Madras High Court Enforces Trademark Injunction With Civil Imprisonment In HUL ‘WHEEL’ Case

Madras High Court Enforces Trademark Injunction With Civil Imprisonment In HUL ‘WHEEL’ Case

Introduction

The Madras High Court has imposed civil imprisonment and ordered attachment of property against the proprietor of Roopa Industries for willful and repeated violation of a subsisting injunction protecting Hindustan Unilever Limited’s well-known “WHEEL” and “ACTIVE WHEEL” trademarks. The Court held that continued use of deceptively similar marks despite judicial restraint amounted to deliberate disobedience warranting action under Order XXXIX Rule 2-A of the Code of Civil Procedure.

Factual Background

Hindustan Unilever Limited (HUL) is the registered proprietor of the trademarks “WHEEL” and “ACTIVE WHEEL” used for detergent products. The dispute arose when Roopa Industries, a Karnataka-based manufacturer, began marketing detergent under the mark “DOUBLE WHALE,” which was later modified to “DOUBLE WHEEL.”

HUL contended that the modified mark was even more confusingly similar to its “ACTIVE WHEEL” branding. In 2020, the Madras High Court passed an interim injunction restraining Roopa Industries from using the impugned mark, which was subsequently made absolute.

Despite the injunction, HUL alleged that Roopa Industries continued manufacturing and selling detergent products under the “DOUBLE WHEEL” mark and even secured trademark registration during the subsistence of the restraint order.

Procedural Background

HUL filed an application under Order XXXIX Rule 2-A CPC seeking action for breach of injunction, praying for attachment of property and civil detention of the proprietor, Satish Honahalli. The application was contested by Roopa Industries on grounds of maintainability, questioning the validity of HUL’s authorisation, verification and power of attorney.

Issues

1. Whether Roopa Industries had willfully disobeyed the injunction granted in favour of HUL.

2. Whether objections regarding authorisation and maintainability could defeat proceedings under Order XXXIX Rule 2-A CPC.

3. Whether the facts warranted attachment of property and civil imprisonment.

Contentions of the Parties

HUL submitted that Roopa Industries had deliberately flouted the injunction by adopting a deceptively similar “DOUBLE WHEEL” label during the period when restraint orders were in force. It argued that securing trademark registration during the injunction period demonstrated conscious defiance of court orders.

Roopa Industries opposed the application, contending that the suit itself was defective due to alleged deficiencies in authorisation and verification. It relied on judgments of the Supreme Court and Karnataka High Court to argue that proceedings founded on an invalid suit could not sustain contempt-like action.

Reasoning and Analysis

Justice N. Senthilkumar rejected the preliminary objections, holding that the scope of proceedings under Order XXXIX Rule 2-A CPC is limited to examining disobedience of injunction orders and not the maintainability of the underlying suit. The Court emphasised that parties bound by an injunction must comply with it unless it is vacated or modified.

Upon examining the record, the Court found that Roopa Industries had “continuously flouted the orders of this Court” by using deceptively similar marks despite a clear prohibition. The Court noted that changing from “DOUBLE WHALE” to “DOUBLE WHEEL” during the injunction period aggravated the violation.

Relying on Order XXXIX Rule 2-A CPC and the Supreme Court’s decision in Anil Panjwani, the Court reiterated that it is empowered to order attachment of property and civil detention where injunctions are willfully breached. The Court observed that repeated violations undermine the authority of judicial orders and necessitate strict enforcement.

Decision

The Madras High Court ordered attachment of the property of Roopa Industries in the pending suit and directed the proprietor, Satish Honahalli, to undergo civil imprisonment for three months. The Court held that the punishment was necessary to uphold the sanctity of judicial injunctions and deter continued infringement.

In this case the appellant was represented by Mr. B. Madhan Babu, Advocate. Meanwhile the respondent was represented by Mr. L. M. Akki, Advocate.