Case Note & Summary
The plaintiffs, UltraTech Cement Limited and another, filed a commercial IP suit seeking a permanent injunction to restrain the defendant, M/s. Shiv Cement Co., from infringing their registered 'UltraTech' trademarks and from passing off their goods as those of the plaintiffs. The plaintiffs alleged that the defendant's marks, including 'Ultraplus Cement', 'Ultra HiTouch', and 'UltraPower', were deceptively similar to their 'UltraTech' marks and used for identical goods, namely cement. The court had initially granted ex-parte ad-interim relief on 1 August 2016, and the Court Receiver seized over 1102 bags bearing the impugned marks from the defendant's premises. The defendant was served but failed to appear, leading to the suit being transferred to the undefended list. The plaintiffs filed evidence, including an affidavit of examination-in-chief of their constituted attorney. The court, after hearing the plaintiffs' counsel, found that the defendant's marks were deceptively similar to the plaintiffs' registered marks, as the common prefix 'ULTRA' was the dominant feature. The court noted that the plaintiffs' marks had acquired immense reputation and goodwill, and the defendant had no justification for adopting similar marks. The court held that the defendant's actions constituted trademark infringement under Sections 29(1), 29(2)(b), and 29(3) of the Trade Marks Act, 1999, and passing off. Consequently, the court decreed the suit in favour of the plaintiffs, granting a permanent injunction restraining the defendant from using the impugned marks or any other deceptively similar marks, and awarded damages of Rs. 5,00,000 and costs of Rs. 1,50,000.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Sections 29(1), 29(2)(b), 29(3) Trade Marks Act, 1999 - The plaintiffs, owners of registered 'UltraTech' marks for cement, sought injunction against defendant's use of 'Ultraplus Cement', 'Ultra HiTouch', and 'UltraPower' marks. The court held that the defendant's marks were deceptively similar to the plaintiffs' marks as the common prefix 'ULTRA' was the dominant and essential feature, and the goods were identical. The court noted that the defendant had no explanation for adopting marks containing 'ULTRA' and that the plaintiffs' marks had acquired immense reputation and goodwill. Held that the defendant's use constituted infringement and passing off. (Paras 1-32) B) Civil Procedure - Undefended Suit - Decree - Order VIII Rule 10 CPC, 1908 - The defendant failed to appear despite service of summons, and the suit was transferred to the undefended list. The court proceeded to decree the suit based on the plaintiffs' unchallenged evidence. Held that the plaintiffs were entitled to a decree for permanent injunction, damages, and costs. (Paras 5-6, 32)
Issue of Consideration
Whether the defendant's use of marks containing the prefix 'ULTRA' in relation to cement amounts to infringement of the plaintiff's registered 'UltraTech' trademarks and passing off.
Final Decision
Suit decreed in favour of the plaintiffs. Permanent injunction granted restraining the defendant from using the impugned marks or any other mark deceptively similar to the plaintiffs' 'UltraTech' marks. Defendant directed to pay damages of Rs. 5,00,000 and costs of Rs. 1,50,000.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- Dominant feature
- Injunction
- Undefended suit
