The Bombay High Court has granted an interim injunction restraining Hamon Cooling Systems Pvt. Ltd. and another defendant from using the “HAMON” trademark, holding that the plaintiff, John Cockerill Hamon SA, had made out a strong prima facie case of trademark infringement and passing off. The Court found that the defendants’ continued use of the mark after expiry of their limited brand usage rights was unauthorised and likely to cause confusion in the market.
Justice Arif S. Doctor held that the material on record prima facie established the plaintiff’s title to the HAMON trademarks through a chain of assignments originating from the original proprietor and culminating in the transfer of worldwide intellectual property rights to the plaintiff. The Court observed that the plaintiff’s rights were not defeated merely because recordal of certain trademark assignments before the Trade Marks Registry remained pending, noting that a valid assignment is effective between the parties upon execution and does not depend upon its entry in the register.
Rejecting the defendants’ contention that they had acquired independent rights through long-standing use, the Court noted that the defendants themselves admitted that their adoption of the HAMON mark originated from the consent of the plaintiff’s predecessor. It held that a party tracing its use of a mark to the proprietor’s permission cannot subsequently assert an independent proprietary right adverse to the proprietor or its successor. The goodwill generated through such permitted use would enure to the benefit of the trademark owner and not the user.
The Court also found the defendants’ conduct to be inconsistent with their claim of independent ownership. It observed that despite asserting continuous use since 1999, the defendants had filed trademark applications for ‘HAMON COOLING’ and ‘HCS HAMON COOLING’ on a ‘proposed to be used’ basis in 2022 and 2024. The Court held that such applications were incompatible with a claim of longstanding proprietary rights and prima facie reflected an attempt to usurp a mark over which the defendants knew they had no independent legal entitlement.
On the passing off claim, the Court noted that the plaintiff had produced material demonstrating actual instances of confusion among persons in the trade regarding the source and affiliation of the defendants’ business. It held that the continued use of the HAMON mark was likely to mislead customers into believing that the defendants continued to be associated with the original HAMON group, thereby causing injury to the plaintiff’s goodwill and reputation.
The Court further rejected the defence of acquiescence, observing that the plaintiff had promptly issued a cease-and-desist notice after discovering the continued use of the mark and that the defendants had failed to identify any positive act by the plaintiff or its predecessor encouraging independent use of the trademark. It also held that the defendants’ earlier use was admittedly permissive, rendering the plea of acquiescence inapplicable.
Holding that the balance of convenience overwhelmingly favoured the plaintiff, the Court observed that any hardship to the defendants was self-created, as they continued using the mark despite expiry of the limited brand usage rights and despite receiving a cease-and-desist notice. It further noted that since some of the defendants’ projects involved public sector entities, it was in the larger public interest to restrain the continued use of the HAMON mark so as to prevent misrepresentation and avoid securing public projects on the strength of a reputation and goodwill that no longer belonged to them.
Accordingly, the Court allowed the interim application and restrained the defendants from using the impugned marks pending disposal of the suit. On the defendants’ request, the Court recorded the plaintiff’s statement that the injunction would not be acted upon for three weeks from the date of the order.
