Bombay High Court
John Cockerill Hamon Sa vs Hamon Cooling Systems Private Limited on 6 July, 2026
VAIBHAV 6-IA-345-2026
NAMDEV
BARE
Digitally signed by
VAIBHAV NAMDEV
BARE
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Date: 2026.07.07
20:00:56 +0530
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO. 345 OF 2026
IN
COMMERCIAL IP SUIT NO. 7 OF 2026
John Cockerill Hamon SA. ​ ​ ​ ​ ​ ...Applicant/Plaintiff
Versus
Hamon Cooling Systems Private Limited & Anr.​ ...Defendants/Respondents
_______
Mr. Janak Dwarkadas, Senior Advocate, a/w. Mr. Hiren Kamod, Ms. Namrata
Vinod, Mr. Ashutosh Kane, Ms. Sumana Roychowdhury and Mr. Kanak Kadam
i/b. W. S. Kane & Co., for the Applicant/Plaintiff.
Dr. Veerendra Tulzapurkar, Senior Advocate, a/w. Mr. Hitesh Mutha, Mr. Sajid
Mohamed, Mr. Sumit Raghani and Ms. Dikshita Pawar i/b. Argud Partners, for the
Defendants.
_______
CORAM ​ ​ : ARIF S. DOCTOR, J.
RESERVED ON ​ : 7th APRIL 2026.
PRONOUNCED ON : 6th JULY 2026.
P.C.
1.​ The captioned Suit has been filed inter alia for infringement and passing off in
respect of the mark HAMON.
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2.​ It is the Plaintiff’s case that the Plaintiff is the proprietor of the following
marks, all of which are registered and, for convenience, are referred to as the
“HAMON Marks”, viz.
Mark Registration Class Obtained on User Valid upto
No.
HAMON 495228 7 1st August 1988 1st January 1963 1st January
(word) (Engetra S.A.) 2029
HAMON 495229 11 1st August 1988 'Proposed to be 1st August
(word) (Engetra S.A.) used' 2029
1710809 7, 11, 16th July 2008 1st March 1999 16th July
19, 37, (HCI) 2028
42
(device)
1836422 19, 37, 3rd July 2009 'Proposed to be 3rd July
42 (HCI) used' 2029
(device)
495230 7 1st August 1988 'Proposed to be 1st August
used' 2009
3.​ It is the Plaintiff’s case that Defendant No. 1, despite not having any right, title,
or interest in the mark HAMON, is using “HAMON COOLING” and “HCS
HAMON COOLING” (“the impugned marks”) in the course of its trade and
also as a part of its corporate name. It is thus that the Plaintiff has filed the
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captioned Suit, claiming infringement of the “HAMON” Mark and also for
passing off the goods and services of Defendant No. 1 as those of the Plaintiff.
4.​ The Plaintiff has, by way of the present Interim Application, sought the
following relief:
“a. that pending the hearing and final disposal of the present Suit the Defendants
by itself, its directors, its servants, agents, representatives, distributions, stockists
and all other persons claiming by, through or under it be restrained by a
temporary order and injunction of this Hon’ble Court from in any manner,
directly or indirectly, using, affixing, the impugned mark “HAMON” and in
respect of its goods/services as a mark, corporate name, domain name, email,
business name, trade name and/or trading style etc. or any other mark, corporate
name, domain name, email, business name, trade name and/or trading style etc.
containing and/or incorporating the word `HAMON’ or any other mark
deceptively similar to that of the Plaintiffs said trademark “HAMON” and in
respect of the Defendants’ goods or service and/or as a part of its trade
name/corporate name, domain name so as to infringe the Plaintiff’s registered
trade mark “HAMON” bearing nos. 495229, 495228, 1710809 and 1836422;
b. that pending the hearing and final disposal of the suit, the Defendants by itself,
its directors, its servants, agents, representatives, distributions, stockists and all
other persons claiming by, through or under it be restrained by a temporary order
and injunction of this Hon’ble Court from in any manner, directly or indirectly,
using, affixing, the impugned mark “HAMON” and in respect of its goods as a
mark, business name, trade name, domain name and/or trading style etc. or any
other mark, business name, trade name, domain name and/or trading style etc.
containing and/or incorporating the word `HAMON’ and/or deceptively similar
to the Plaintiff’s mark `HAMON’ and so as to pass-off or enable others to3
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6-IA-345-2026pass-off the Defendants’ goods and business as and for the goods and business of
the Plaintiff or as emanating from or affiliated and be further restrained from in
anyway associating and/or connecting itself with the Plaintiff by use of the mark
`HAMON’ and/or any other deceptively similar mark thereto;c. that pending the hearing and final disposal of the present Suit, the Defendants
be ordered and directed to transfer the domain name viz www.hamonindia.com
and or any other domain name containing/incorporating the word/mark
`HAMON’ and or any other similar/deceptively similar mark/name to the
Plaintiff by taking appropriate steps at its own cost and until such transfer is
made in the name of the Plaintiff the Defendants be restrained from
transferring and or creating any third party rights and or in dealing in any
manner with the said domain name with third parties;d. for ad-interim reliefs in terms of prayers (a), (b) and (c), above;
e. for costs of the Suit;
f. for such further and other reliefs as the nature and circumstances of the case
may require.”
Submissions on behalf of the Plaintiff:
5.​ Mr. Dwarkadas, learned Senior Counsel appearing on behalf of the Plaintiff
at the outset pointed out that HAMON had been adopted as a trade mark by
ENGETRA S.A. (“ENGETRA”), a Belgian entity, in the year 1963 in
respect of goods falling in Classes 7 and 11, including, but not limited to, air
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cooling apparatus, air conditioning apparatus, air condensers, water heaters,
heat exchangers, etc.
6.​ He submitted that in the year 1988, in order to secure statutory rights in
India, ENGETRA applied for and obtained registration of the trade mark
HAMON (word per se) bearing registration nos. 495228 and 495229 in
Classes 7 and 11, and also for the device mark ” ” bearing registration
nos. 495230 and 495231 in Classes 7 and 11.
7.​ On 15th September, 1999, ENGETRA S.A. executed a Deed of Assignment
assigning its exclusive right, title, and interest in the HAMON Marks
bearing registration nos. 495228, 495229, and 495230, along with the
goodwill, to HCI.
8.​ Thereafter, Hamon & CIE (International) S.A. (“HCI”) acquired
approximately a 70% stake in an Indian Company, i.e., Thermopack
Engineers Pvt. Ltd. Following this acquisition, Thermopack Engineers Pvt.
Ltd. was renamed Hamon Thermopack Engineers Pvt. Ltd. and in
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1998-1999, Thermopack Engineers Pvt. Ltd. changed its name to Hamon
Thermopack (“Hamon Thermopack”). On 12th April 1999, HCI acquired
100% of the shareholding in Hamon Thermopack. Thus, HCI had full
control and ownership of Hamon Thermopack.
9.​ In the year 2007, Hamon Thermopack entered into a joint venture with
Shriram EPC Ltd. for collaboration on cooling tower engineering projects.
On 16th July 2008 and 3rd July 2009, HCI filed applications for registration
of the HAMON Marks in India. Shriram EPC acquired 50.01% equity in
Hamon Thermopack, due to which Hamon Thermopack was renamed
Hamon Shriram Cottrell Pvt. Ltd. Shriram Industrial Holdings thereafter
acquired Shriram EPC’s 49.99% stake in Hamon Shriram through an internal
share transfer in the year 2013.
10.​In the year 2019-2020, HCI increased its shareholding in Hamon Shriram to
99.16%, and Hamon Shriram was thereafter renamed Hamon Cooling
Systems Pvt. Ltd., i.e., Defendant No. 1. Mr. Dwarkadas then invited my
attention to Exhibit “G” to the Plaint as well as a chart in paragraph 13 of the
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Plaint to point out that Defendant No. 1 had achieved an annual turnover of
Rs. 2,19,51,37,850/- in the financial year 2023-24, and Defendant No. 2, i.e.,
Hamon India, had a turnover of Rs. 9,81,417/- in the year 2023-24, and that
the net worth of Defendant No. 1 was Rs. 36,40,52,516/-. He thus submitted
that HCI was using the HAMON Marks on an extensive scale throughout the
Indian market, due to which the HAMON Marks had acquired tremendous
goodwill and reputation throughout India and had become the valuable
assets of HCI.
11.​Mr. Dwarkadas then submitted that in the year 2022, HCI had initiated
judicial reorganisation proceedings in Belgium, which were subsequently
converted into bankruptcy proceedings in which three trustees were
appointed by the Belgian Court to deal with the assets of HCI.
12.​He pointed out that on 20th May 2022, CMI France, a subsidiary of the John
Cockerill Group, submitted a bid to, inter alia, acquire substantially all of
the intellectual property assets of HCI. He submitted that the bid specifically
covered the entire portfolio of HAMON brands and trade marks, the ERP,
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patents, the website and HCI’s equity interests in companies forming part of
the Esindus subgroup carrying on the cooling (wet cooling) and water
management (water solutions) business of the erstwhile Hamon Group. He
submitted that although the equity securities of the Esindus subgroup
belonging to HCI initially formed part of the bid submitted by CMI France,
the Trustees of HCI ultimately sought and obtained approval only for the
transfer of HCI’s assets, excluding the Esindus subgroup shares.
13.​On 27th May, 2022, “Le Tribunal de Commerce Spécialisé de Bobigny”, i.e.,
the Specialised Commercial Tribunal Bobigny, issued an order for the
transfer/assignment of the assets belonging to Hamon Thermal Europe,
France, and certain assets of the French company Compagnie Financiers
Hamon for the benefit of CMI France. Consequently, on 30th May 2022, the
Trustees of HCI filed a petition with the Official Receiver in the bankruptcy
proceedings, requesting authorisation to sell HCI’s assets (excluding Esindus
sub-group shares) to CMI France, acting for and on behalf of John Cockerill
Hamon SA. This application, he pointed out, was allowed on 1st June, 2022.
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He also relied upon material from the Hamon group website showing that
Defendant No. 1 formed part of the Esindus subgroup within the wider
Hamon group structure.
14.​Mr. Dwarkadas submitted that on 2nd June 2022, CMI France transferred
€1,100,000 to the Trustees as a guarantee/consideration for the acquisition of
the assets of HCI (except Esindus securities), including all the intellectual
property rights pertaining to the HAMON marks. He then pointed out that on
25th July 2022, a Transfer Agreement was executed between HCI, acting
through its Court-appointed trustees, and the Plaintiff, which he pointed out
was effective from 1st June 2022. He also pointed out that Clause 1.1.1.1 of
the Transfer Agreement made clear that the entire portfolio of brands held by
HCI, including all brand names and trade names attached to the HAMON
brands, stood transferred to the Plaintiff.
15.​ He then invited my attention to Clause 6 of the Transfer Agreement and
pointed out that, at the request of the Trustees, the Transferee, i.e., the
Plaintiff, agreed to pay an additional consideration of €500,000 over and
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above the agreed purchase price to permit certain Hamon group companies,
which had not been acquired by the Plaintiff group, to continue using the
HAMON brands for a limited period solely to enable them to complete their
ongoing projects. He pointed out that Clause 1.1.1.2 of the Transfer
Agreement expressly describes this arrangement as the “Brand Usage
Right”. He submitted that Defendant No. 1 was one such company who was
permitted to use the HAMON brand to complete ongoing projects.
16.​Mr. Dwarkadas submitted that by virtue of the Transfer Agreement dated
25th July 2022, HCI transferred to the Plaintiff all its rights, title, interest and
goodwill in the HAMON Marks worldwide, including in India. He
submitted that, while the Plaintiff had not acquired the Indian business of the
Hamon group nor had the Plaintiff acquired Defendant No. 1, the Plaintiff
had acquired all the statutory rights in respect of the HAMON Marks
worldwide, including in India, from HCI. Mr. Dwarkadas pointed out that
this was confirmed and reiterated by HCI in a Confirmatory Deed dated 18th
April 2024.
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17.​Mr. Dwarkadas, then to highlight what he submitted was the dishonest
conduct of Defendant No. 1, pointed out that Defendant No. 1 had, on 18th
August 2022, maliciously filed a trade mark application bearing No.
5573155 in Class 7 for the mark “HAMON COOLING” on a
proposed-to-be-used basis.
18.​He then pointed out that on 30th September, 2022, a Share Sale Agreement
(“SSA”) was executed between one Mr. Akhileshwar G. Chorasiya,
Defendant No. 2 and Hamon (Netherlands) B.V., whereby the entire 99.16%
equity stake of Defendant No. 2 in Defendant No. 1 was transferred to Mr.
Chorasiya. He took pains to point out that the SSA clearly marked the
disassociation of Defendant No. 1 from the Hamon Group. He also pointed
out that the SSA was restricted only to the transfer of the shares and that
none of the intellectual property rights, brand ownership, or logo rights in
the HAMON marks were in any manner transferred to Mr. Chorasiya.
19.​He further pointed out that under Clause 2.1(a)(iii) of the SSA, Mr.
Chorasiya was obliged to fulfil the existing contracts/projects executed or
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being executed by Defendant No. 1 as specifically listed in Schedule 4 of the
SSA. He reiterated that, since Defendant No. 1 had not been acquired by the
Plaintiff, as per Clause 1.1.1.2 of the Transfer Agreement, only a temporary
right to use the HAMON brands was granted to Defendant No. 1 solely for
the purpose of completing the pending projects, which were more
particularly set out in Schedule 4 of the SSA.
20.​Mr. Dwarkadas then invited my attention to the Plaint to point out that the
Plaintiff had in paragraph 24 specifically pleaded as follows:
“The Plaintiff agreed to increase the purchase price of the IPR
belonging to the curators/trustees in return for a limitation of the
Plaintiff’s undertaking to grant, under certain conditions, a
temporary right to use the Hamon brands and/or the ERP to
Hamon Group companies not taken over by the JCG, for the limited
and sole purpose of completing the projects in progress (as was
then) and did not grant any broader rights to the Defendants to use
the trade marks.”
He took pains to point out that Defendant No. 1 had not denied the Plaintiff’s
above contention.
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21.​He then also submitted that Defendant No. 1’s conduct before the Trade
Marks Registry was wholly inconsistent with the stand taken by Defendant
No. 1 in the present proceedings. In support of his contention, he invited my
attention to the Examination Report dated 31st January 2023 issued by the
Registry in respect of the Application for registration made by Defendant
No. 1 for the mark “HAMON COOLING”. He pointed out that the
Plaintiff’s HAMON Mark bearing Registration No. 495228 was cited as a
conflicting mark under Section 11 of the Trade Marks Act. He submitted that
Defendant No. 1 had, in the Affidavit in Reply to the Examination Report,
merely sought to distinguish the proposed mark, “HAMON COOLING”,
from the Plaintiff’s registered HAMON Mark and had not claimed prior use
nor asserted any independent right and/or superior right over the proposed
marks. He thus submitted that the stand taken by Defendant No. 1 in the
present proceedings, in which Defendant No. 1 had asserted independent and
long-standing rights in the HAMON Mark, was plainly an afterthought and
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was wholly inconsistent with the stand taken by Defendant No. 1 before the
Trade Marks Registry.
22.​Mr. Dwarkadas submitted that on 30th May, 2024, the Plaintiff had filed an
application before the Trade Marks Registry to bring the name of the
Plaintiff on record as the subsequent proprietor of the HAMON Marks. He
then pointed out that the Trade Mark Registry had, on 9th December 2024,
rejected the Application filed by Defendant No. 1 for “HAMON
COOLING”. However, despite this, Defendant No. 1 had, on 11th December,
2024, mischievously filed another application bearing No. 6751645 in Class
7 for the word mark “HCS HAMON COOLING” and trade mark
applications under Nos. 6751644 and 6751646, both in Class 11, for the
word marks “HAMON COOLING” and “HCS HAMON COOLING”,
respectively, on a proposed to be used basis.
23.​He submitted that on 17th April, 2025, despite the expiry of the limited and
temporary “Brand Usage Right” granted to Defendant No. 1 under the
Transfer Agreement, Defendant No. 1 had brazenly continued its
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unauthorised use of the HAMON Marks in its corporate name, goods,
services, and communications. He thus submitted that the Plaintiff issued a
cease and desist notice to Defendant No. 1. He submitted that instead of
complying with the said notice, Defendant No. 1 brazenly continued its use
of the impugned marks. He submitted that such blatant and unauthorised use
of the HAMON trade mark clearly amounted to infringement under the
provisions of Sections 29(1), 29(2), and 29(5) of the Trade Marks Act, 1999,
as well as passing off.
24.​He pointed out that Defendant No. 1 was using the impugned marks, i.e.,
“HAMON COOLING” and “HCS HAMON COOLING”, both of which
contain the whole of the Plaintiff’s registered trade mark “HAMON” as their
leading, essential, and prominent feature. He submitted that Defendant No. 1
also simultaneously continued to operate the domain name
www.hamonindia.com and email addresses such as [email protected]
which contains the Plaintiff’s registered trade mark HAMON in its entirety,
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and was also using the impugned marks in respect of goods and services that
are identical to those of the Plaintiff.
25.​Mr. Dwarkadas then invited my attention to two emails received by the
Plaintiff, one from Technip (annexed at Exhibit “P” to the Plaint) and the
other from Relysolutions (annexed at Exhibit “F” to the Rejoinder), to point
out that the use of impugned marks by Defendant No. 1 had in fact resulted
in actual confusion. He then pointed out from the emails that they set out
specific instances of confusion and also sought a clarification from the
Plaintiff with respect to the ownership and use of the HAMON Marks by
Defendant No. 1. He submitted that these emails demonstrated that
Defendant No. 1 had continued to hold itself out as being associated with the
HAMON brand and business, thereby misrepresenting itself to customers
and to persons in the trade.
26.​ Mr. Dwarkadas submitted that it was clear from the conduct of Defendant
No. 1 that the intention of Defendant No. 1 was to ride upon the Plaintiff’s
reputation and goodwill in the HAMON Marks. He submitted that the very
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fact that Defendant No. 1 had applied for registration of the marks
“HAMON COOLING” and “HCS HAMON COOLING”, on a
proposed-to-be-used basis, was an admission of the fact that Defendant No.
1 did not have any independent subsisting legal right to use HAMON.
27.​Mr. Dwarkadas also submitted that the Plaintiff’s chain of title of the
ownership and proprietorship of the HAMON Marks was clear and in light
of the Transfer Agreement, pursuant to which the Plaintiff had acquired all
right, title, interest and goodwill in the HAMON Marks. He thus submitted
that the Plaintiff, having stepped into the shoes of HCI, who was the prior
owner and proprietor in respect of the HAMON Marks, had become entitled
to enjoy all the right, title and interest that HCI had in the HAMON Marks,
including the right to claim prior adoption, as the registration of the
HAMON word mark dated back to the year 1963.
28.​He submitted that the Plaintiff had at all times acted consistently as the
successor-in-title and proprietor of the HAMON Marks. He pointed out that
the Trade Marks Registry had already recorded the name of the Plaintiff in
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respect of the “HAMON device mark” bearing Registration Mark No.
1836422 and that, although the application filed by the Plaintiff in respect of
the other HAMON Marks was pending, the pendency of such applications
did not in any manner affect the Plaintiff’s rights as the successor-in-title and
proprietor of the HAMON Marks to file a Suit for infringement and passing
off.
29.​In support of this contention, Mr. Dwarkadas placed reliance upon the
decisions in SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd &
Anr1 and J.K. Jain & Others v. Ziff-Davies Inc2 from which he pointed out
that even prior to, or pending an application to register an assignee as the
proprietor of the registered Trade Mark, the Court is entitled to grant
interlocutory as well as final relief in an infringement action instituted by
such assignee. He further pointed out that Defendant No. 1 had admittedly
not claimed any assignment nor any title to the HAMON Marks through
HCI and was therefore a complete stranger to the Plaintiff’s chain of title. He
1
2010 (42) PTC 389 (Bom).
2
2000 (56) DRJ (Suppl) 810 (SC).
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then placed reliance upon the decision in Parksons Cartamundi (P) Ltd. v.
Suresh Kumar Jasraj Burad,3 to submit that in these facts, Defendant No. 1
could not be permitted to impeach the validity of the Transfer Agreement or
the Confirmatory Deed.
30.​Mr. Dwarkadas then reiterated that Clause 1.1.1.1 of the Transfer Agreement
clearly covers the Indian registrations in the HAMON marks. He thus
submitted that the said marks were therefore clearly and sufficiently
transferred to the Plaintiff. He also reiterated that, vide the SSA, no property
rights were assigned or transferred to Mr. Chorasiya. He thus submitted that
the Plaintiff was clearly the sole proprietor of the HAMON Marks, and the
use of impugned marks by Defendant No. 1 plainly amounted to
infringement and passing off.
31.​Mr. Dwarkadas submitted that the balance of convenience was plainly in
favour of the Plaintiff since the Plaintiff is the lawful proprietor of the
HAMON Marks in India. He submitted that Defendant No. 1 did not have
3
2012 SCC OnLine Bom 438.
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any right, title or interest in HAMON or the HAMON Marks, as was evident
from the fact that Defendant No. 1 had filed applications for registration of
the impugned marks on a proposed-to-be-used basis. He submitted that if the
injunction prayed for was not granted, Defendant No. 1 would effectively be
permitted to continue to project itself in the market as being associated with
the Plaintiff and/or passing off its goods and services as being those of the
Plaintiff. He submitted that this would cause confusion in tenders and/or
projects and also divert business opportunities away from the Plaintiff to
Defendant No. 1. He submitted that this confusion and deception amongst
members of the public and trade alike would cause irreparable injury to the
Plaintiff’s reputation and goodwill, which could not be compensated for in
damages.
32.​Conversely, Mr. Dwarkadas submitted that Defendant No. 1 would not suffer
any damage or hardship if restrained from using the impugned marks. He
pointed out that Defendant No. 1 had, since at least April 2024, upon receipt
of the cease-and-desist notice, been put to notice that its use of the HAMON
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Mark was illegal and unauthorised. He also submitted that post-September
2022, Defendant No. 1 could have adopted a distinct brand identity of its
own; instead, Defendant No. 1 chose to continue trading upon the Plaintiff’s
reputation by persisting with HAMON in its corporate and domain names.
He therefore submitted that any inconvenience caused to Defendant No. 1 by
the grant of an injunction would be the direct result of Defendant No. 1’s
own deliberate and dishonest conduct. This, he submitted, would not and
could not outweigh the Plaintiff’s statutory and proprietary rights that flowed
from being the proprietor of the HAMON Marks.
33.​Basis the above, Mr Dwarkadas submitted that the balance of convenience
was therefore entirely in favour of the Plaintiff. He also submitted that the
question of balance of convenience would arise only when, on merit, the
scales were balanced and not when they were tilted in favour of one party. In
support of his contention, Mr. Dwarkadas placed reliance upon the
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judgement of this Court in Poddar Tyres Ltd v. Bedrock Sales Corporation
Ltd.4 which he pointed out inter alia held that as follows:
“…Reiterating the test laid down in its earlier judgment in Wearwell Cycle Co. (India)
Ltd. v. Wearwell Industries, , the High Court pointed out that the question of balance of
convenience was relevant only when, at least prima facie, “the two parties were on the
same level and their rights were about equal”. In my view, neither are there any special
circumstances, nor are the parties in a situation of being near-equal, so as to invoke
consideration of balance of convenience in the present case.”
34.​Mr. Dwarkadas, therefore, submitted that the Interim Application be allowed
and Defendant No. 1 be restrained from infringing the Plaintiff’s HAMON
Marks and from passing off its products and services as those of the
Plaintiff’s.
Submissions on behalf of Defendant No. 1:
35.​Dr. Tulzapurkar, Learned Senior Counsel appearing on behalf of Defendant
No. 1, at the outset submitted that the following questions would arise for
consideration in the present Interim Application:
I. Whether the Plaintiff is the registered proprietor of the HAMON Marks?
4
AIR 1993 BOM 237.
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II. Whether in the absence of a valid assignment the Plaintiff could be
granted interim reliefs on the basis of infringement or passing off?III. Whether Defendant No. 1 is protected by the statutory and equitable
defences, including prior and continuous user under Section 34;
acquiescence under Section 33; and use by consent under Section 30(2) of
the Trade Marks Act; andIV. Whether the balance of convenience is in favour of the Defendants?
36.​Dr. Tulzapurkar submitted that the Plaintiff’s entire case was premised on
the basis of five registrations comprising the word mark “HAMON” and the
logo/device mark, which also has “HAMON” as part thereof. He submitted
that it was on this basis that the Plaintiff had sought to restrain Defendant
No. 1 from using HAMON as part of its trade name, corporate name and
trade mark. Dr. Tulzapurkar, however, submitted that the Plaintiff’s claim for
infringement was fundamentally flawed and unsustainable since the Plaintiff
had failed to establish that the Plaintiff is the registered proprietor or lawful
owner of the “HAMON” Marks.
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37.​He then invited my attention to Section 29 of the Trade Marks Act to point
out that an action for infringement can be maintained only by the registered
proprietor of a trade mark and that Section 2(v) of the Trade Marks Act
defines a “registered proprietor” as the person whose name is entered on the
Register of Trade Marks as the proprietor of any such mark. He pointed out
that, as on date, the Register of Trade Marks records the name of HCI as the
registered proprietor of the HAMON Marks and not the Plaintiff.
38.​Dr. Tulzapurkar then pointed out that the Plaintiff’s application seeking
registration as the subsequent proprietor of the HAMON Marks was
presently pending and that the records of the Trade Marks Registry disclosed
that clarifications had been sought for by the Registrar from HCI, the alleged
assignor. He therefore submitted that it was not open for the Plaintiff in these
circumstances to claim the status of a registered proprietor of the HAMON
Marks, and therefore the Plaintiff was also not entitled to any relief, let alone
interlocutory relief.
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39.​In dealing with the decision in Cott Beverage Inc. v. Silvassa Bottling
Company,5 upon which reliance was placed by the Plaintiff, Dr. Tulzapurkar
submitted that the said judgment did not advance the Plaintiff’s case since it
only held that the pendency of an application for recording an assignment
does not create an absolute bar to the institution of a Suit for infringement.
He pointed out from the said decision that the same specifically recognises
the fact that registration of an assignment is not a mere formality, and the
Court must consider that the non-registration of the assignment is an
important factor while deciding whether interim relief should or should not
be granted. He submitted that, in the present case, far from there being a
delay in recording the alleged assignment in favour of the Plaintiff, the
material on record itself demonstrated that the Registrar was not satisfied
with the validity and efficacy of the alleged assignment, as objections had
been raised by the Registrar.
5
2003 SCC OnLine Bom 965.
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40.​In addition to the above, Dr. Tulzapurkar submitted that the Plaintiff had also
failed to establish even a prima facie chain of title in respect of the HAMON
Marks since the documents relied upon by the Plaintiff suffered from serious
infirmities. He pointed out that the Transfer Agreement did not specifically
refer to the Indian trade marks of HCI and that, admittedly, the Indian
business of HCI was not acquired by CMI France. He then submitted that
the purported Confirmatory Deed merely referred to an earlier Private Deed
dated 1st June 2022, which was the basis on which the Plaintiff had claimed
title to the HAMON Marks. He, however, submitted that the Plaintiff had not
produced this Private Deed either before the Registrar or before this Court.
41.​Dr. Tulzapurkar then submitted that the position was even more problematic
for the Plaintiff since what was filed by the Plaintiff before the Registrar was
not the Transfer Agreement Deed but only the Confirmatory Deed. He
submitted that the Plaintiff’s own pleadings proceeded on the basis that the
Confirmatory Deed merely confirmed an earlier transaction, and therefore
26
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6-IA-345-2026
the Confirmatory Deed could never have, by itself, operated as the document
conferring and/or transferring title in respect of the “HAMON” Marks.
42.​Dr. Tulzapurkar submitted that the Confirmatory Deed was itself suspect
since it was executed only by a Curator, whereas the Transfer Agreement
was executed by the three Trustees in bankruptcy acting pursuant to
authority granted by the insolvency authorities. He submitted that the
Plaintiff had not produced any order, authority or mandate empowering the
Curator to assign or confirm the transfer of the Indian trade marks by HCI,
and hence the validity of the Confirmatory Deed was itself in serious doubt.
43.​Dr. Tulzapurkar then also submitted that both the Transfer Agreement and
the Confirmatory Deed were unstamped and consequently inadmissible in
evidence. Apart from this, he submitted that the existence of separate
consideration paid under the Confirmatory Deed itself indicated that the
Indian trade marks were not part of the assets transferred under the Transfer
Agreement. He, therefore, submitted that the Plaintiff ought to be directed to
27
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6-IA-345-2026
produce the alleged Private Deed dated 1st June 2022, which was the
authority under which the Trustees of HCI purportedly acted, and also the
relevant documents evidencing the authority of the so-called Curator to
execute the Confirmatory Deed. He submitted that in the absence of such
disclosure, an adverse inference must be drawn against the Plaintiff.
44.​Dr. Tulzapurkar next submitted that the alleged assignment was also
ineffective in law by reason of non-compliance with the provisions of
Section 42 of the Trade Marks Act. He submitted that the Plaintiff’s own
case was that the Plaintiff did not acquire the Indian business of the Hamon
Group (HCI), and hence the assignment, if any, was only an assignment of
trade marks that did not include goodwill. In these facts, he submitted that
the provisions of Section 42 of the Trade Marks Act would squarely apply,
which he pointed out required the Plaintiff to advertise the assignment
within 6 months from the date of the assignment. He therefore submitted that
it was incumbent upon the Plaintiff to have sought directions from the
Registrar and to have advertised the assignment as mandated by the
28
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6-IA-345-2026
provisions of Section 42, which the Plaintiff had not complied with. He thus
submitted that it was clear that the assignment of the HAMON Mark in
favour of the Plaintiff never took effect in law and that the Plaintiff cannot
therefore sustain a claim for infringement, much less an application for
interim relief.
45.​According to Dr. Tulzapurkar, the Plaintiff’s attempt to rely upon the alleged
assignment was further undermined by the fact that the application made
before the Registrar was itself defective. He pointed out that Rule 75 of the
Trade Marks Rules, 2017, requires the parties to provide particulars
concerning the nature of the assignment, including whether it is with or
without goodwill. He submitted that in the facts of the present case, no such
particulars had been properly furnished. He submitted that the Registrar was
required, after applying his mind to the validity of the assignment, to
consider the assignment and determine whether the title in the marks in
question had validly passed. He thus submitted that the Registrar’s function
was not merely ministerial and, in support of his contention, placed reliance
29
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upon the decision in the case of Electronica India Ltd. v. Electronica
Hitech Machines Pvt. Ltd.6
46.​Dr. Tulzapurkar then pointed out that Defendant No. 1 was incorporated as
far back as in the year 1971 and had been carrying on business continuously
thereafter. He submitted that the HAMON name was adopted by Defendant
No. 1 in the year 1999 following the acquisition of shares in Defendant No.
1 by entities associated with HCI. He submitted that thereafter Defendant
No. 1 had carried on substantial business under the HAMON name and had
built an independent reputation and goodwill in India. He also submitted that
in the year 2007, when the Shriram Group acquired control of Defendant
No. 1, HCI had not raised any objection whatsoever to the continued use of
the HAMON name and marks. He submitted that the business continued
thereafter under the name Hamon Shriram Cottrell Private Limited and
subsequently as Hamon Cooling Systems Private Limited.
6
Commercial Miscellaneous Petition No. 51 of 2022, Order dated 15.04.2024.
30
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6-IA-345-2026
47.​Dr. Tulzapurkar submitted that the Plaintiff’s case of permissive use was
entirely an afterthought and that the cease-and-desist notice as well as the
Plaint proceeded on the footing that Defendant No. 1’s use was wholly
unauthorised. He submitted that it was only after Defendant No. 1 disclosed
the facts that the Plaintiff had, in rejoinder, introduced a case of permissive
use and that such a plea was neither pleaded nor supported by any
contemporaneous document. He submitted that no written licence agreement
existed by which HCI permitted Defendant No. 1 to use the HAMON Mark
and that Section 2(r)(ii)(c) specifically contemplated a written agreement in
case of permitted use.
48.​Dr. Tulzapurkar submitted that the mere fact that HCI held shares in
Defendant No. 1 also did not, ipso facto, mean that a licence had been
granted by HCI to Defendant No. 1 to use “HAMON”. In support of his
contention, he placed reliance upon the decision of the Hon’ble Supreme
Court in the case of Mrs. Bacha F. Guzdar v. Commissioner of Income
31
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6-IA-345-2026
Tax,7 to point out that HCI, being a mere shareholder of Defendant No. 1,
was a separate and distinct legal entity from Defendant No. 1. He submitted
that merely because HCI held shares in Defendant No. 1 did not mean that
Defendant No. 1 would have any rights over the assets of HCI, much less the
trade marks of HCI, and vice versa.
49.​Dr. Tulzapurkar additionally submitted that trade mark law requires the
existence of a connection in the course of trade between the proprietor of a
mark and the goods or services offered under that mark. He submitted that
ordinarily such a connection manifests itself through the proprietor’s
supervision and control over the nature and quality of the goods or services
marketed under the mark in question. In the present case, he pointed out that
the Plaintiff had failed to plead, let alone prima facie establish, that HCI
exercised any such control or supervision over the business activities of
Defendant No. 1.
7
AIR 1955 SC 74.
32
Vaibhav
6-IA-345-2026
50.​He then placed reliance upon the decisions in American Home Products
Corporation v. Mac Laboratories Pvt. Ltd.8 and Gujarat Bottling Co. Ltd. v.
Coca Cola Co.,9 to point out that use of a trade mark by a person other than
the registered proprietor can be treated as use by the proprietor only where
there exists a genuine trade connection in which the proprietor exercises
effective control over the quality and character of the goods or services in
respect of which the mark in question is used. He submitted that a licence
devoid of such control is inconsistent with the fundamental principles of
trade mark law.
51.​Dr. Tulzapurkar also submitted that Defendant No. 1 had a compelling
defence under Section 34 of the Trade Marks Act since Defendant No. 1 had
been continuously using the HAMON name and mark in India since 1999.
Conversely, he pointed out that no use of the HAMON Marks by HCI in
India had either been pleaded, much less established. He submitted that the
Plaintiff was therefore seeking to appropriate the very reputation built by
8
(1986) 1 SCC 465.
9
(1995) 5 SCC 545.
33
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6-IA-345-2026
Defendant No. 1 in the HAMON Mark for over a period exceeding two
decades. Dr. Tulzapurkar submitted that Defendant No. 1 was also protected
under the provisions of Section 30(2)(b) of the Act, since the use of the
HAMON Mark by Defendant No. 1 was entirely with the knowledge of and
with the consent of HCI. He therefore submitted that such use cannot
amount to infringement.
52.​He also submitted that the conduct of the Plaintiff and its predecessors
clearly attracts the doctrine of acquiescence. He pointed out that Defendant
No. 1 had been continuously and openly using the HAMON name and mark
since 1999, with HCI’s knowledge, and that HCI had never objected to such
use. He also pointed out that even after the Plaintiff claimed to have acquired
rights in the HAMON Marks in the year 2022, the Plaintiff took no action
until April 2024. He submitted that such prolonged inaction itself disentitled
the Plaintiff from being granted any equitable relief. In support of his
contention, he placed reliance upon the decisions in Willmott v. Barber,10
10
15 (1880) Chancery Division 96.
Power Control Appliances v. Sumeet Machines Pvt. Ltd.,11 and Northern &
Shell PLC v. Conde Nast & National Magazines Distributors Limited &
Anr.12
53.​Dr. Tulzapurkar submitted that the Plaintiff’s claim for passing off was
equally unsustainable. He submitted that neither the Plaintiff nor HCI had
established any business operations or goodwill in India under the HAMON
Mark. He submitted that a claim for passing off is necessarily founded on
reputation, goodwill, misrepresentation and damage, which the Plaintiff had
failed to establish. On the other hand, he pointed out that Defendant No. 1
had demonstrated extensive business activity and a substantial turnover in
India under the HAMON name for over several decades. He submitted that
if the injunction as prayed for were granted, Defendant No. 1 would suffer
grave and irreparable loss, harm and injury, whereas no loss, harm or injury
would be caused to the Plaintiff if the injunction were refused. He therefore
11
1994 2 SCC 448
12
1995 RPC 117.
35
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submitted that the balance of convenience lay squarely in favour of
Defendant No. 1.
54.​Dr. Tulzapurkar, then with regard to the instances of confusion alleged by
the Plaintiff, submitted that two such stray communications cannot constitute
evidence of actual deception or establish the extensive confusion necessary
to sustain a passing off action. He submitted that at the highest, such emails,
even assuming they were genuine, merely demonstrate routine commercial
enquiries.
55.​Dr. Tulzapurkar thus submitted that the balance of convenience was
overwhelmingly in favour of Defendant No. 1. He submitted that Defendant
No. 1 was presently executing projects valued in excess of Rs. 450 crores for
various public sector undertakings and major industrial customers, and an
injunction at this stage would jeopardise ongoing projects, expose Defendant
No. 1 to substantial contractual liabilities, disrupt public infrastructure
projects and seriously prejudice hundreds of employees. Conversely, he
36
Vaibhav
6-IA-345-2026
reiterated that the Plaintiff did not have any operating business in India, and
therefore the Plaintiff would suffer no prejudice if the injunction as prayed
for were not granted. He submitted that any alleged injury to the Plaintiff
was entirely speculative and compensable in damages, assuming the Plaintiff
were to succeed, whereas the injury to Defendant No. 1 would be immediate,
severe and irreparable. He also reiterated that delay, acquiescence and
serious defects in title vitiated the Plaintiff’s claim. In these circumstances,
he submitted that the Plaintiff had failed to establish any prima facie case in
support of the grant of interim relief, and, therefore, the Interim Application
ought to be dismissed with costs.
Submissions in Rejoinder on behalf of the Plaintiff:
56.​Mr. Dwarkadas submitted that the present case was not one involving a
challenge to title or competing claims of original proprietorship but was
considerably narrower and pertained to a derivative user, i.e., Defendant No.
37
Vaibhav
6-IA-345-2026
1, who had admittedly adopted and used the HAMON Mark with the consent
and authority of HCI, the registered proprietor, and who now seeks to resist
enforcement by the successor in interest even after the original consent had
ceased. He therefore submitted that the central question for consideration
was whether a user whose adoption of a mark is traceable to the proprietor’s
consent can subsequently assert an independent proprietary right in the mark
that is against the right, title and interest of the successive proprietor.
57.​Mr. Dwarkadas then invited my attention to the averment made in the
Affidavit in Reply and Affidavit in Sur-Rejoinder filed by Defendant No. 1
to point out that Defendant No. 1 had expressly admitted that the adoption
and use of the HAMON Mark by Defendant No. 1 from 1999 onwards was
with the “implied or express consent” of HCI. He submitted that Defendant
No. 1, having specifically conceded to this position, could not thereafter
seek to simultaneously invoke the defence of the prior user under Section 34
of the Trade Marks Act and the defence available to a permitted user under
38
Vaibhav
6-IA-345-2026
58.​He placed reliance upon the decision of Calcutta High Court in the case of
Patton International Ltd. v. Patton Electronics (I) Pvt. Ltd.13 to point out
that a licence does not create any title in the licensee. He submitted that in
the present case, Defendant No. 1, being a permissive user/licensee, cannot
claim title as per Section 34. In support of this contention, he placed reliance
upon the decision of this Court in the case of Velcro Industries B.V. and
Anr. v. Velcro India Ltd.14 and also upon the extract from Professor
Christopher Wadlow’s book titled ‘The Law of Passing Off – Unfair
Competition By Misrepresentation’ to point out that the goodwill in the
business carried on by the licensee under the licenced name/mark will accrue
to the owner/licensor and no such goodwill or interest can be claimed to
have been acquired by the licensee independently.
59.​ Mr. Dwarkadas therefore submitted that the two stands taken by Defendant
No. 1, i.e., on the one hand claiming independent prior use of the HAMON
Mark since 1999 and on the other claiming that Defendant No. 1 has used
13
2009 (40) PTC 633 (Cal).
14
1992 SCC Online Bom 582.
39
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6-IA-345-2026
the HAMON Mark with the consent or authority of HCI, were
fundamentally inconsistent and mutually destructive. He submitted that a
party who traces its adoption and use of a mark to the authority of a
proprietor of a mark necessarily acknowledges and accepts the superior
right, title and interest of the proprietor and therefore cannot, at the same
time, assert any independent proprietary rights adverse to and/or in
derogation of the right, title and interest of the proprietor or the proprietor’s
successor-in-title. In support of his contention, he placed reliance upon the
decision of Hon’ble Supreme Court in the case of Steel Authority of India
Ltd. v. Union of India.15
60.​He further submitted that the defence of prior use under Section 34
presupposes an independent adoption and use of the mark, whereas a
defence founded on permissive user proceeds on the basis of an
acknowledgement that the use of the mark in question originates from the
authority of the proprietor of such mark. He therefore submitted that once
15
(2006) 12 SCC 233.
40
Vaibhav
6-IA-345-2026
Defendant No. 1 had admitted that its use of HAMON commenced pursuant
to the consent of HCI, Defendant No. 1 was estopped from asserting that
such use simultaneously constituted independent proprietary use. In support
of this contention, Mr. Dwarkadas placed reliance upon the decisions of
Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee v. Regal
Footwear,16 Nextech Sensors & Controls v. Omicron Sensing Pvt. Ltd.,17
Kores (India) Ltd. v. Whale Stationary Products Ltd.18 and Louis Vuitton
Malletier v. Mrs. Sharmila Lalit Vyas & Anr.19
61.​Mr. Dwarkadas, then in dealing with the contentions advanced in respect of
the Transfer Agreement and Confirmatory Deed, reiterated that the
expression “all IP Rights” in the Transfer Agreement was comprehensive
and admits no exclusion. He submitted that the absence of a specific mention
of Indian registrations by number in the Transfer Agreement did not mean
that the Indian trade marks were in any manner excluded from its ambit and
16
Order dated 02.01.2023 in Notice of Motion No. 516 of 2017 at Bombay High Court.
17
Order dated 25.07.2025 in IA(L)/6056/2025 at Bombay High Court.
18
Reported in 2008(3) Mh. L. J. 523.
19
Order dated. 24.02.2023 in IA(L)/1684/2022 at Bombay High Court.
41
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6-IA-345-2026
scope since Clause 1.1.1.1 of the Transfer Agreement specifically provided
that “The entire portfolio of brands held by HCI”.
62.​He then, in dealing with the submissions made regarding the Confirmatory
Deed, reiterated that the Plaintiff had already been recorded as the
subsequent proprietor of “Trade Mark No. 1836422”
and that the Registrar had therefore acted on the basis of the Confirmatory
Deed without insisting on any additional documents. He submitted that this
fact alone evidenced the validity of the Plaintiff’s title to the HAMON
Marks.
63.​He submitted that Defendant No. 1 had sought to cast unwarranted doubt on
the Confirmatory Deed by relying on the reference to the “Private Deed
dated 1st June 2022” contained therein and contending that the same had not
been produced. He submitted that the reference in the Confirmatory Deed to
a Private Deed dated 1st June 2022 was only to the Transfer Agreement dated
25th July 2022, which, by Clause 6, was deemed effective from 1st June 2022,
42
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6-IA-345-2026
and that no separate Private Deed existed. He submitted that the expression
“Private Deed” was used merely to indicate that the Transfer Agreement was
not a public document and to signify its effective date.
64.​He also pointed out that the Confirmatory Deed had been duly stamped in
India and that, out of the total IP rights consideration of €1,100,001, an
amount of €9,998 was allocated towards the Indian trade marks solely for
stamp duty purposes. He submitted that the stamp duty so paid had been
accepted by the competent authorities. He also then pointed out that
the Transfer Agreement was executed by all three Belgian Court-appointed
Trustees/Curators of HCI, including Mr. Xavier Ibarrondo, who had
executed the Confirmatory Deed as sole Curator on behalf of all three
Trustees. He therefore submitted that Defendant No. 1’s attempt to
manufacture an inconsistency in the Plaintiff’s chain of title by doubting the
Confirmatory Deed was wholly misconceived and liable to be rejected.
65.​Mr. Dwarkadas then pointed out from the tender documents and the material
reproduced on Defendant No. 1’s website (Exhibit N) that Defendant No. 1
43
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6-IA-345-2026
had also misrepresented the commercial lineage and technical credentials of
the Plaintiff and HCI in ongoing tenders. He pointed out that Defendant No.
1 had been projecting the credentials and experience of HCI and the Hamon
Group as those of Defendant No. 1. He submitted that such technical
credentials and commercial lineage formed an integral part of the goodwill
and reputation associated with the HAMON Marks, which now stood vested
in the Plaintiff.
66.​Mr. Dwarkadas then submitted that the present case goes far beyond a mere
similarity of marks. He submitted that Defendant No. 1 was actively and
affirmatively representing a continuity of source, identity and corporate
lineage that no longer existed. Such conduct, he submitted, was plainly to
deceive and mislead customers and members of the trade into believing that
Defendant No. 1 continued to be associated with, or form part of, the
HAMON group. He submitted that such conduct would cause continued and
irreversible injury to the Plaintiff’s reputation and goodwill.
44
Vaibhav
6-IA-345-2026
67.​Mr. Dwarkadas reiterated that any inconvenience now claimed by the
Defendant No. 1 was entirely self-created. He submitted that Defendant No.
1 was well aware, at least since September 2022, that all the intellectual
property rights in the HAMON Marks had been separated from Defendant
No. 1 and vested in the Plaintiff. Despite this, he submitted that Defendant
No. 1 had consciously chosen to continue using the marks and to hold itself
out as connected with the HAMON group. He therefore submitted that it was
not open to Defendant No. 1 to invoke considerations of hardship or balance
of convenience arising from circumstances brought about by its own wilful
and deliberate conduct.
68.​Finally, he submitted that a Court exercising equitable jurisdiction ought not
to aid and protect a party who has wilfully and knowingly acted in a manner
which was violative of the Plaintiff’s proprietary and statutory rights. He
thus submitted that the balance of convenience was overwhelmingly in
favour of the Plaintiff and in protecting the statutory and proprietary rights
45
Vaibhav
6-IA-345-2026
of the registered proprietor rather than permitting the continued unauthorised
use of the HAMON Marks by Defendant No. 1.
69.​Mr. Dwarkadas submitted that even the plea of acquiescence was
misconceived and unsustainable. He submitted that the use of the HAMON
Mark and trade name by Defendant No. 1 from the year 1999 was under a
common law licence/permitted use by the Plaintiff’s predecessor and,
therefore, such use inured to the benefit of the Plaintiff’s predecessor and,
consequently, the Plaintiff. He submitted that the defence of acquiescence
had no applicability in the facts of the present case and also that it was well
settled that to establish acquiescence, Defendant No. 1 must show a positive
act on the part of the Plaintiff that encouraged or induced Defendant No. 1 to
use the impugned marks, which he submitted that Defendant No. 1 had
failed to do. In support of this contention, he placed reliance on the
judgement of the Hon’ble Supreme Court in Power Control Appliances v.
Sumeet Machines.20
20
1994 2 SCC 448.
46
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Reasons and Conclusions:
70.​ After considering the rival contentions, the case law upon which reliance
has been placed, and the material before me, I find that the Plaintiff has
made out a prima facie case for the grant of interim relief.
A.​It is well settled that, when deciding an interlocutory application, the Court
is not required to conduct a mini trial or finally decide disputed questions of
either fact or law. The enquiry at this stage is confined to a prima facie
assessment based on the material before the Court. It is on the basis of this
material as a whole, that the Court is required to arrive at a determination
after taking into consideration the well-established principles to be
considered, i.e., prima facie case, balance of convenience and irreparable
loss, harm and injury. As held in a catena of cases, the Court at the interim
stage is not required to and, in fact, cannot decide questions which require a
detailed examination of the parties’ respective rights, appreciation of
evidence, or final determination of disputed questions. These are all matters
for trial that cannot be conclusively determined at the interlocutory stage. In
47
Vaibhav
6-IA-345-2026
the facts of the present case, in my view, not only has the Plaintiff made out
a strong prima facie case for the grant of interim relief, but I must also note
that Defendant No. 1 would not be entitled to any equitable relief, both on
account of its conduct and the stand taken by it in the pleadings, as I shall
deal with subsequently.
B.​ In my view, there can be little doubt that the Plaintiff has made out a prima
facie case that the Plaintiff is the registered proprietor of the HAMON
Marks. This, in my view, is plainly evident from (i) the Deed of Assignment
dated 15th September 1999 by which ENGETRA assigned the HAMON
Mark to HCI, which is not disputed; (ii) the Transfer Agreement which
leaves no manner of doubt that all the HAMON Marks stood transferred to
and vested in the Plaintiff as is plainly evident from Clause 1.1.1.1 of the
Transfer Agreement, which records that the entire portfolio of brands held
by HCI, including all brand names and trade names attached to the Hamon
brands, stood transferred to the Plaintiff. Clause 3 exhaustively enumerates
the assets excluded from the transfer from which the Indian HAMON Marks
48
Vaibhav
6-IA-345-2026
are absent; (iii) the orders sanctioning the sale/transfer of HCI’s assets to
CMI France, which is undisputedly part of the John Cockerill Group of
Companies; (iv) the Confirmatory Deed dated 18th April 2024 by which the
transfer was confirmed; and (v) most crucially, the fact that the name of the
Plaintiff has been entered in the Register of Trade Marks as the proprietor in
respect of Trade Mark No. 1836422.
C.​ Furthermore, and importantly, the fact that Defendant No. 1 had no
independent right to use the HAMON name and marks is supported by the
fact that the Plaintiff paid an additional sum of €500,000 to the Trustees of
HCI specifically to enable the former Hamon group companies, which were
not acquired by the Plaintiff, to complete their ongoing projects under the
HAMON name. This is plainly evident from a reading of Clauses 1.1.1.2
and 6 of the Transfer Agreement as well as from the SSA, which was
confined solely to the sale of shares held by Hamon (Netherlands) B.V. in
Defendant No. 1. In my prima facie view, these facts lend considerable
support to the Plaintiff’s case that the worldwide rights in the HAMON
49
Vaibhav
6-IA-345-2026
portfolio of trade marks, including the Indian registrations, stood transferred
to the Plaintiff and the very fact that separate consideration was paid to
secure only a limited “Brand Usage Right” for the purpose of completing
ongoing projects makes implicit the fact that the former Hamon group
companies, including Defendant No. 1, did not possess any independent or
proprietary right in the HAMON Marks. Thus, the reliance placed by
Defendant No. 1 upon Mrs. Bacha F. Guzdar is of no assistance to the
present facts of the case.
D.​Also, the mere fact that the name of HCI continues to appear on the Register
in respect of the remaining HAMON Marks would not, in my view, in the
facts of the present case, in any manner, disentitle the Plaintiff from suing
for infringement and passing off or negate the existence of a valid
assignment in favour of the Plaintiff. It is now well settled that an
assignment of a trade mark is complete and effective inter partes upon
execution of the instrument of assignment and does not require recordal on
the Register as a condition precedent to its validity or enforceability. In this
50
Vaibhav
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context, the Plaintiff’s reliance upon the decision of this Court in Skol
Breweries Ltd., and J.K. Jain & Ors, which hold that non-recordal of an
assignment or delay in recording the assignee’s name on the Register would
not disentitle an assignee from instituting or maintaining an infringement
action, in my view, squarely apply to the facts of the present case. In these
circumstances, Defendant No. 1’s reliance on the decision of Electronica
India Ltd. is also of no assistance.
E.​ The decision in Cott Beverage would not assist the Defendants since the
facts of that case were entirely distinguishable. Furthermore, that decision
does not hold that an assignee is precluded from maintaining infringement
proceedings pending the recordal of the assignment before the Registrar.
Thus, for the reasons set out in (B) and (D), I am unable to therefore accept
that the Plaintiff cannot be treated as the registered proprietor of the
HAMON Marks or that the Plaintiff would be disentitled from maintaining a
claim for infringement and/or passing off.
51
Vaibhav
6-IA-345-2026
F.​ Also, the contention that the Plaintiff would be disentitled to interim relief
on the ground that the Plaintiff has not produced the “Private Deed” is, in
my view, wholly untenable for two reasons. Firstly, the name of the Plaintiff
has already, on the basis of the Confirmatory Deed, been entered in the
Register of Trade Marks in respect of “Trade Mark No. 1836422”. Secondly,
I am prima facie satisfied that the “Private Deed” referred to in the
Confirmatory Deed is nothing but the Transfer Agreement. I say so because,
immediately after inspection, the Plaintiff clarified in writing that the
reference in the Confirmatory Deed to the “Private Deed dated 1st June
2022” was in fact a reference to the Transfer Agreement dated 25th July
2022, which, by Clause 6 thereof, became effective from 1st June 2022, and
further furnished inspection of all the relevant documents. There is,
therefore, prima facie, no material to suggest that any separate Private Deed
exists.
G.​Additionally, and in my view crucially, Defendant No. 1 is admittedly not
the assignor of the HAMON Marks, nor does Defendant No. 1 claim any
52
Vaibhav
6-IA-345-2026
title to the registered HAMON Marks by virtue of any assignment,
transmission or other conveyance executed by HCI in its favour. The
defence of Defendant No. 1 is founded principally on the alleged
long-standing use of the mark, its association with the Hamon group, and the
rights asserted as a prior or independent user. Also, as already noted, it is not
in dispute that HCI, i.e., the assignor of the HAMON Marks to the Plaintiff,
has not challenged either the Transfer Agreement or the Confirmatory Deed.
In this context, the Plaintiff’s reliance upon the decision in the case of
Parksons Cartamundi (P) Ltd. in support of the contention that a third party
who is neither the assignor nor a competing assignee cannot impeach the
validity of the assignment is entirely apposite.
H.​Conversely, the material upon which reliance has been placed by the
Plaintiff in particular, the email dated 16th June 2025 of Mr. Bernard
Vanham, one of the Trustees of HCI, unequivocally confirms that the
Plaintiff is the sole legal owner of the HAMON brand and the worldwide
intellectual property rights in the HAMON Marks. I prima facie find that
53
Vaibhav
6-IA-345-2026
this therefore supports the Plaintiff’s case of a valid assignment in respect of
all the intellectual property rights in the HAMON Marks in favour of the
Plaintiff by HCI. Hence, in my view, in the present case, the assignor itself,
acting through its duly appointed Trustees, has expressly confirmed that the
Plaintiff is the sole legal owner of the HAMON brand and the worldwide
intellectual property rights in the HAMON Marks. Also, and in my view
crucially, there is no competing claim or denial of the Plaintiff’s title to the
HAMON marks.
I.​ I am also unable to uphold the objections raised by Defendant No. 1
regarding the stamping and the alleged non-compliance with the provisions
of Section 42 of the Trade Marks Act. Clause 1.1 of the Transfer Agreement,
as already noted, clearly provides for the transfer of “all IP Rights” without
any restriction or severance of goodwill. Also, an assignment without
goodwill must be express and specific. In the present case, there is no such
exclusion in the Transfer Agreement. The Confirmatory Deed also
specifically confirms the transfer of “ownership of the trade marks as well as
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6-IA-345-2026
the related goodwill”. Therefore, in the absence of express severance of the
goodwill, the assignment of the HAMON Marks clearly includes the
attendant goodwill.
J.​ It is also crucial to note that Defendant No. 1 has, in justification of its use of
the impugned marks, taken a contrary and, in my view, self-defeating stand.
Defendant No. 1 has, on the one hand, invoked the provisions of Section 34
of the Trade Marks Act, claiming to be an independent prior user of the
HAMON mark since 1999. On the other hand, Defendant No. 1 has asserted
that the use of HAMON was “with the implied or express consent” of HCI,
as pleaded by Defendant No. 1, in the Reply Affidavit21 and Affidavit in
Sur-Rejoinder.22 Thus, it is the pleaded case of Defendant No. 1 that its use
of the HAMON Mark was with the consent of HCI.
K.​Therefore, the defence under Section 34 would not apply, since the
protection afforded thereunder applies only to a party that has independently
adopted and used the mark in question and not to a permitted user. Hence the
21
Paragraph 14(i) at page 30 and paragraph 14(iv) at page 32.
22
Paragraph 31 at page 461, paragraph 41 at page 468 and paragraph 49 at page 478.
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6-IA-345-2026
Plaintiff’s reliance upon the decisions in case of Abdul Rasul Nurallah
Virjee and Jalalluddin Nurallah Virjee v. Regal Footwear, Nextech
Sensors & Controls v. Omicron Sensing Pvt. Ltd., Kores (India) Ltd. v.
Whale Stationary Products Ltd, Steel Authority of India Ltd. v. Union of
India and Louis Vuitton Malletier v. Mrs. Sharmila Lalit Vyas & Anr.,
would squarely apply.
L.​ Furthermore, the Defendant No. 1’s conduct also undermines the claim of
independent use since Defendant No. 1 has admittedly, in August 2022 and
in January 2024, filed trade mark applications for “HAMON COOLING”
and “HCS HAMON COOLING” on a “proposed to be used” basis. A party
asserting continuous independent use of a mark since 1999 does not, a
quarter century later, solemnly declare before a statutory authority that the
mark is “proposed to be used”. In my view, this alone establishes the
patently dishonest conduct on the part of Defendant No. 1 in attempting to
usurp a mark over which Defendant No. 1 was fully aware it had absolutely
no independent legal right.
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6-IA-345-2026M.​In my view, the explanation of Defendant No. 1 that the applications filed
for “HAMON COOLING” and “HCS HAMON COOLING” relate only to
composite or device marks and not to the “core” HAMON Mark does not
diminish the significance of the applications themselves. Equally significant
is the Examination Report dated 31st January 2023, issued by the Registrar,
which cited the Plaintiff’s HAMON registration as a conflicting mark. In
response, by its Reply dated 6th February 2023, Defendant No. 1 sought to
distinguish the mark “HAMON COOLING” from “HAMON” but
significantly did not assert any prior proprietary right in, or independent
ownership of, the HAMON Marks. The contemporaneous conduct of
Defendant No. 1, viewed as a whole, is difficult to reconcile. On the one
hand, Defendant No. 1 traces its permissive use of the HAMON Marks to
HCI and relies upon its long-standing association with the Hamon group. On
the other hand, Defendant No. 1 has filed trade mark applications on a
proposed-to-be-used basis and had, before the Trade Marks Registry
attempted to distinguish its marks, i.e., “HAMON COOLING” and “HCS
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6-IA-345-2026HAMON COOLING”, from the HAMON Marks rather than asserting any
independent proprietary rights in the impugned marks. Such conduct itself
speaks volumes, not only of the lack of any bona fides on the part of
Defendant No. 1 but also of any right that Defendant No. 1 has in the
impugned marks, much less any long-standing, independent proprietary
rights claimed in the HAMON Marks.
N.​I also find much merit in the Plaintiff’s claim for passing off and the
Plaintiff’s reliance upon the decisions in Patton International and Velcro
Industries B.V. The HAMON Marks have been in use in India since 1988 at
the very latest, and the user claim for the word mark dates to 1963.
Therefore, the goodwill and reputation associated with these marks now vest
in the Plaintiff by virtue of the Transfer Agreement. By their own admission,
the Defendant No. 1’s use of the marks was derivative, so it is not open for
Defendant No. 1 to claim that any goodwill built up by use of the HAMON
Mark is an independent proprietary asset of Defendant No. 1. It is well
settled that the benefit of goodwill in a trade mark which is used by consent
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6-IA-345-2026of the proprietor would inure for the benefit of the proprietor and not for the
benefit of the user. Having due regard to the statutory recognition accorded
to the concepts of permitted use and registered user under Sections 48 and
49 of the Trade Marks Act, the same principle would equally apply, even in
cases of unregistered or informal permitted use where the user traces its right
to use the mark back to the consent of the proprietor. Accordingly, the
reliance placed by Defendant No. 1 upon the decisions in American Home
Products and Gujarat Bottling is misplaced, since the present case does not
concern the validity of a registered user arrangement or the extent of quality
control exercised by the proprietor.
O.​The Plaintiff has also placed on record material which sets out actual
instances of confusion arising from the Defendant No. 1’s use of the
impugned marks. Although Defendant No. 1 has sought to characterise the
emails on which the Plaintiff relied as “stray” or “isolated” instances, the
fact remains that confusion exists. The Plaintiff has, prima facie, sufficiently
established that the continued use by Defendant No. 1 of the impugned
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6-IA-345-2026HAMON Marks has resulted in actual confusion amongst persons in the
trade as to the source, affiliation and authority under which Defendant No. 1
is operating, thereby giving rise to a real likelihood of injury to the goodwill
and reputation now vested in the Plaintiff. Hence, in my view, the Plaintiff
has made out a prima facie case of passing off.
P.​ I also find no merit in the contention of Defendant No. 1 that the Plaintiff is
disentitled to relief on the grounds of acquiescence and delay. Prima facie,
the Plaintiff’s submission that there can be no acquiescence in respect of the
acts of its licensee or permitted user merits acceptance. Further, as held by
the Hon’ble Supreme Court in Power Control Appliances v. Sumeet
Machines Pvt. Ltd., acquiescence requires a positive act or conduct on the
part of the proprietor which induces or encourages the party taking the
defence of acquiescence to independently use the infringing mark. In the
present case, Defendant No. 1 has not pointed to any such positive act or
conduct by HCI or the Plaintiff. On the contrary, the material on record
indicates that upon discovering Defendant No. 1’s continued use of the
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6-IA-345-2026HAMON Mark, the Plaintiff promptly issued a cease and desist notice in
April 2024. Significantly, Defendant No. 1 did not even respond to the said
notice. The period between the execution of the Transfer Agreement in
June/July 2022 and the institution of the present Suit in 2025 is, in any
event, well within the five-year period contemplated under Section 33 of the
Trade Marks Act. More importantly, the question of acquiescence does not
arise because the Defendant’s prior use was admittedly permissive in nature.
In the present facts, I find that decisions in Willmott v. Barber and Northern
& Shell plc v. Condé Nast & Anr. upon which reliance was placed by
Defendant No. 1, would not apply since the facts in those cases were
materially different.
Q.​In the present case, the Plaintiff is the registered proprietor of marks the
registration of which dates back to 1963. The Defendants are, on their own
admitted case, derivative users whose authority to use the marks has expired.
The balance clearly favours the Plaintiff, and even considering if the
injunction is refused, the Plaintiff, in fact, will continue to suffer its marks
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6-IA-345-2026being exploited by a former permitted user who is actively projecting
continuity of corporate identity and lineage to which it has no entitlement
whatsoever. The balance of convenience, therefore, overwhelmingly favours
the Plaintiff. Hence, the Plaintiffs reliance upon the decisions in Poddar
Tyres Ltd. v. Bedrock Sales Corporation Ltd., and Wearwell Cycle Co.
(India) Ltd. v. Wearwell Industries, in the facts of the present case, is
entirely apposite.
R.​ In my unhesitating view, even assuming any inconvenience is caused to
Defendant No. 1, such inconvenience would be a result of Defendant No. 1’s
own creation. Defendant No. 1 has chosen to use a mark and bid for projects
after the expiry of the limited brand usage rights, despite the fact that
Defendant No. 1 had absolutely no right, title or interest in the HAMON
Mark after the expiry of the limited “Brand Usage Right”. Defendant No. 1
has also, despite having received the cease and desist notice, continued to
use the HAMON Mark and has continued to do so even after the application
filed by Defendant No. 1 for the mark “HAMON COOLING” was rejected
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and subsequently proceeded to file fresh applications for “HAMON
COOLING” and “HCS HAMON COOLING” on a proposed-to-be-used
basis. Having done so, Defendant No. 1 cannot now contend that the projects
it is executing would be affected. I must note that some of the projects that
Defendant No. 1 is executing are public projects. Hence in my view, it is
imperative to grant an injunction so that Defendant No. 1 does not continue
to misrepresent itself and secure public projects on the basis of a reputation
and goodwill which it plainly lacks. In my view, therefore, it would in fact
be in the larger public interest to shield the public and public authorities
from Defendant No. 1’s misuse of the HAMON Mark.
71.​Hence, for the aforesaid reasons, I pass the following Order:
i. The captioned Interim Application is allowed in terms of prayer clauses
(a) and (b).
ii. There shall be no orders as to costs.
​ ​ ​ ​ ​ ​ ​ ​ [ARIF S. DOCTOR, J.]
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After pronouncement:
72.​ Learned counsel for the Defendant sought a stay of the Order for a period of
four weeks. This was opposed by Mr. Kamod. However, Mr. Kamod
submitted that the Order shall not be acted upon by the Applicant for a
period of three weeks from today. His statement is accepted.
​
[ARIF S. DOCTOR, J.]
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