Court’s decision
The Delhi High Court, through Justice Tejas Karia, granted an ex-parte ad-interim injunction restraining the defendant from manufacturing, selling, or marketing engine oil and automotive lubricant bottles that infringed upon the registered ‘HERO’ trademarks and bottle designs owned by the plaintiffs. The Court held that the defendant’s actions amounted to prima facie infringement and passing off, observing that such counterfeiting “erodes consumer confidence and strikes directly at the plaintiff’s goodwill.”
A Local Commissioner was appointed to inspect, seize, and prepare inventory of counterfeit products found at the defendant’s premises. The Commissioner was authorized to break open locks, seek police assistance, and take photographs or videos of the seizure.
Facts
The plaintiffs, part of a leading automotive group, filed a commercial suit seeking to restrain the defendant from infringing their registered trademarks and bottle designs used for their branded engine oils sold as ‘HERO GENUINE OIL’. The plaintiffs claimed ownership of the ‘HERO’ word mark and associated device marks, with over 2,000 registrations globally across 121 countries.
They contended that their unique bottle designs, registered under Design Nos. 311300 and 311301, had become distinctive identifiers of their genuine engine oil products. The defendant, however, was found to be manufacturing and selling counterfeit bottles bearing identical marks and shapes, thereby deceiving the public into believing that such goods were authorized products.
Issues
- Whether the defendant’s use of identical marks and bottle designs amounted to infringement under the Trade Marks Act, 1999 and Designs Act, 2000.
- Whether the plaintiffs were entitled to an ex-parte injunction in view of the urgent threat of ongoing counterfeiting.
- Whether appointment of a Local Commissioner was necessary for seizure of infringing material.
Petitioner’s arguments
The plaintiffs argued that the HERO mark and its device variants were globally recognized symbols of trust and quality in the automotive sector, backed by decades of goodwill and consistent consumer association. They emphasized that their registered designs were not merely functional but distinctive aesthetic creations that signified the origin of genuine HERO GENUINE OIL.
They submitted that an investigator had discovered large-scale counterfeiting operations at the defendant’s industrial premises, where engine oil bottles bearing the HERO mark and identical bottle shapes were being manufactured. Such acts, they claimed, amounted to deliberate infringement, misrepresentation, and passing off, intended to deceive consumers and unfairly capitalize on the plaintiffs’ reputation. The plaintiffs also argued that counterfeiting of lubricant products posed a public safety concern due to compromised quality.
Respondent’s arguments
As the matter involved an ex-parte injunction, no formal appearance or response was made by the defendant at this stage. However, the Court recorded that the plaintiffs had established a strong prima facie case justifying non-service of advance notice, given the imminent risk of concealment or destruction of counterfeit goods by the defendant.
Analysis of the law
The Court relied on the provisions of Order XXXIX Rules 1 and 2 CPC to grant temporary injunctions where immediate relief is necessary to prevent irreparable injury, as well as Order XXVI Rule 9 for appointment of a Local Commissioner to execute seizure. It observed that infringement of trademarks and designs not only violates statutory rights but also constitutes commercial fraud upon the public.
The Court emphasized that the plaintiffs’ registered rights under the Trade Marks Act, 1999 and Designs Act, 2000 enjoy statutory protection. Since the plaintiffs demonstrated continuous and bona fide use of their marks and designs, the defendant’s acts of imitation created a strong presumption of bad faith and intent to mislead.
Further, the Court found that the plaintiffs’ claim satisfied the threefold test for injunction—(i) prima facie case, (ii) balance of convenience in their favour*, and (iii) likelihood of irreparable harm*.
Precedent analysis
The Court relied on the Supreme Court’s ruling in Yamini Manohar v. T.K.D. Krithi, (2023 SCC OnLine SC 1382) to grant exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, as urgent interim relief was sought.
The judgment reaffirms earlier Delhi High Court precedents holding that trademark counterfeiting warrants immediate injunctive relief. Past rulings such as Rolex SA v. Alex Jewellery Pvt. Ltd. (2009 SCC OnLine Del 1916) and Cartier International AG v. Gaurav Bhatia (2016 SCC OnLine Del 3309) were referenced contextually, reinforcing that even minor deviations in counterfeit goods do not dilute liability where deception is evident.
Court’s reasoning
Justice Karia observed that the plaintiffs’ extensive global reputation, supported by documentary evidence and photographs, established that the HERO mark and bottle designs were well-known in the industry. The defendant’s unauthorized use was “calculated to deceive consumers” and amounted to passing off as well as statutory infringement.
The Court stressed that products like engine oil are purchased on the basis of brand trust and quality assurance, and that counterfeit lubricants “pose significant risk to consumers and tarnish the reputation built over decades.” The Court found that damages alone could not compensate the injury to reputation and consumer confidence.
Accordingly, the Court issued an injunction restraining the defendant and associated entities from using any identical or deceptively similar mark or design, whether online or offline.
Conclusion
The Delhi High Court granted an ex-parte ad-interim injunction restraining the defendant from using the ‘HERO’ mark or the plaintiffs’ bottle designs, and from selling any counterfeit products in any manner. The Court also appointed a Local Commissioner to seize infringing goods and report back within two weeks.
In a strong statement underscoring the significance of brand integrity, the Court observed that “counterfeiting strikes at the heart of consumer trust and undermines the very foundation of fair competition.” The matter was listed for further hearing on 12 February 2026.
Implications
This order reinforces judicial intolerance toward counterfeiting, particularly in industries where consumer safety and brand integrity are paramount. It affirms that courts will act swiftly to protect registered intellectual property even ex-parte, without prior notice to defendants, to prevent destruction of evidence.
The decision also emphasizes the continuing importance of design protection alongside trademark registration and highlights the Court’s proactive role in ensuring compliance through court-appointed commissioners.
