1. Court’s decision
The Delhi High Court dismissed an appeal against an order granting interim injunction in a trademark infringement suit involving self-drilling screws and allied fasteners. Upholding the commercial court’s restraint, the High Court found a clear prima facie case of infringement under the Trade Marks Act because the rival marks were “practically identical” (the defendants used “HP+” and “HP®+” against the plaintiff’s registered “HP”), and the defendants had no registration. The Court also condemned the illegal use of the “®” symbol and the copying of packaging elements, including colour combination and a shikara motif with “LE”, as showing a complete absence of bona fides.
2. Facts
The dispute arose from the sale of self-drilling screws, blind rivets and related goods in Class 6. The plaintiff asserted that the mark “HP” was coined in 1995 and used by its predecessor for fasteners, later formalised through a corporate structure and trademark registrations. A first registration of the word mark “HP” (Registration 1566805) dated 8 June 2007 was granted with a territorial restriction limited to sale of goods in Uttar Pradesh. A second registration (Registration 2848372) dated 24 November 2014 was granted for the same word mark “HP” without that territorial caveat. The registrations were later assigned through deeds to the plaintiff. The defendants, operating through a proprietorship, used “HP+” and “HP®+” for identical fastener goods and allegedly adopted similar packaging and online sales channels. The commercial court granted interim injunction; the defendants appealed under the Commercial Courts Act.
3. Issues
The High Court identified the appeal as turning primarily on interim injunction standards in intellectual property disputes and the scope of enquiry at the Order XXXIX stage. The central legal issues were whether the plaintiff had a prima facie valid registration capable of enforcement, whether the defendants’ “HP+ / HP®+” use infringed the plaintiff’s registered “HP” mark, and whether the defendants could defeat interim relief by challenging validity of the later registration (Registration 2848372) on grounds relating to assignment, association of marks, and territorial limitation. A further issue concerned whether the territorial caveat in the earlier registration could be imported into the later registration merely because the two registrations were “associated.”
4. Petitioner’s arguments
The appellants argued that the plaintiff’s case rested on allegedly fabricated documents claiming use since 1995 and that the predecessor’s paperwork did not convincingly establish business under “HP.” They contended the second registration was illegal and invalid because the predecessor company had already assigned the earlier “HP” registration to the plaintiff in 2013, so it could not have applied again in 2014 for the same mark for the same goods, and that the registry was misled by concealment. They invoked statutory provisions on associated trademarks and restrictions on assignment to argue that the territorial limitation attached to the 2007 registration should continue to bind the 2014 registration as well. They also argued that without findings of goodwill or reputation, the injunction could not be sustained as a passing off case, and asserted that the competing timelines of user were “neck-to-neck.”
5. Respondent’s arguments
The respondent argued that it was the registered proprietor of “HP” through assignments and that the defendants were subsequent dishonest adopters of “HP+,” including by illegally using the “®” symbol to suggest registration and create association with the respondent’s registered mark. It highlighted that the defendants copied the respondent’s packaging colour scheme and even replicated a shikara motif and “LE” logo, showing dishonest intent. The respondent maintained that documentary evidence supported earlier use and that the defendants’ trademark applications for “HP+” had not matured into any registration. It also contested the attempt to extend the UP-only restriction to the later registration, emphasising that the later registration did not contain any such caveat. On the alleged concealment point, the respondent submitted that, at the time of filing the 2014 application, the earlier assignment was not reflected in the registry record, so no illegality could be presumed at the interim stage.
6. Analysis of the law
The Court reiterated that, at the interim injunction stage in intellectual property cases, courts are not expected to undertake a detailed examination of evidence or decide arguable issues conclusively. Relying on Supreme Court guidance, it held that the court’s remit is a prima facie appraisal: if infringement appears prima facie, an injunction ordinarily follows, and mere delay does not defeat relief when adoption appears dishonest. The Court then situated the relief framework in the Trade Marks Act: Section 28 confers exclusive rights on a valid registered proprietor, Section 29 defines infringement, Section 31 makes registration prima facie evidence of validity, and Section 135 includes injunction as a statutory remedy. It stressed that, ordinarily, the fact of registration triggers a presumption of validity at the Order XXXIX stage unless the defendant demonstrates overwhelming invalidity on the face of the record.
7. Precedent analysis
The Bench cited Supreme Court precedent cautioning courts against deep factual adjudication while deciding interlocutory injunctions in intellectual property disputes, underscoring that arguable issues should be left to trial. It relied on Midas Hygiene to reinforce the proposition that in infringement cases, injunction normally follows and delay is not a sufficient defence where adoption is dishonest. It also referred to Laxmikant V. Patel to indicate the judiciary’s strong protective stance in cases involving unfair market conduct (noting the principle in the context of passing off, and observing it would apply equally, if not more, in infringement). Additionally, it drew on its own recent decision in Wow Momo Foods v. Wow Burger to explain that disclaimers operate only on the mark to which they apply and do not automatically spill over to other marks, using that reasoning by analogy to reject importing limitations across registrations merely because of association.
8. Court’s reasoning
On infringement, the Court found the marks “practically identical” and held there was no real defence: “HP” versus “HP+” differed only by the plus sign, while the “HP®+” variant aggravated the deception. The Court categorically held that use of the “®” superscript without any registration was illegal and lacked bona fides, as it misleads consumers into believing the mark is registered and, in context, encourages an immediate mental association with the respondent as the only registered proprietor of “HP.” Beyond the mark, the Court treated the packaging conduct as telling: the appellants used the same red-and-black colour combination and replicated the shikara motif and “LE” logo, reinforcing dishonest adoption and confusion risk.
On validity and territorial limitation, the Court accepted that the 2007 registration with UP-only limitation could not support an infringement claim outside UP. However, it held that the 2014 registration did not carry any such caveat, and rejected the theory that association of marks automatically transfers the earlier territorial limitation to the later registration, noting no statutory or precedential basis for such a spillover. Applying Wow Momo’s approach to disclaimers/limitations, it reasoned that limitations attach to the specific registration unless the law provides otherwise.
On the “invalidity due to assignment” argument, the Court held that, prima facie, no illegality was shown at the interim stage. Since the 2013 assignment was not yet reflected in the trademark registry record when the 2014 application was filed, it was not prima facie unlawful for the predecessor to apply for registration. The Court also found that interpretation of the assignment deed was debatable—whether it transferred all rights to the mark per se or only rights flowing from the first registration—requiring trial-level examination, especially since a separate assignment deed in 2019 transferred rights in the second registration. It therefore refused to upend the statutory presumption of validity under Section 31 at the interim stage.
9. Conclusion
The High Court concluded that the plaintiff had a prima facie valid registration (Registration 2848372) without territorial restriction, that the defendants were using an almost identical mark for identical goods, and that the defendants had no registration at all. In such circumstances, infringement was plainly made out and interim injunction had to follow. It characterised the appellants as “rank infringers,” noted the complete lack of bona fides evidenced by copying packaging and illegal use of the “®” symbol, and held that no infirmity existed in the commercial court’s decision. The appeal was dismissed and the injunction remained in force pending trial.
10. Implications
This decision strengthens interim enforcement for registered trademark proprietors in industrial goods markets, especially where defendants add minor suffixes such as a plus sign to imitate a registered word mark. It also sends a sharp deterrent message against misuse of the “®” symbol: courts may treat such conduct as a serious indicator of dishonest adoption and heightened likelihood of confusion. Importantly, the ruling clarifies that territorial limitations or disclaimers attached to one registration do not automatically extend to another registration merely because the marks are “associated,” unless the statute explicitly mandates it. For businesses, it underscores the need for clean trademark adoption, accurate registry compliance, and distinct trade dress—particularly in competitive fastener and hardware sectors.
Case law references
- Brihan Karan Sugar Syndicate Pvt Ltd v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana — Interlocutory injunction courts should avoid detailed evidence analysis; only prima facie merits are examined; applied to relegate arguable questions about assignment/association to trial.
- Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia — In infringement matters, injunction normally follows; delay is not enough to refuse relief where adoption appears dishonest; applied to justify sustaining the injunction once prima facie infringement existed.
- Laxmikant V. Patel v. Chetanbhai Shah — Strong interim protection in passing off; court noted the principle would apply equally, if not more, in infringement; used to underline robust interim relief approach.
- Wow Momo Foods Pvt Ltd v. Wow Burger — Disclaimers affect only the specific marks carrying them and do not spill over; applied by analogy to reject importing UP-only limitation from one registration into another merely because of association.
- Quantum Hi Tech Merchandising Pvt Ltd v. L.G. Electronic India Pvt Ltd (referred) — Example of an “extreme” case where registration may be facially invalid (application for one mark, registration for another); cited to explain when Section 31 presumption might be displaced.
FAQs
1. Is using the “®” symbol without trademark registration illegal in India?
Yes. The Delhi High Court treated the “®” superscript as permissible only for registered trademarks and held that using it without registration is illegal and evidence of lack of bona fides, because it misleads consumers into believing the mark is registered.
2. Can adding a “+” to a registered trademark avoid infringement?
Not necessarily. If the competing marks are otherwise practically identical and used for identical goods, adding a small suffix like “+” may still amount to infringement under Section 29 because it is likely to cause confusion or association with the registered mark.
3. Do territorial limitations in one trademark registration automatically apply to another “associated” registration?
The Court held that there is no general rule under the Trade Marks Act that a limitation in one registration automatically binds another associated registration, unless the law expressly provides for such spillover.
