‘Not a case of innocent adoption’; Delhi High Court rules in favour of Hero Investcorp for mark ‘HERO’ in relation to engine oil

Delhi High Court: Plaintiffs, owners of the trade mark ‘HERO’, ‘’, ‘/’, filed the present suit seeking various remedies including permanent injunction restraining defendants from selling counterfeit ‘Hero genuine 4t plus motorcycle engine oil’, which bear plaintiffs’ marks and identical packaging. Sanjeev Narula, J.*, opined that defendants had infringed plaintiffs’ rights by adopting and using an identical mark with respect to identical goods. The Court opined that it was not a case of innocent adoption and thus, defendants’ conduct invited the award of damages and plaintiffs were also entitled to actual costs recoverable from defendants.

Background

Plaintiffs 1 and 2 were ‘Group Companies’ carrying on their business under the house mark ‘HERO’. The trade mark ‘HERO’ was also used as label and device marks ‘’, ‘’. They were engaged in the business of manufacturing and selling various automative products and services under the trade mark ‘HERO’. One such product of plaintiffs was the ‘Hero genuine 4t plus motorcycle engine oil’ which was designed to cater to modern driving behaviour and road conditions in India. It was averred that HERO Oil’s superior quality resulted from extensive research by plaintiffs, and their unique elements, set HERO oil apart, making it distinct and superior to others.

Plaintiffs were the owners of the original artistic work as defined in Section 2(c) of the Copyright Act, 1957, subsisting in the HERO marks, ‘’, ‘’, ‘’, and ‘’, featuring distinctive and imaginative styles. Further, plaintiffs were also the proprietor of copyright in original artistic work on the packaging and labels of plaintiffs’ HERO oil comprising of distinctive arrangement of features, get-up, artwork, and layout.

In August 2022, plaintiffs learned of defendants’ sale of counterfeit HERO oil. As per plaintiffs’ information, Defendants 2 and 3 were the manufacturer and distributor of counterfeit HERO Oil, respectively. Defendants 4 to 11, who were wholesalers, were engaged in the sale of counterfeit HERO oil. At the preliminary stage, on 2-9-2022, the Court granted an ad interim ex parte injunction restraining defendants from infringing upon, plaintiffs’ registered HERO marks or any other identical/deceptively similar marks, and infringement of plaintiffs’ copyright in HERO device marks and label. Thereafter, seven Local Commissioners were appointed to visit the premises of defendants to seize and inventorize the infringing goods.

Comparison of Plaintiffs’ and Defendants’ products

Analysis, Law, and Decision

The Court opined that the comparison demonstrated that defendants had infringed plaintiffs’ rights by adopting and using an identical mark with respect to identical goods. Additionally, defendants had copied plaintiffs’ product description in addition to almost identical packaging.

The Court noted following differences in the packaging of plaintiffs’ and defendants’ products:

1. The colour/shade of defendants’ bottle was lighter than plaintiffs’ HERO oil bottle;

2. In plaintiffs’ HERO oil container, there were total seven dot points and defendants’ bottle had eight dot points;

3. In defendants’ HERO oil, Hero logo embossing was small, surface was not smooth, and the parting line had flashes and were miss matched, which were not present in plaintiffs’ product.

The Court thus held that as per Section 29(2)(c) of the Trade Marks Act, 1999, defendants were infringing plaintiffs’ trade mark. Further, defendants had imitated and blatantly copied each aspect of plaintiffs’ labels, logo, and packaging, which were the original literary work of plaintiffs’ and such use amounted to infringement of the original artistic copyright vested with plaintiffs under the Copyright Act, 1957. The findings of the reports of the Local Commissioners also clearly indicated that defendants were actively involved in the sale, distribution, and manufacturing of counterfeit HERO Oil, thereby infringing upon plaintiffs’ registered HERO marks.

Thus, the suit was decreed in terms of the plaint and the Court opined that it was not a case of innocent adoption and thus, defendants’ conduct invited the award of damages and plaintiffs were also entitled to actual costs recoverable from defendants.

[Hero Invest Corp (P) Ltd. v. Ashok Kumar, 2024 SCC OnLine Del 1443, decided on 20-2-2024]

*Judgment authored by: Justice Sanjeev Narula

Advocates who appeared in this case :

For the Plaintiffs: Zeeshan Khan, Akshey Bhardwaj, Advocates

Buy Trade Marks Act, 1999   HERE