Hindware Limited v. B S Tiles & Ors.
“Where an infringer copies the registered trademark as well as the registered product design, packaging and trade dress, the Court may grant immediate injunction and appoint a Local Commissioner to preserve and seize the infringing material.”
Court: High Court of Delhi
Case No.: CS(COMM) 733/2024
Date: 29 August 2024
Judge: Hon’ble Mr. Justice Saurabh Banerjee
Area of Law: Trademark Infringement, Passing Off, Registered Design Infringement, Copyright and Trade Dress
Short Description About the Case
This is an important Delhi High Court case concerning the unauthorised use of the HINDWARE trademark and the copying of a registered design relating to a “WATER CLOSET WITH CISTERN.”
The plaintiff, Hindware Limited, was engaged in the manufacture and sale of sanitaryware and related products and claimed extensive goodwill and reputation in the HINDWARE trademark.
The plaintiff was also the registered proprietor of Design No. 347331-001 dated 05.08.2021, in which novelty resided in the shape and configuration of a water closet with cistern.
The defendants were found to be selling products bearing the plaintiff’s HINDWARE trademark and products substantially similar to the plaintiff’s registered design.
The Court found that there were hardly any visible differences between the competing products and that the defendants were also using similar packaging and trade dress. The Court consequently granted an ex parte ad interim injunction and appointed Local Commissioners to inspect the defendants’ premises and preserve the infringing material.
Facts of the Case
Hindware Limited was one of the established manufacturers of sanitaryware products in India. The plaintiff stated that it had been operating in the market for several decades and had built substantial goodwill and reputation in the HINDWARE brand.
The plaintiff claimed adoption and use of the trademark HINDWARE from the year 1990. It had obtained numerous registrations for HINDWARE and allied marks across several classes.
The plaintiff was also the registered proprietor of Design No. 347331-001 dated 05.08.2021, titled “WATER CLOSET WITH CISTERN.” The registered design protected the shape and configuration of the product.
In May 2024, after independent investigations, the plaintiff discovered that the defendants, who were dealing in sanitaryware products, were selling products bearing the plaintiff’s HINDWARE trademark and products which allegedly infringed the plaintiff’s registered design.
The plaintiff therefore instituted a commercial suit seeking permanent injunction against trademark infringement, passing off, copyright infringement, delivery-up and rendition of accounts.
The plaintiff also sought an immediate ex parte injunction because there was a possibility that the defendants might continue selling the infringing products or remove the physical evidence from their premises.
Findings of the Court
The Court observed that the plaintiff had established substantial goodwill and reputation in the HINDWARE trademark and had numerous trademark registrations as well as a registered design relating to the product in question.
The Court examined the competing products and found that the defendants were using the plaintiff’s HINDWARE trademark on their products without any permission or authorisation.
The Court further found that the defendants’ products were substantially similar to the plaintiff’s registered design. According to the Court, there were hardly any visible differences which could distinguish the defendants’ product from the plaintiff’s registered product when judged by the eye.
An important aspect of the case was that the defendants were not merely copying the trademark or product design. They were also using similar packaging and trade dress, with substantially similar dimensions, shape and size.
The use of the identical HINDWARE trademark further increased the likelihood of confusion because an ordinary consumer could believe that the defendants’ products originated from or were associated with Hindware Limited.
The Court therefore held that the plaintiff had established a prima facie case, that the balance of convenience was in its favour and that refusal of immediate protection could result in irreparable injury.
Appointment of Local Commissioners
A particularly useful aspect of this case is the appointment of Local Commissioners.
The plaintiff apprehended that the defendants might remove or conceal the infringing products and other evidence from their premises.
Considering the circumstances, the Court appointed Local Commissioners to visit the defendants’ premises.
The Commissioners were authorised to:
seize, pack and seal infringing products and materials;
preserve products bearing the HINDWARE trademark and the registered design;
take copies or screenshots of relevant books of accounts and business records;
make video recordings of the execution of the commission; and
obtain police assistance wherever necessary.
The Court also permitted the Commissioners, in appropriate circumstances, to break open locked premises in the presence of the police.
This part of the order is particularly significant for practical IP enforcement because it enables the plaintiff to preserve evidence at the earliest stage of the litigation.
Suggestion / Practical Importance
This case is very useful for trademark practitioners where the infringer is copying not merely the brand name but the entire commercial identity of the product.
Where a client has both a registered trademark and a registered design, proceedings can be framed to protect both rights simultaneously.
For example, where a competitor uses:
same trademark + substantially identical product shape + similar packaging + similar trade dress,
the proprietor can consider seeking remedies for trademark infringement, passing off, design infringement and copyright infringement, depending upon the evidence available.
The appointment of a Local Commissioner is also an important practical remedy where there is a genuine apprehension that counterfeit or infringing goods may be removed before the defendant receives notice of the proceedings.
Therefore, this judgment is particularly useful when preparing applications for ex parte injunctions, search/seizure-related commissions and preservation of evidence in IP disputes.
Judgment
The Delhi High Court held that the plaintiff had made out a prima facie case for protection of its HINDWARE trademark and registered design.
The defendants were restrained, by way of an ex parte ad interim injunction, from manufacturing, selling, offering for sale, importing, exporting, retailing, distributing, marketing or otherwise dealing in products bearing the plaintiff’s HINDWARE trademark, its variants, the registered Design No. 347331-001, or confusingly similar marks, designs, packaging and trade dress.
The Court also appointed Local Commissioners to visit the defendants’ premises and preserve the infringing material and relevant business records.
The case therefore demonstrates that where infringement is clear, comprehensive and commercially damaging, the Delhi High Court can grant immediate interim protection and adopt effective procedural measures to preserve evidence and prevent further infringement.
