Deceptive similarity in cement trade marks combined with dishonest adoption warrants permanent injunction and punitive damages.

The Plaintiffs, established cement manufacturers, filed a suit for permanent injunction against the Defendant for trademark infringement and passing off

The Plaintiffs have used the ‘UltraTech’ mark since 2003 and hold numerous registrations where "Ultra" is a prominent feature

In 2012, the Plaintiffs discovered the Defendant selling cement under the marks “UltraPlus,” “Ultra HiTouch,” and “UltraPower”

Despite a court-ordered seizure of 1,102 bags of cement from the Defendant’s premises in 2016 and various cease-and-desist notices, the Defendant failed to appear or file a written statement, leading the suit to be heard as an undefended matter

1. Whether the Defendant's use of the marks “UltraPlus,” “Ultra HiTouch,” and “UltraPower” constitutes infringement of the Plaintiffs’ registered ‘UltraTech’ trademarks?

2. Whether the Defendant is liable for the tort of passing off by using deceptively similar marks for identical goods (cement)?

3. Whether the Plaintiffs are entitled to punitive damages and exemplary costs due to the Defendant’s dishonest adoption and conduct?

The court applied the principles of trademark infringement and passing off under the Trade Marks Act, 1999.

It relied on Hiralal Prabhudas v. Ganesh Trading Company, establishing that deceptive similarity is determined by "overall similarity" and the "first impression" of a person with imperfect recollection

The court also applied Section 17 of the Trade Marks Act, 1999, as interpreted in UltraTech Cement Ltd. v. Alaknanda Cement (P) Ltd., which clarifies that while registration is for the whole mark, exclusivity can be asserted over a prominent/distinctive part (like "UltraTech" or "Ultra") if it has acquired distinctiveness

Additionally, Section 35 of the Code of Civil Procedure, 1908 (as amended by the Commercial Courts Act, 2015), was applied regarding the mandatory awarding of costs in commercial disputes based on the conduct of the parties

The court found the Defendant’s marks to be visually, structurally, and phonetically identical or deceptively similar to the Plaintiffs’ well-known ‘UltraTech’ mark

The court noted that "Ultra" is the leading and essential feature of the Plaintiffs’ registrations and that its use by the Defendant on identical goods (cement) was a calculated attempt to trade upon the Plaintiffs’ goodwill

The court emphasized that the Defendant’s adoption was mala fide, as evidenced by their "fly-by-night" operations, dodging of notices, and the reporting of their products as "duplicate" or "substandard" cement in local news

Since the Defendant failed to file a written statement or cross-examine the Plaintiffs’ witness, the evidence regarding the Plaintiffs' "well-known" status and extensive sales turnover remained uncontroverted

While the court did not award the full ₹1 Crore in damages due to lack of quantified evidence, it awarded punitive costs of ₹50,00,000 and litigation expenses of ₹16,48,006 to be paid by the Defendant within 8 weeks, with interest at 8% p.a. upon default. The court also ordered the destruction of all infringing materials and bags