The law of passing off under Section 27(2) of the Trade Marks Act, 1999 protects the goodwill and reputation associated with marks that have acquired distinctiveness through use, irrespective of registration. Indian courts have consistently recognised that in disputes involving competing claims to a mark, the question of prior use assumes considerable importance. At the same time, courts also examine the credibility of the material relied upon by the parties, especially at the stage of interim relief.
In Hi Tech Arai Pvt. Ltd. vs Paul Components Pvt. Ltd. & Ors. [I.A. 25235/2023], the Delhi High Court considered rival claims over the mark “HTA”, and related trade dress used in relation to oil seals and rubber products. The dispute primarily concerned allegations of passing off, prior use, and the evidentiary value of documents relied upon by both sides in support of their respective claims.
At the outset, the Court also compared the marks and packaging used by both sides. The Court further observed that the inner and outer packaging/trade dress used by the parties appeared almost identical, with similar concentric ring logos, and that the products were being sold through identical trade channels.
The plaintiff, Hi Tech Arai Pvt. Ltd. (“HTA”), stated that it was incorporated in 1985 as Hi-Tech Ancillaries Pvt. Ltd. and adopted the mark “HTA” from the initials of its corporate name. According to the plaintiff, following collaborations with Japanese entities, it also adopted the marks “ARS-HTA” or and concentric circle logos, and in relation to sealing products and allied goods. The plaintiff further stated that it had built substantial business operations over the years and supplied products to several original equipment manufacturers in the automobile sector.
To support its claim of prior and continuous use, the plaintiff relied on a range of documents, including Chartered Accountant certificates relating to sales figures, purchase orders, inspection reports, invoices, technical drawings bearing references such as “HTA 1014” and “HTA 1090”, mould manufacturing invoices dating back to 1986, product catalogues, packaging materials, advertisements, and price lists issued to distributors and customers. The plaintiff contended that these documents demonstrated continuous use of the “HTA” mark and related logos since 1985 and 1997, respectively.
The defendants, Paul Components Pvt. Ltd. and its director, on the other hand, claimed adoption and use of the mark “HTA” since 1977 through a predecessor business. According to the defendants, the mark had been continuously used in relation to oil seals and rubber products and was also protected by trademark registrations, the earliest of which dated back to 2007. The defendants relied upon trademark registrations, invoices, photographs of trade fairs, brochures, price lists, and other business records to support their claim of prior use.
Notably, the Court recorded that the defendants’ first application for the mark “HTA”, filed in 2007, claimed use from May 4, 1994. Two subsequent applications filed in 2019 also claimed use from May 4, 1994. However, in a later application filed in November 2022, the claimed user date was changed to January 25, 1977. The Court noted that no explanation had been provided for this change in the claimed user date.
The defendants also argued that the plaintiff’s documents merely reflected the use of “HTA” as part numbers or vendor codes and not as trademarks indicating trade origin. Reliance was also placed on an earlier interim order passed in separate proceedings initiated by the defendants against the plaintiff, wherein an injunction had initially been granted in favour of the defendants. However, the plaintiff pointed out that the said order had subsequently been stayed by a Division Bench of the Delhi High Court. The Court also noted that the Division Bench had clarified, by order dated April 16, 2025, that the present suit and the applications would proceed on merits despite the pending appeal.
The Court observed that a passing off action is maintainable even against a registered proprietor where prior and bona fide use is established by another party. In this context, the Court referred to the decisions of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai and Cadila Health Care v. Cadila Pharmaceuticals regarding the principles governing passing off actions and the relevance of prior use.
On examination of the material placed on record, the Court held that the plaintiff had, at the prima facie stage, produced sufficient material to demonstrate use of the “HTA” mark since 1985 and use of the concentric circle logos since 1997. The Court observed that the documents relied upon by the plaintiff, including invoices, technical drawings, mould manufacturing records, and packaging material, indicated use of the mark in a commercial context. The Court also rejected the defendants’ contention that the references to “HTA” in the plaintiff’s records merely constituted vendor codes or part numbers, noting that use on invoices and business papers could constitute trademark use under the Trademarks Act. The Court also took note of the plaintiff’s sales figures and market presence while assessing goodwill.
The Court also examined the defendants’ evidence relating to prior use. Certain photographs and brochures relied upon by the defendants in connected proceedings were scrutinised in light of material produced by the plaintiff from archived website records and other sources. The Court noted various inconsistencies among the photographs, brochures, trade fair references, and user claims in the trademark applications. The Court further observed that the defendants’ trademark applications initially claimed use from 1994, whereas a later application claimed use from 1977, without any detailed explanation for the change in user claim.In addition, the Court took note of the defendants’ applications relating to marks such as “ARS” and “ARAI”, which, according to the plaintiff, were associated with a Japanese entity that had licensed rights to the plaintiff. The Court observed that the defendants had not provided supporting material explaining the basis for adopting those marks.
Having considered the material on record, the Court held that the plaintiff had established a prima facie case for the grant of interim protection in the passing off action. The Court also observed that the competing packaging, logos, and trade dress used by the parties appeared substantially similar in relation to identical goods sold through overlapping trade channels. Accordingly, the Court granted an interim injunction restraining the defendants from using the “HTA” mark, the disputed logos, and trade dress that were found to be deceptively similar to those of the plaintiff, pending final adjudication of the suit. The Court also recorded that the balance of convenience lay in favour of the plaintiff and that irreparable harm would be caused not only to the plaintiff but also to the public if interim protection was not granted.
The decision is significant for its discussion of the interplay between prior use and trademark registration in passing-off actions. It also highlights the importance of contemporary commercial records, consistency in user claims, and the evidentiary scrutiny undertaken by courts at the interim stage. The judgment restates that while registration is an important statutory right, claims relating to goodwill, reputation, and prior use continue to play a central role in trademark disputes involving passing off and trade dress similarity.
Authors: Manisha Singh and Kratika Patel