff No.1’s trademark registrations are as
follows:





8. Additionally, Plaintiff No.1 has filed trademark application bearing
No. 5074884 for the mark "HERO GENUINE OIL" on 05.08.2021 in class
4. The current status of the application, as reflected on the Trademarks
Registry portal, is 'accepted and advertised.'
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 3 of 14

9. Plaintiffs are the owners of the original artistic work as defined in
Section 2(c) of the Copyright Act 1957, subsisting in the HERO marks,
featuring distinctive and imaginative styles, depicted as under:
a.

b.

Furthermore, the Plaintiffs are also the proprietor of Copyright in original
artistic work on the packaging and labels of the Plaintiffs' HERO oil
comprising of distinctive arrangement of features, get-up, artwork and
layout, which are represented as under:



10. Plaintiff No. 2 is the registered proprietor of the unique shape of the
bottle, which is the subject matter of the suit, under design registration Nos.
311300 and 311301 in classes 09 and 01 respectively.
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 4 of 14

11. In August, 2022, the Plaintiffs’ learned of the Defendants’ sale of
counterfeit HERO oil. As per the Plaintiffs’ information, Defendants No.2
and 3 are the manufacturer and distributor of counterfeit HERO Oil
respectively. Defendants No. 4 -11, who are wholesalers, are engaged in the
sale of counterfeit HERO oil.
Proceedings till date
nd
12. At the preliminary stage, on 2 September 2022, the Court granted an
ad interim ex parte injunction restraining Defendants from infringing upon,
the Plaintiffs’ registered HERO marks or any other identical/ deceptively
similar marks, as well as, infringement of Plaintiffs’ Copyright in HERO
device marks and label. Furthermore, 7 Local Commissioners were
appointed to visit the premises of the Defendants to seize and inventorize the
infringing goods.
13. During the execution of the Commission, the Local Commissioners,
recovered infringing goods, details whereof are as follows:

Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 5 of 14

Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 6 of 14

Analysis and findings
14. A visual representation of the comparison of the genuine products
with the infringing products is as follows:

Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 7 of 14

15. The above-noted comparison demonstrates that the Defendants have
infringed the rights of the Plaintiffs’ by adopting and using an identical mark
with respect to identical goods. Additionally, the Defendants have copied
the Plaintiffs’ product description in addition to the almost identical
packaging. To show that the Defendants are selling counterfeit products, the
Plaintiff has also provided a chart showing the differences in the packaging
of the Plaintiff and the Defendants products, which is as follows:
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 8 of 14

Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 9 of 14

Therefore, as per Section 29(2)(c) of the Trade Marks Act, 1999, the
Defendants are infringing the Plaintiffs’ trade mark. Further, the Defendants
have imitated and blatantly copied each aspect of the Plaintiffs' labels, logo
and packaging, which are the original literary work of the Plaintiffs’ and
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 10 of 14

such use amounts to infringement of the original artistic copyright vested
with the Plaintiffs under the Copyright Act, 1957.
16. The findings of the reports of the Local Commissioners also clearly
indicate that the Defendants No. 2,3,5,7,8 and 10 were actively involved in
the sale, distribution, and manufacturing of counterfeit HERO Oil, thereby
infringing upon the Plaintiffs' registered HERO marks.
17. As already observed above, all Defendants have already been served
in the suit. However, despite said service, they have not appeared before the
Court to contest these proceedings. Their defence was closed by the Joint
rd th
Registrar through orders dated 23 March 2023 and 11 August, 2023.The
Defendants have clearly refrained from contesting the case. Due to the
absence of any specific denials, the allegations of trademark and copyright
infringement, in conjunction with the supportive evidence, fall within the
1
ambit of deemed admissions of all facts mentioned in the plaint. Though the
Court has the discretion to require further proof, the Plaintiffs have, through
the documents presented on record, satisfied the test required to prove
infringement. The reports submitted by the Local Commissioners, which can
2
be read into evidence, provide unassailable substantiation implicating
Defendants No. 2, 3, 5,7,8 and 10 in the direct sale of counterfeit HERO oil
bearing the Plaintiffs’ registered HERO marks. Therefore, the Court deems
it appropriate to dispense with the requirement of leading ex-parte
3
evidence.

1
Refer: Balraj Taneja v. Sunil Madan , (1999) 8 SCC 396.
2
See: ML Brother LLP v. Mahesh Kumar Bhuralal Tanna , 2022 SCC OnLine Del 1452.
3
See: Disney Enterprises Inc. and Anr. v. Balraj Muttneja and Ors., 2014 SCC OnLine Del 781, Cross Fit
LLC v. RTB Gym and Fitness Centre, 2022 SCC OnLine Del 2788, and The Indian Performing Right
Society Ltd. v. Gauhati Town Club, 2013 (134) DRJ 732.
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 11 of 14

18. Given that the Defendants have not submitted their defence to the
present suit, despite sufficient knowledge of the proceedings, the present suit
is liable to be decreed in favour of the Plaintiffs, as per Order VIII Rule 10
read with Order XIII-A of the Code of Civil Procedure, 1908, as applicable
to commercial suits, read with Rule 27 of the Delhi High Court Intellectual
Property Rights Division Rules, 2022.
Reliefs
19. Accordingly, the suit is decreed in terms of paragraph No. 36(a), (b)
(c) of the Plaint. The goods seized by the Local Commissioners, which are
lying on superdari with the Plaintiffs, details whereof are recorded in the
reports of the local commissioners, are permitted to be destroyed in
accordance with law.
20. As regards claim of damages, this Court is convinced that this is not a
case of innocent adoption, and Defendants’ conduct invites the award of
damages. Taking a reasonable assessment of the volume of seizure made,
nature of counterfeiting, and the fact that there was an interference by a mob
during the execution of the local commission in Defendant Nos. 2 and 3’s
premises, in the opinion of the Court, Plaintiffs are entitled to nominal
damages, recoverable from the Defendants No. 2,3,5,7,8 and 10 in the
following proportions:

Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 12 of 14

21. Plaintiffs are also entitled to actual costs recoverable from Defendants
No. 2,3,5,7,8 and 10, in terms of the Commercial Courts Act, 2015 and
Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court
Intellectual Property Division Rules, 2022 from the Defendants. Plaintiffs
shall file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi
High Court (Original Side) Rules, 2018 on or before 31st March, 2024. As
and when the same is filed, the matter will be listed before the Taxing
Officer for computation of costs.
22. Decree sheet be drawn up.
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 13 of 14

23. The suit, along with pending applications, is disposed of.



SANJEEV NARULA, J
FEBRUARY 20, 2024
ab
Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:01.03.2024
20:04:21
CS(COMM) 605/2022 Page 14 of 14