India: Delhi High Court Dismisses Suit Against Modi Hitech India Limited

Last Updated: 6 June 2018
Article by S.S. Rana & Co. Advocates

Recently, on April 02, 2018, the Delhi High Court in the case of Superon Schweisstechnik India v. Modi Hitech India Limited, held that a claim of passing off or infringement could not be entertained as there was no deceptive similarity between the two products at hand. In the said case, a suit was filed by Superon Schweisstechnik India Limited (hereinafter referred to as the 'Plaintiff') for permanent injunction and related reliefs against Modi Hitech India Limited (hereinafter referred to as the 'Defendant') for infringement and passing off of the Plaintiff's mark VAC-PAC and SUPERON.

Brief Background

  • In the above case, the Plaintiff is engaged in the manufacturing of conventional welding electrodes and is in the business of repair and reclamation of welding electrodes.
  • The Plaintiffs got engaged in a manufacturing business with Kjellberg Finsterwalde, Germany and, also got engaged in manufacturing of fire suppression systems coatings, fire barriers, etc and various other products.
  • Accordingly, it has given its year wise details of sales from year 2004-2005 to the year 2016-2017. Its sales in the year 2004-2005 were said to be INR 1,76,31,937 (26,44,064 USD approx.) and in the year 2016-2017, the sales became INR 3,13,14,84,815 (4,69,59,370 USD approx.).


  • Whether the Plaintiff's claim that the Defendant used the word VAC-PAC and SUPERON infringed the Plaintiff's work?

Contentions by the Plaintiff

  • The Plaintiffs claimed that its trademark SUPERON is Well-Known under which it sells its goods, and along with this trademark it also claims to have adopted the trademark VACPAC from the year 2004.
  • Further, the trademark VAC-PAC is said to have been coined, conceived and adopted by them with respect to its products and, is arbitrary and fanciful as per them and, hence entitled to high degree of protection.
  • Plaintiffs claimed to be the owner and proprietor of the artistic work which is involved in the trademark VAC-PAC along with certain other features contained in the label on account of prior adoption and, continuous use. They also claim to be using the trademark in a distinctive and unique manner, with their own set up and lettering style, etc.
  • Through further claims, they are found to be exporting the goods under the trademark VAC-PAC in about 70 countries.
  • The Plaintiff also pleaded that the Defendant had dishonestly adopted an identical trademark VAC- PAC for welding electrodes, which was sold by them and this adoption of the trademark VAC-PAC by the Defendants is completely dishonest.

Contentions by the Defendant

  • The Defendant prayed for dismissing of the commercial suit on the ground that the Plaintiff has no real prospect of succeeding in terms of the cause of action pleaded in the suit.
  • In support of the argument, the Defendant relied upon the judgement given in the case of Marico Limited (supra) which held that abbreviation of descriptive words cannot and should not be given protection as a trademark.
  • Further, the Defendant argued that whereas ordinary suits which are not commercial suits would require trial if there was a dispute in question of fact, the commercial suits because of the provision of Order XIII – A CPC as added in CPC for commercial suits, allowed the Court to dismiss the suit at once if there is no real prospect of the Plaintiff succeeding in the suit.

Observations by The Hon'ble High Court

  • The Court observed, that the Plaintiff was selling its goods by using two trademarks SUPERON and VAC-PAC, whereas the Defendant was selling its goods by using its trademark GMM/arc while adding VAC-PAC on its packaging.
  • The Plaintiff was using the colour dark yellow while using two other colours blue and black as its colour combination on the main packaging, whereas the Defendant was using the colours blue and white along with red for the words _arc on its packaging which was the part of the trademark GMM/arc, along with the expression _Umesh Modi Group in red colour on its packaging.
  • Also, the Court made two points in the case, firstly the trademark of the Plaintiff had SUPERON in addition to VAC-PAC, whereas the Defendant had GMM/arc in addition to VAC-PAC.
  • This clearly shows that, there is no identity or deceptive similarity between the two and the different trademarks are necessary to distinguish the goods of the Plaintiff to that of the Defendant.
  • Secondly, the packaging of both the Plaintiff and the Defendant, are completely different which could be made out by scanning of both the packaging.

Therefore the Court held that –

  • The present suit is gross abuse of the process of law. And, the Plaintiff has chosen to file the same in spite of the settled law laid down in the case of Marico Limited, which holds that there does not arise any issue of passing off not only because of use of primary trademarks as wordmarks being different of both the parties but also here is a complete difference in get up and packaging of the products of the respective parties, and finally w.r.t disentitlement of any person to claim descriptive wordmarks or their abbreviated forms for their exclusive entitlement in view of provisions of the Trade Marks Act, therefore this suit is dismissed with actual costs.
  • Hence, the Court imposed the costs on the Plaintiff and, in favor of the Defendant by applying Section 35 of Civil Procedural Code, 1908 (herein after referred to as CPC). And, dismissed the suit with costs of INR 50,000 (USD 748 Approx.)
  • According to the Court, there was no provision in CPC for imposition of costs for abuse of process of law because Section 35 CPC is applicable only for awarding costs in favor of the successful party. Therefore, Section 151 CPC will be applied to impose the costs upon the litigant who has abused the process of law and unnecessarily wasted the time of the court.

For further information please contact at S.S Rana & Co. email: or call at (+91- 11 4012 3000). Our website can be accessed at

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

S.S. Rana & Co. Advocates
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions