Trademark Infringement: Delhi HC Issues Summary Judgment Against 'HIRO' Lubricants

In a decisive blow to trademark squatting, the Delhi High Court has invoked summary judgment powers to restrain the sale of counterfeit lubricants, ruling that 'triple identity' in marks, products, and trade channels leaves no room for a trial defense. The Court affirmed that where a defendant fails to justify the adoption of phonetically identical marks for automotive oils, the registered proprietor is entitled to immediate injunctive relief and punitive damages.

A Single-Judge Bench of Justice Tejas Karia adjudicated upon a suit for permanent injunction concerning the infringement of the well-known brand 'HERO'. The proceedings highlighted the court's readiness to protect intellectual property rights in commercial suits when the defendant fails to provide a legitimate contest to the allegations of deceptive similarity.

Key Takeaways

Invoking Order XIII-A Powers

The court demonstrated that summary judgments are an effective tool in commercial disputes to bypass lengthy trials when the defendant has no real prospect of defending the claim.

The Triple Identity Test

By identifying identical marks, product categories, and consumer bases, the court established a clear threshold for 'triple identity' that triggers a strong presumption of consumer confusion.

Deemed Admissions Rule

The judgment underscores that failing to file a written statement within the mandatory 120-day limit in commercial suits results in the allegations being treated as deemed admissions under procedural law.

Strict Liability for Infringement

The decision reinforces that even minor phonetic variations like 'HIRO' for 'HERO' in identical trade circles constitute actionable infringement.

Court Observations on Deceptive Similarity

The Court analyzed the comparison between the plaintiffs' registered marks and the defendant’s 'HIRO' branded products. It noted that the defendant was engaged in manufacturing synthetic engine oil, which directly overlapped with the plaintiffs' long-standing business in the automotive sector.

The Court, in its reasoning, observed: "This is a case of triple identity, where the Impugned Marks are identical, the product category is identical and the trade channel as also the consumer base is identical to the Plaintiff’s Marks. The Impugned Marks adopted and used by the Defendant is visually, phonetically, structurally and deceptively similar to the Plaintiffs’ Marks. To an unwary consumer of average intelligence and imperfect recollection, the Marks are likely to appear identical, thereby leading to confusion regarding the source or origin of the goods."

Furthermore, the court highlighted that since the defendant’s written statement was not on record due to procedural defaults, the evidence provided by the Local Commissioner regarding the seizure of infringing goods remained unrebutted.

Directions Issued by the Court

The Court has following directions:

"The Defendant, directors, proprietors, partners, assignees in business, associates, affiliates, franchisees, licensees, distributors, dealers, stockists, retailers, agents and all others acting for and on their behalf are restrained from manufacturing, selling and offering for sale advertising in any manner including on the internet, e-commerce platforms and social media platforms, or directly or indirectly dealing in industrial oils, lubricant and accessories bearing Impugned Marks, ‘HIRO / HERO’, and / or any other Mark identical or deceptively similar to the Plaintiffs’ Marks, ‘HERO’, [device marks], so as to cause infringement and / or passing off of the Plaintiffs’ Marks. The Defendant shall pay to the Plaintiffs damages of ₹3,00,000/- (Rupees Three Lakhs Only) and reasonable legal costs of ₹5,000,00/- (Rupees Five Lakhs Only)."

Ratio

In commercial suits, if the defendant fails to file a written statement within the statutory limit and has no real prospect of defending the claim, the court may exercise its power under Code of Civil Procedure, 1908 to pass a summary judgment. Where 'triple identity' exists identity of marks, goods, and trade channels it constitutes a prima facie case of trademark infringement under the Companies Act, 1956, warranting permanent injunction and damages.

Background

The plaintiffs, a prominent group manufacturing motorcycles and lubricants under the 'HERO' brand since 1985, discovered the defendant, VM Lubricant, selling engine oils under the marks 'HIRO' and 'HERO'. The plaintiffs initiated a suit for infringement and passing off. On May 1, 2023, an ex-parte ad-interim injunction was granted, and a Local Commissioner seized 948 infringing products from the defendant's premises in Gujarat.

Although the defendant entered an appearance, their application to condone a 153-day delay in filing the written statement was rejected by the Joint Registrar, as it exceeded the 120-day limit prescribed for commercial suits. Relying on the precedent in Balraj Taneja v. Sunil Madan ( "(1999) 8 SCC 396": 1999 CaseBase(SC) 1321), the plaintiffs argued that the absence of a specific denial amounted to a deemed admission. The court also integrated Delhi High Court (Original Side) Rules, 2018 to treat the documents as admitted. Following the principles in ML Brother LLP v. Mahesh Kumar Bhuralal Tanna, the Court held that the Local Commissioner's report was cogent evidence of infringement. Consequently, the suit was decreed in favor of the plaintiffs with damages and costs calculated per Delhi High Court Intellectual Property Rights Division Rules, 2022.

Case Details:
Case No.: CS(COMM) 243/2023
Case Title: Hero Investcorp Private Ltd. & Anr v. VM Lubricant
Appearances:
For the Petitioner(s): Mr. Pramod Kumar Singh, Advocate.
For the Respondent(s): None.

Source: 2026 CaseBase(DEL) 7546