The Supreme Court has restrained Vijay Munjal-led Hero Ecotech from using tradename ‘Hero’ for bicycles and bicycle components in India.
Refusing to go into the merits of the case as that ‘may prejudice either of the parties in the suit before the trial court’, a bench headed by Justice Ranjan Gogoi set aside the Patna High Court’s order and restored the injunction order granted by the trial court in September 2014.
While allowing Om Prakash Munjal-led Hero Cycles’s appeal, it considered the relevant clauses of the Agreement of May 20, 2010 as well as the Business Realignment Agreement of January 31, 2010 and said: “The Patna HC fell into error in interfering with the order of the trial court.”
The Patna district court had in an interim order held that Hero Cycles has exclusive usership rights over trademark and trade name ‘HERO’ and had restrained Hero Ecotech from “infringing the exclusive rights of Hero Cycles in the trademark and trade name ‘HERO’ with or without prefix or suffix for bicycles, tricycles or their parts in India. However, the Patna HC in July last year had reversed the trial court’s order.
Hero Cycles had submitted that Hero Ecotech are not only using trade name ‘HERO’ in contra- distinction, not only in package but also in the body of the bicycle. It alleged that the brand name ‘HERO’ is also being used in the advertisement.
Hero Cycles argued that in terms of the agreement, Hero Ecotech are not authorised to print name of ‘HERO KROSS’ which creates deception in the mind of purchasers thinking about some connection with the original Hero company.
Hero Ecotech, however, submitted that it was manufacturing cycle with trade name ‘KROSS’ not using ‘HERO’ either as prefix or suffix but are printing name of the Company as ‘Hero Ecotech’ which is the name of the company engaged in manufacturing bicycle is no way violation of agreement. It said that that there is stipulation in the agreement prohibiting the use of the trade name, there is no inhibition to use the name of the company in the product and both the trade marks and monogram are quite different and distinct do not have any resemblance from any angle so as to create deception in the mind of purchasers.
Incorporated in 1956, Hero Cycles is one of the largest cycle manufacturers in the world. The OP Munjal – Hero Cycle group companies include cycle giant Hero Cycles Limited, auto parts manufacturing companies — Hero Motors Limited, ZF Hero Chassis Systems Private Limited, and Munjal Kiriu Industries Private Limited, hospitality arm Munjal Hospitality and luxury home decor products company Oma Living.
In the statement, Hero Cycles said: “The trade community is warned not to deal or trade in or sell or offer for sale or advertise such products under trademark or trade name ‘HERO’ with or without any prefix or suffix except those that originate from or are sold by or under authorisation from Hero Cycles Limited.
The trade community is further warned, not to have dealings with any company using HERO as part of trade name or corporate name with or without any prefix or suffix for sale and purchase of bicycle and bicycle component in India as the same would amount to violation of the order of the Honorable Supreme Court dated August 31, 2016 and provisions of the Trademarks Act 1999.”