Court’s Decision
The Delhi High Court granted an interim injunction in favour of the plaintiff, a leading automotive parts manufacturer, restraining the defendants from using the marks ‘HTA’, ‘ARS’, ‘ARAI’, concentric circle logos, and deceptively similar trade dress. The Court found that the defendants’ adoption of the mark was dishonest, supported by doctored evidence, and clearly intended to ride on the goodwill and reputation of the plaintiff.
The defendants, their directors, officers, distributors, and associates were prohibited from manufacturing, advertising, selling, or exporting goods under the impugned marks and packaging until the final disposal of the suit.
Facts
The plaintiff company, incorporated in 1985, has been engaged in designing and manufacturing oil seals, valve stem seals, gaskets, and aluminium die-cast products. It entered into a technical collaboration with Japanese companies Arai Seisakusho Co. Ltd. and Mitsubishi Corporation in 1986, adopting marks ‘HTA’, ‘ARS-HTA’, and distinctive concentric circle logos in 1994 and 1997. With sales exceeding ₹600 crores in FY 2022–23, it supplies parts to major OEMs like Maruti Suzuki, Toyota, Hero Motocorp, and Honda.
In 2023, the defendants sued the plaintiff in a separate suit alleging infringement, claiming use of the mark ‘HTA’ since 1977. An interim injunction was granted against the plaintiff, but later stayed by a Division Bench. The plaintiff then filed the present passing off suit in December 2023, alleging that the defendants had fraudulently adopted its marks, manipulated evidence of prior use, and even filed for registrations of third-party well-known marks.
Issues
- Whether the plaintiff was the prior adopter and user of the mark ‘HTA’ and associated logos.
- Whether the defendants’ documents claiming prior use since 1977 were credible or fabricated.
- Whether adoption of identical marks and trade dress amounted to dishonest adoption and passing off.
- Whether the plaintiff made out a prima facie case for interim injunction under Order XXXIX Rules 1 and 2 CPC.
Petitioner’s Arguments
The plaintiff argued that it had continuously used the mark ‘HTA’ since 1985, with documentary proof including invoices, technical drawings, purchase orders, and advertisements. The concentric circle logos were used from 1997. It contended that the defendants fabricated documents—such as doctored trade fair photographs and brochures with mobile numbers not in use before 2009—to create false evidence of prior use.
The plaintiff further highlighted that the defendants had applied for registration of third-party marks such as ‘JCB’, ‘Cummins’, ‘Hino Prime’, and ‘Meritor’, establishing a consistent pattern of bad faith. It was urged that irreparable harm would result if injunction was not granted.
Respondent’s Arguments
The defendants claimed prior use of the mark ‘HTA’ since 1977, initially by a proprietorship firm and later by the incorporated company. They relied on trademark registrations obtained in 2007 and 2019, documents of trade show participation, and brochures. They contended that the plaintiff’s documents only showed use of ‘HTA’ as part numbers or vendor codes, not as trademarks.
They also argued that the interim injunction previously granted in their favour in 2023 supported their claims, and the stay by the Division Bench did not erase its findings.
Analysis of the Law
The Court clarified that passing off actions are maintainable irrespective of registration, as recognised in S. Syed Mohideen v. P. Sulochana Bai (2016). It reiterated the Cadila Healthcare v. Cadila Pharmaceuticals (2001) test that passing off requires misrepresentation, likelihood of confusion, and damage to goodwill.
Under Section 29(6)(d) of the Trade Marks Act, use of a mark on invoices, business papers, or packaging constitutes trademark use. Thus, the plaintiff’s evidence of invoices, mould manufacturing documents, and product packaging sufficed to establish prima facie use of ‘HTA’ since 1985.
The Court found the defendants’ evidence unreliable, noting manipulation of photographs and brochures, unexplained changes in user claims from 1994 to 1977, and suspicious documents such as a 2004 brochure with a mobile number first issued only in 2009.
Precedent Analysis
- S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683 – Passing off unaffected by registration.
- Cadila Healthcare v. Cadila Pharmaceuticals (2001) 5 SCC 73 – Set out essentials of passing off.
- Burger King Corporation v. Techchand Shewakramani (2018 SCC OnLine Del 10881) – Use on business papers amounts to trademark use.
- Dongguan Huali Industries v. Anand Aggarwal (2024 SCC OnLine Del 4488) – Held defendants fabricated GST-era documents pre-2016; interim injunction granted. Applied here for fabricated evidence.
- Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog (2010 SCC OnLine Del 2933) – Courts not bound to accept documents without testing credibility.
- Volans Uptown v. Mahendra Jeshabhai Bambhaniya (2024 SCC OnLine Del 881) – Bad faith filing of multiple third-party marks shows intent to profiteer.
These judgments guided the Court in concluding that the defendants acted dishonestly.
Court’s Reasoning
The Court observed that the plaintiff’s long-standing use since 1985, extensive sales, and industry reputation established prima facie goodwill. In contrast, the defendants’ fabricated and inconsistent documents undermined their credibility.
The Court remarked: “The defendants’ conduct was blatantly dishonest and mala fide from the very inception and shocks the conscience of the Court.”
Finding that the balance of convenience lay with the plaintiff, the Court restrained the defendants from using the impugned marks and packaging.
Conclusion
The High Court held that the plaintiff had made out a strong prima facie case of passing off. It granted an interim injunction restraining the defendants and their associates from using:
- The mark ‘HTA’ or deceptively similar marks.
- The logos ‘ARS’, ‘ARAI’, concentric circle logos, or deceptively similar logos.
- The plaintiff’s distinctive trade dress in packaging.
The matter was listed for final hearing in November 2025.
Implications
This judgment is significant for brand protection and enforcement in India. It shows that courts will not tolerate fraudulent claims of prior use or manipulated evidence. The decision reinforces that long-standing goodwill, coupled with dishonest conduct of the rival, tilts the balance of convenience in favour of genuine rights holders.
It also sends a strong signal against “trademark squatting,” where parties file applications for well-known marks of third parties to profiteer from their goodwill.
FAQs
Q1. Can a passing off action be maintained even if the plaintiff’s mark is unregistered?
Yes. Under Section 27(2) of the Trade Marks Act and S. Syed Mohideen, passing off rights are independent of registration.
Q2. Why did the Court find the defendants’ evidence unreliable?
Because their photographs and brochures were manipulated, user claims were inconsistent, and suspicious documents like brochures with post-dated mobile numbers were filed.
Q3. What relief was granted to the plaintiff?
An interim injunction restraining the defendants from using the marks ‘HTA’, ‘ARS’, ‘ARAI’, logos, and deceptively similar packaging until final disposal.
