Karnataka HC upholds ban on steelmaker’s use of “ACC,” citing the cement brand’s reputation across product classes

ACC Limited sued ACC Steel Pvt. Ltd., alleging infringement of its “ACC” trade mark and logo, passing off, and copyright infringement. ACC Steel used “ACC” in “ACC TMT 500” and as part of its corporate name.

It claimed the mark had been independently adopted by its predecessors and relied on its registration in Class 6; ACC Limited relied on its earlier use and registrations, goodwill, and well-known-mark status.

The Commercial Court decreed the suit in part, granting injunctions, directing a change to the defendant’s corporate name, delivery of infringing material, and rendition of accounts, but declining the claimed ₹10 lakh damages.

ACC Steel appealed under Section 13(1-A) of the Commercial Courts Act, 2015.

1. Whether the Commercial Court’s judgment and decree warranted appellate interference, particularly in light of the parties’ different classes of goods and the defendant’s registration.

2. Whether the defendant’s use of “ACC” in its mark and corporate name amounted to trade mark infringement and passing off, and whether the findings of copyright infringement were sustainable.

3. Whether the consequential reliefs granted by the Commercial Court, including injunction, corporate-name amendment, delivery of infringing material, and rendition of accounts, should stand.

Under Sections 28 and 31 of the Trade Marks Act, 1999, a registration confers rights subject to the Act, and is prima facie evidence of validity; registration does not, by itself, determine competing prior rights.

Sections 11(6) and 11(7) identify factors relevant to well-known status, including public recognition, duration and extent of use and promotion, registrations, enforcement, and relevant consumer and trade groups; Section 11(2) permits protection of a well-known mark against later marks used for dissimilar goods in specified circumstances.

Section 29(4) addresses use of an identical or similar registered mark for dissimilar goods where the registered mark has a reputation in India and the later use, without due cause, takes unfair advantage of or is detrimental to its distinctive character or repute; Section 29(5) concerns use of a registered mark as part of a trade name.

Section 135 provides for injunction and, at the plaintiff’s option, damages or an account of profits, as well as other appropriate relief.

The Court also relied on the well-known-mark procedure under Rule 124 of the Trade Marks Rules, 2017, and cited Societe Des Produits Nestle, S.A. v. Montu Sadhu on the copyright claim.

It held that Sections 51 and 122 did not create a substantive right to use another proprietor’s mark.

The Court held that the dispute could not be resolved merely by comparing the parties’ classifications or relying on the defendant’s registration.

ACC Limited had established substantially earlier and extensive use, reputation, and recognition of “ACC” as a well-known mark; the defendant’s registration had also been stayed in rectification proceedings.

The Court considered the common construction-related context, evidence of market inquiries and confusion, the defendant’s use of “ACC” as the principal element of “ACC TMT 500” and its corporate name, and the similarity in presentation and get-up.

It found that the defendant had not satisfactorily substantiated its asserted independent origin for the mark.

These circumstances supported the Commercial Court’s findings on infringement, passing off, and the associated copyright claim; the defendant’s arguments did not establish grounds for appellate interference.

The injunctions and directions concerning amendment of the defendant’s corporate name, delivery of infringing material, and rendition of accounts therefore remained in place; the ₹10 lakh damages claim had been declined by the Commercial Court.

There was no order as to costs, and pending interlocutory applications were disposed of.