Bombay High Court Grants Permanent Injunction To Ultratech, Rules That Negligent Conduct By Defendant Merits Punitive Costs

The Court observed that the Defendant's conduct was ex-facie dishonest, as they continued to sell substandard cement under deceptively similar labels while intentionally dodging judicial service.

Invoking Section 35 of the Civil Procedure Code (as amended by the Commercial Courts Act), the Court held that the Plaintiffs were entitled to compensatory and punitive costs totaling ₹66.48 Lakhs, ruling that a party cannot escape liability by simply choosing not to appear before the Court.

​The Bench of Justice Arif S Doctor observed, “However, it is well-settled in the context of trade mark infringement and passing off suits that, in appropriate cases, the Court may award damages of a compensatory as well as punitive nature, particularly where the infringement is deliberate, dishonest, or calculated to unjustly enrich the Defendant…Further, where a Defendant has despite service, chosen not to appear the Court would be justified in drawing an adverse inference and in ensuring that such conduct does not result in the Defendant escaping liability. In the present case, the conduct of the Defendant is ex facie dishonest and lacking in bona fides.”

Advocate Hiren Kamod appeared for the Plaintiffs.

Factual Background

The Plaintiffs, registered proprietors of the well-known trademark "UltraTech," filed a commercial suit seeking a permanent injunction for trademark infringement and passing off against the Defendant.

In 2012, the Plaintiffs discovered the Defendant selling cement under the marks "ULTRA PLUS," "ULTRA HI-TOUCH," and "ULTRA POWER." Despite several cease and desist notices, the Defendant evaded service by providing incomplete address details.

By an ex-parte ad-interim order dated 1st August 2016, the Court appointed a Receiver who seized 1,102 bags of cement bearing the infringing marks from the Defendant’s premises.

Although the writ of summons was served in September 2016, the Defendant failed to appear or file a defence. Consequently, the matter proceeded as an undefended suit, and the Plaintiffs led evidence through their Constituted Attorney. Contention of the Parties

Contention of the Party

Plaintiffs submitted that the word "ULTRA" is the essential, leading, and distinctive feature of their registered trademarks, which have been used continuously since 2003. It was contended that the "UltraTech" mark has attained "well-known" status, and the Plaintiffs produced Chartered Accountants' certificates and sales invoices to establish immense goodwill and reputation.

The Plaintiffs argued that the Defendant’s marks were visually, phonetically, and structurally deceptively similar to their own. They alleged that the Defendant’s adoption of the marks was dishonest and intended to "free-ride" on the Plaintiffs' brand equity. The Plaintiffs further highlighted the public interest risk, noting that the Defendant was selling substandard or "duplicate" cement, which could compromise the safety of buildings and infrastructure.

In view of the Defendant’s malafide conduct and failure to contest the suit, the Plaintiffs sought a permanent injunction, destruction of seized goods, and the award of punitive damages and exemplary costs.

Observations of the Court

The Court observed that the Plaintiffs successfully proved their status as the registered proprietors of the "UltraTech" trademarks through valid legal proceeding certificates. The evidence led by the Plaintiffs' witness, which remained unchallenged and uncontroverted, established the open, continuous, and extensive use of these marks since 2003.

It was noted that the trademark "UltraTech" had acquired significant distinctiveness and was exclusively associated with the Plaintiffs by the general public and the trade. The Court took judicial notice of the fact that the mark had been previously recognized as a "well-known trademark" in India and was included in the official list maintained by the Trade Marks Registry.

Upon a comparison of the rival marks, the Court held that the Defendant’s marks—including "ULTRA PLUS," "ULTRA HITOUCH," and "ULTRA POWER"—were visually, structurally, and phonetically virtually identical or deceptively similar to the Plaintiffs' marks. The Court found that the Defendant had adopted the leading and essential feature "ULTRA" to dishonestly trade upon the Plaintiffs' goodwill.

The Court found the Defendant’s conduct to be ex-facie dishonest and lacking in bona fides. The Defendant failed to appear, file a written statement, or cross-examine the Plaintiffs' witness despite being duly served. The Court concluded that the use of the impugned marks was intended to take unfair advantage of the Plaintiffs' reputation and was likely to cause confusion among consumers regarding the source of the cement.

Regarding damages and costs, the Court emphasized that in commercial suits, under Section 35 of the CPC (as amended by the Commercial Courts Act), costs should follow the event. Although precise damages were not quantified by evidence, the Court ruled that punitive and compensatory costs were warranted due to the deliberate nature of the infringement and the Defendant's obstructive conduct.

It was held, “In the facts of the present case, the record reflects that the Defendant, in spite of being duly served, has chosen not to defend the Suit nor even cross-examine the Plaintiff’s Witness. The Defendant’s negligent conduct compelled the Plaintiff to incur substantial and avoidable expenditure. The Defendant's adoption of the impugned mark was entirely dishonest and was actuated in bad faith. In these circumstances, having regard to the conduct of the Defendant and the statutory mandate under Section 35 of the Civil Procedure Code, 1908, as amended, the Plaintiff is entitled to an award of costs.”

Conclusion

The Suit was decreed in favor of the Plaintiffs with the following directions: 1. The Defendant, including its agents and representatives, were permanently restrained from using the marks "UltraPlus," "UltraHiTouch," or any mark containing the word "ULTRA" (either alone or in combination) that is identical or deceptively similar to the Plaintiffs' registered trademarks.

2. The Defendant was restrained from using any mark that suggests a connection with the Plaintiffs or enables the passing off of the Defendant’s goods as those of the Plaintiffs.

3. The Defendant was ordered to deliver all infringing materials—including cement bags, stationery, brochures, dies, and packing materials—to the Plaintiffs for destruction.

Cause Title: UltraTech Cement Limited & Anr. v. M/s. Shiv Cement Co. [Neutral Citation: 2026:BHC-OS:11103]

Appearances:

Plaintiffs: Advocates Hiren Kamod, Alka Parelkar

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