Hi-Tech Arai’s claim in HTA trademark dispute upheld by Court
The court made out a prima facie case of passing off in favour of A prima facie case of passing off was made out in favour of Hi-Tech Arai.
In the HTA trademark dispute between Hi-Tech Arai and Paul Components, the court found that Hi-Tech Arai had established continuous use of the HTA mark since 1985, supported by credible evidence, while the defendants’ claims of prior use were inconsistent and based on fabricated documents. An interim injunction was granted by the court in favour of Hi-Tech Arai, restricting the defendants from using the disputed marks, trade dress, and packaging. The importance of bona fide use and consequences of dishonest adoption in Indian trademark law is underscored by the decision.
The court’s strict stance against dishonest adoption, fabricated evidence and bad faith in trademark use emerging from the HTA trademark dispute between Hi-Tech Arai and Paul Components is highlighted by the case.
Leading manufacturer and supplier of aluminium die casting products and rubber products, Hi-Tech Arai Private Limited (plaintiff), has used the HTA mark for its goods since incorporation in 1985. The company was renamed Hi-Tech Arai Private Limited in 1993 through its collaboration with Arai Seisakusho Co. Ltd., Japan Due to its successful JV with Arai Seisakusho Co. Ltd. and Mitsubishi Corporation, Japan, the plaintiff adopted the marks ‘Ars-HTA’ and its logo in 1994 and became the exclusive licensee of the trademarks ‘ARS’, ‘ARAI’, and the concentric logo owned by Arai Seisakusho Co. Ltd. in India.
Prior use of the mark HTA since 1977 was claimed by Paul Components Pvt Ltd (defendant number 1). Paul Components Pvt Ltd was already involved in a parallel infringement suit (CS(COMM) 374/2023) wherein the plaintiff had initially been restricted from using the marks ‘HTA’ and ‘ARS-HTA’. But this interim order was stayed by the division bench in August 2023.
The plaintiff filed the present suit in December 2023 seeking a permanent injunction to restrain the defendants from using its trademarks, trade dress, and packaging, and from passing off their goods as those of the plaintiff.
While examining the HTA trademark dispute, Justice Amit Bansal noted that both parties were dealing in identical goods (oil seals and rubber products) and using similar trade dress and packaging, causing a high likelihood of confusion.
The Court found that Hi-Tech Arai had demonstrated continuous use of the mark ‘HTA’ since 1985, supported by credible documents.
By contrast, Paul Components’ claim of prior use was unsupported and inconsistent.
The Court found that the defendants had filed doctored photographs and brochures, replacing their original branding (“Paul Components”) with ‘HTA’ in trade fair images.
References to mobile numbers and event details in the defendants’ “old” brochures revealed chronological impossibilities, further proving manipulation.
Furthermore, the court noted that the defendants adopted identical marks and copied the plaintiff’s trade dress; tried to register the plaintiff’s licensed marks ‘ARS’ and ‘ARAI’; and had filed multiple trademark applications for well-known third-party brands, revealing a systematic pattern of fraudulent trademark filings, and thus demonstrating bad faith and mala fide intent from the very inception.
The court made out a prima facie case of passing off in favour of Hi-Tech Arai. The Court also noted that the balance of convenience lay with the plaintiff, a long-established player with significant market presence and sales. Accordingly, until the final adjudication of the suit, the court granted an interim injunction restraining the defendants, their directors, agents, and distributors from using any deceptively similar marks; using concentric circle logos or trade dress identical to that of the plaintiff; and selling, advertising or exporting goods under the impugned marks or packaging.