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Delhi High Court – Orders
X And Anr vs Y on 28 March, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 277/2025 with I.A. 8127-8133/2025
X AND ANR .....Plaintiffs
Through: Mr. Kunal Khanna, Advocate.
versus
Y .....Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
ORDER
% 28.03.2025
I.A. 8130/2025 (exemption from filing originals, certified/ clearer/
translated copies of documents, etc.)
1. Allowed, subject to the plaintiffs filing certified/ clearer/ translated
copies of the documents and documents with prescribed margins within four
(4) weeks from today.
2. The plaintiffs are exempted from filing originals at this stage.
3. The application stands disposed of.
I.A. 8132/2025 (seeking exemption from effecting advance service upon
the defendant)
4. The plaintiffs seek urgent interim relief against the defendant with
regard to infringing products and for this purpose, an ex-parte appointment
of Local Commissioner is also sought to confiscate the infringing products.
It is submitted that there is a probability that the defendant may remove the
infringing products if the defendant is given advance service of the plaint
paper book.
CS(COMM) 277/2025 Page 1 of 12
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5. Therefore, in the peculiar facts and circumstances of this case,
exemption from effecting advance service upon the defendant is granted.
6. The application is disposed of.
I.A. 8133/2025 (u/s 149 of the CPC)
7. Mr. Kunal Khanna, counsel appearing on behalf of the plaintiffs,
submits that the requisite court fees shall be paid within one (1) week.
7.1. The aforesaid statement of counsel for the plaintiffs is taken on
record.
8. The application is disposed of.
I.A. 8129/2025 (u/s 12A of Commercial Courts Act, 2015)
9. As the present suit contemplates urgent interim relief, in light of the
judgment of the Supreme Court in Yamini Manohar v. T.K.D. Krithi, 2023
SCC Online SC 1382, exemption from the requirement of pre-institution
mediation is granted.
10. The application stands disposed of.
I.A. 8131/2025 (seeking to mask the identities of parties to the instant suit)
11. This application has been filed on behalf of plaintiffs seeking masking
the name of the defendant.
12. It is submitted that there is a possibility that the defendant might get
the knowledge of the present suit and remove the infringing products.
13. For the reasons stated in the application, the plaintiffs are permitted to
mask the identities of the parties to the present suit.
14. It is directed that the identities of the parties shall remain masked till
the filing of the report of the Local Commissioner.
15. The Registry shall be at liberty to reflect the actual cause title of the
present case after filing of the report of the Local Commissioner.
CS(COMM) 277/2025 Page 2 of 12
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16. The application stands disposed of.
CS(COMM) 277/2025
17. Let the plaint be registered as a suit.
18. Issue summons.
19. Summons be issued to the defendant through all permissible modes.
The summons shall state that the written statement shall be filed by the
defendant within thirty (30) days from the date of the receipt of summons.
Along with the written statement, the defendant shall also file affidavit of
admission/ denial of the documents of the plaintiffs, without which the
written statement shall not be taken on record.
20. Liberty is given to the plaintiffs to file replication, if any, within thirty
(30) days from the receipt of the written statement. Along with the
replication filed by the plaintiffs, affidavit of admission/ denial of the
documents of the defendant be filed by the plaintiffs.
21. The parties shall file all original documents in support of their
respective claims along with their respective pleadings. In case parties are
placing reliance on a document, which is not in their power and possession,
its detail and source shall be mentioned in the list of reliance, which shall
also be filed with the pleadings.
22. If any of the parties wish to seek inspection of any documents, the
same shall be sought and given within the timelines.
23. List before the Joint Registrar on 14th May, 2025 for completion of
service and pleadings.
24. List before the Court on 10th September, 2025.
I.A. 8127/2025 (u/O-XXXIX Rules 1 and 2 of the CPC)
25. The present suit has been filed seeking permanent/ perpetual
CS(COMM) 277/2025 Page 3 of 12
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injunction restraining the defendant from infringement of design, trade mark
and copyright of the plaintiffs and passing off along with other ancillary
reliefs.
26. The plaintiffs are group companies engaged in the manufacture and
sale of motorcycles, scooters and their parts and accessories under the well-
reputed trade mark HERO.
27. The plaintiff no.1, Hero Invest Corp Private Limited, and the plaintiff
no.2, Hero MotoCorp Limited, are companies incorporated under the laws of
India. It is stated that the plaintiff no.1 is the owner and proprietor of the
marks HERO, , and (hereinafter
‘HERO marks’) and has been continuously, uninterruptedly and extensively
using the same for nearly 60 years in relation to scooters, motorcycles and
parts thereof as well as lubricant and engine oil.
28. It is averred that the HERO marks have been protected by the plaintiff
no.1 through numerous registrations across several countries. The plaintiff
no.1 has also obtained registrations for the HERO marks in India. The
details of the registrations of the HERO marks in favour of the plaintiff no.1
are given below:
Trade mark Class TM Registration Valid
Application Upto
No.
HERO (word mark) 4 2205777 15.09.2011 15.09.2031
HERO (word mark) 12 235780 13.06.1966 13.06.2028
9, 12, 16, 25, 2191293 16.08.2011 16.08.2031
CS(COMM) 277/2025 Page 4 of 12
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(H device) 35, 36, 37, 4,
42
9, 12, 16, 25, 2191294 16.08.2011 16.08.2031
35, 36, 37,
(Device mark)
41, 42 and 99
4 2314273 12.04.2012 12.04.2032
(Device mark)
4 2314274 12.04.2012 12.04.2032
(H device)
29. It is stated that the plaintiff no.2, vide authority letter dated 10th May,
2022, is exclusively authorized to use the HERO marks.
30. The plaintiffs are also the registered owner of the artwork of the
unique device.
31. The plaintiffs manufacture and sell lubricants under their sub-brands
HERO GENUINE ENGINE OIL/ HERO GENUINE OIL. The aforesaid
product is sold using a bottle with a novel and unique design. The design of
the bottle has been registered by the plaintiffs via two design applications
bearing nos. 311300 and 311301 on 25th October, 2018 (hereinafter ‘suit
designs’). It is averred in the plaint that the aforesaid registrations are valid
and subsisting.
32. The sales figures and advertising and promotional expenses incurred
by the plaintiffs in respect of their HERO GENUINE ENGINE OIL/ HERO
GENUINE OIL are given in paragraph no.23 of the plaint.
33. It is submitted that the defendant, SM Plast & Chemicals, is carrying
CS(COMM) 277/2025 Page 5 of 12
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out its business of manufacturing and supplying plastic bottles as well as
bottle caps and plastic moulds for usage in different industry from its
premises located at Nangloi, Delhi, the design of which is deceptively
similar to the suit designs used by the plaintiffs to sell their lubricant engine
oils.
34. It is submitted that the defendant is listed on IndiaMart where its is
making sale of the impugned products, i.e., plastic bottles identical with/
similar to the suit designs and the same are listed in the section of lubricant
bottles. The plaintiffs’ investigator also visited the defendant’s premises on
24th February, 2025. A photograph of the defendant’s listing on IndiaMart is
provided in the plaint and the same is reproduced below for ease of
reference:
CS(COMM) 277/2025 Page 6 of 12
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35. It is stated that the plaintiffs have a credible apprehension that the
impugned bottles sold by the defendant bear the plaintiffs’ HERO marks.
36. It is further submitted that by adopting and using the impugned
designs in relation to identical goods, i.e., lubricants, the defendant is
misrepresenting and deceiving the public and tarnishing the plaintiffs’
goodwill, reputation and globally recognised brand image.
37. A comparative table illustrating the similarities between the design
and labels of the products of the plaintiffs and the impugned products of the
defendant is set out below:
Plaintiffs’ Product/ Registered Suit Defendant’s Infringing Product/
Designs Design
FRONT VIEW FRONT VIEWREAR VIEW REAR VIEW
CS(COMM) 277/2025 Page 7 of 12
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SIDE VIEW SIDE VIEWSIDE VIEW SIDE VIEW
38. The comparison above categorically shows that the defendant has
copied the registered suit designs of the plaintiffs almost in its entirety
including the hexagonal shape, the dotted surface pattern, the gold colour
composition and/ or the unique composition of lines.
39. Based on the averments made in the plaint, the plaintiffs have
established their statutory as well as common law rights over the designs
used for products sold under the HERO marks including the mark HERO
GENUINE OIL.
40. On a prima-facie view, the impugned products being sold by the
CS(COMM) 277/2025 Page 8 of 12
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defendant appear to be a slavish imitation of the registered suit designs of
the plaintiffs. Clearly, an attempt has been made by the defendant to create
an impression that the impugned products being sold by the defendant are
associated with the plaintiffs.
41. Balance of convenience is in favour of the plaintiffs and against the
defendant. Irreparable loss, harm and injury would be caused to the plaintiffs
if the defendant continues to sell the impugned products. Prejudice would
also be caused to the public as the impugned design of the defendant’s
impugned products is deceptively similar to the plaintiffs’ suit designs and is
likely to cause confusion in the market.
42. Consequently, till the next date of hearing, the defendant, its
proprietor/ partners, associates, agents, officers, employees, distributors,
franchisees, representatives and assignees are restrained from
manufacturing, trading, supplying, selling, marketing, in any manner
including online sale or dealing in any other way with:
i. Any bottle/ packaging which is identical with or deceptively similar to
the plaintiffs’ suit designs.
ii. Any product bearing any trade mark identical with/ similar to the
plaintiffs’ HERO marks.
43. Issue Notice.
44. Notice be issued to the defendant through all permissible modes,
including e-mail.
45. Reply be filed within four (4) weeks.
46. Rejoinder thereto, if any, be filed within two (2) weeks thereafter.
47. In view of the fact that the plaintiffs have sought appointment of a
Local Commissioner to seize the infringing products, the very purpose of
CS(COMM) 277/2025 Page 9 of 12
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
The Order is downloaded from the DHC Server on 25/04/2025 at 22:01:30
grant of ex-parte ad interim injunction would be defeated if the defendant is
given notice contemplated in Order XXXIX Rule 3 of Code of Civil
Procedure, 1908 (hereinafter ‘CPC‘) prior to the execution of the
commission. Hence, it is directed that the plaintiffs shall serve notice under
Order XXXIX Rule 3 of the CPC at the time of execution of the commission
which shall not be later than two (2) weeks from today. The affidavit in
terms of Order XXXIX Rule 3 of the CPC shall be filed by the plaintiffs
within one (1) week thereafter.
48. List before the Joint Registrar on 14th May, 2025 for completion of
service and pleadings.
49. List before the Court on 10th September, 2025.
I.A. 8128/2025 (O-XXVI Rule 9 of the CPC)
50. The present application has been filed under Order XXVI Rule 9 of
the CPC seeking appointment of a Local Commissioner to visit and inspect
the premises of the defendant, make an inventory of all products and
packaging/ promotional material, etc. using/ bearing the impugned design
(hereinafter referred to as ‘infringing material’) and effect seizure of the
same.
51. In view of what is stated above, the plaintiffs have made out a case for
appointment of a Local Commissioner.
52. Accordingly, Mr. Sarthak Bhardwaj, (Mobile No. +91 9718119042) is
appointed as a Local Commissioner to visit the premises of the defendant
situated at:
S M Plast & Chemicals,
C-1, Naresh Park Extension, Nangloi,
West Delhi, New Delhi-110041.
CS(COMM) 277/2025 Page 10 of 12
This is a digitally signed order.
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53. The following directions are passed in this regard:
a. The Local Commissioner, along with a representative of the plaintiffs
and their counsel, shall be permitted to enter upon the premises of the
defendant mentioned above or any other location/ premises that may
be identified during the course of commission, in order to conduct the
search and seizure.
b. The Local Commissioner shall conduct a search at the defendant’s
premises and seize the infringing material.
c. The Local Commissioner shall make an inventory of all the infringing
material.
d. After seizing infringing material, the same shall be sealed and signed
by the Local Commissioner, in the presence of the parties, and
released on superdari to the plaintiffs on their undertaking to produce
the same as and when further directions are issued in this regard.
e. The Local Commissioner shall also be permitted to make copies of
the books of accounts including ledgers, cash registers, stock
registers, invoices, books, etc. insofar as they pertain to the infringing
material.
f. The defendant and its representatives are directed to provide full
assistance to the Local Commissioner for executing the present
commission.
g. To ensure an unhindered and effective resolution of this order, the
SHO of the local police station having jurisdiction of the aforesaid
premises and the DCP concerned are directed to render the necessary
protection and assistance to the Local Commissioner, if and when
sought.
CS(COMM) 277/2025 Page 11 of 12
This is a digitally signed order.
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h. The Local Commissioner shall have the liberty to take photographs
and/or videos of the stock seized and to take a sample of the
infringing material to be filed along with the Report.
54. The Local Commissioner shall file his report within two (2) weeks of
executing the commission, along with photographs/ videos taken and
photocopies of the books of account and stock and the inventory procured
pursuant thereto.
55. The fees of the Local Commissioner, to be borne by the plaintiffs, is
fixed at Rs.1,00,000/-. The plaintiffs shall also bear expenses for travel and
lodging of the Local Commissioner and other miscellaneous out-of-pocket
expenses for the execution of the commission.
56. The application stands disposed of in the above terms.
57. The order passed today shall not be uploaded for a period of two (2)
weeks from today.
58. Dasti.
AMIT BANSAL, J
MARCH 28, 2025
at
CS(COMM) 277/2025 Page 12 of 12
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
The Order is downloaded from the DHC Server on 25/04/2025 at 22:01:30
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