Case title:

Ultra Tech Cement Limited And Anr vs Ultra Plus Cement Pvt.Ltd And Ors

Date of Order:

20 December, 2022

Bench:

Justice Sanjeev Narula

Parties:

Plaintiff- Ultra tech cement limited and anr

Defendant- Ultra Plus Cement Pvt.Ltd And Ors

SUBJECT

• A trademark is a distinctive sign, word, phrase, logo, or design that distinguishes the goods or services of one seller from those of another. It is a form of intellectual property and grants exclusive rights to the trademark owner.
• Trademark infringement refers to the act of using or misusing a trademark without authorization or permission. This violation can occur in various forms, including copying, counterfeiting, and passing off. Infringement can have significant consequences for both the trademark owner and the defendant, including legal consequences and reputational damage.

IMPORTANT PROVISIONS

Trade Marks Act, 1999

• Section 2(1)(zg): Well Known Trade Mark

OVERVIEW

• The plaintiffs owned the business of manufacture, marketing, and sale of cement and other allied goods and services, inter alia, under the 'UltraTech' formative marks such as ‘UltraTech Cement’, ‘UltraTech Concrete and Birla White’, ‘UltraTech Building Solutions’ and ‘UltraTech Building Products’. 
• The first plaintiff was one of the biggest manufacturers of grey cement, white cement, and ready-mix concrete, and was the third-biggest cement producer globally (excluding China) with operations in four countries, such as India, the U.A.E., Bahrain, and Sri Lanka. The first plaintiff was a market leader in the said products with a consolidated revenue of Rs. 52.599 crore in the Financial Year 2020-21. 
• It was found that the plaintiffs adopted the mark ‘UltraTech’ in India in the year 2003 concerning cement. The words ‘UltraTech/UltraTech Cements/Ultra’ form a vital and prominent feature of the marks used by the plaintiffs.
• The plaintiffs then learned that the third defendant attained registration of the mark ‘Ultra Plus’ filed on September 9, 2009, in Class 19 for cement, claiming use from August 21, 2008. 
• A rectified petition was filed by the second plaintiff against the same, which was pending adjudication. The third defendant was granted registration subject to the condition that 'the sale of goods shall be confined to the State of Rajasthan'.
• After reviewing the contentions of the rivals and parties, the Court noted that prima facie, the plaintiffs managed to show the reputation and goodwill that they possess in the mark ‘Ultra’, though in alternative forms thereof. 
• Plaintiffs owned various trademarks in which Ultra appeared prominently. Under Section 2(1)(zg) of the Trade Marks Act, 1999, the same has also been declared a 'well-known trademark', according to the plaintiffs. Any resemblance in the marks between plaintiffs and defendants is likely to deceive an unwary consumer into thinking the defendants' products are related to plaintiffs' goods, the Court noted. 
• The High Court of Bombay in an order dated June 10, 2016, held that no person can claim exclusive right over the mark ‘Ultra’, and also viewed that the use of the mark by the defendants therein was not deceptively identical to that of the plaintiffs. 

ISSUE RAISED

• Whether the use of the mark ULTRA PLUS by Ultra Plus Cement Pvt. Ltd. and others (“Defendants”) in similar packaging as that of Ultra Tech Cement Ltd. (“Plaintiff”) amounts to trademark infringement?

JUDGEMENT ANALYSIS

• The Delhi High Court granted an ad-interim injunction and barred Ultra Plus Cement Pvt. Ltd. and others (“Defendants”) from using the mark ULTRA PLUS in deceptively identical packaging to that of Ultra Tech Cement Ltd. (“Plaintiff”). 
• The court observed that prima facie, the Plaintiff has sufficiently proved its goodwill and reputation in the mark ULTRA. 
• The court took into account the well-known status of the Plaintiff’s mark and distinguished the dicta of the Bombay High Court on the ground that in the said case, the use of rival marks was not similar. 
• The court also denied entertaining the defendants' assertions as to the lack of territorial jurisdiction at this stage.

CONCLUSION

Justice Navin Chawla allowed the instant application filed by the plaintiffs by holding that the plaintiffs managed to prima facie show that the defendants tried to come close to the plaintiffs in all aspects and the use of the mark by the defendants was likely to deceive an unwary consumer.