Trademark Law And Commercial Ethics In India: A Study Of Trademark Infringement And Passing Off In The Case Of Ultratech Cement vs. Shiv Cement Co.

Author:  Ishika

Introduction

Trademark law in India has changed drastically in the new economy due to the expansion of e-commerce platforms and online branding. The infringement of registered trademarks has also increased to a great extent, which ultimately weakens the brand’s value and leads to trademark dilution. Despite this, there were 5.4 lakh (540,000) trademark applications witnessed by India in the year 2024, which was globally in the 3rd rank. It is not just a symbol, sign or design but a valuable Intellectual Property asset as it represents goodwill, reputation and commercial identity of businesses.

In most disputes concerning trademark infringement, the main question that arises is whether the defendant’s mark is deceptively similar to that of the plaintiff, likely to cause confusion or deception among consumers. This question is determined under Section 29 of the Trade Marks Act, 1999, as to when a mark shall be deemed to be an infringed one. In Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd (2001) case, it was observed by the Supreme Court that deceptive similarity of trademarks depends on the nature of marks, the degree of resemblance (phonetic and visual), nature of goods and the likelihood among consumers. The Court also said that even a mere possibility of confusion would be sufficient to hold infringement. In the current times, when brands are created not just based on identity but on consumer perception as well, even a small resemblance can cause the distinction between imitation and infringement to become unclear, thereby highlighting the importance of a proper judgment by the court regarding deceptive similarity.

Evolution of Trademark Act, 1999

The Common Law principle of passing off played a significant role in protecting unregistered trademarks. However, it has certain limitations which are as follows:

1. Limited scope of Protection: The principle of passing off does not grant absolute rights over the marks, as it only safeguards the goodwill of brands that have already been built.
2. Straining Evidentiary burden: The Claimant is further required to establish the “classical trinity” – namely, the existence of goodwill or reputation, misrepresentation by the defendant and resulting damage.
3. Requirement of providing confusion and deception:  The claimant must demonstrate the defendant’s conduct consumers and caused harm. In cases where goods and services are unrelated or where reputation is not established in a specific market, the claim may not succeed.

These limitations associated with passing off led to the establishment of the Trademark Act, 1940, marking the beginning of formal trademark protection, which has similar provisions to the UK Trademarks Act of 1938.

However, the act has its own shortcomings, which further led to the enactment of a comprehensive legal framework known as the Trade and Merchandise Marks Act of 1958. This Act replaced the previous 1940 legislation and further consolidated various provisions related to trademarks that were previously scattered across different laws.

For decades, the Act of 1958 served as the cornerstone of trademark regulation in India as it expanded the scope of protection and provided a clear procedure for registration, enforcement and adjudication. However, by the late 20^th Century, with the emergence of new forms of trade and increasing international interactions, the need for reform was highlighted.

With the liberalisation of the Indian economy in the 1990s, the Act of 1999 was enacted with the very objective to comply with the provisions of TRIPS, the most significant milestone in the evolution of the trademark laws in India.

Contemporary Challenges in Trademark Protection

Imagine building a brand over a year only to see its identity diluted by someone using a deceptively similar name, symbol or design. Despite significant revolution, trademark protection faces challenges arising from digital commerce and increasing market competition. The case of UltraTech Cement Limited v. Ultra Traders (2016) emerged as a significant judicial pronouncement in the realm of trademark protection and commercial identity disputes. The controversy centered on the use of the word “Ultra” and the likelihood of confusion arising from its association with the established reputation and goodwill of UltraTech Cement. The case drew considerable attention for addressing concerns relating to brand dilution, misrepresentation, and unfair competition in the marketplace. It also reflected the proactive role of Indian courts in strengthening trademark protection and safeguarding business identity in an increasingly competitive and rapidly evolving commercial environment.

This section underscores a detailed analysis of the case:

• Case: Ultra Tech Cement Ltd. v. Shiv Cement Co.
• Date of Judgement: April 28, 2026.
• Case Type: Commercial IP Suit No. 126 of 2016.
• Bench: Justice Arif S. Doctor.

Background:                

The dispute between the parties arose before the Bombay High Court when the plaintiff (Ultra Tech Cement) discovered the defendant (Shiv Cement Co.) was selling Cement under the impugned trademarks “ULTRA” “ULTRA PLUS 42”, “ULTRA Hi Tech 950” and “ULTRA Uttan 10, and UltraGold 10”. Ultra Tech, being one of India’s largest cement manufacturers, has built extensive goodwill through long-standing use of its trademarks, distinctive packaging, and wide distribution networks.

The plaintiffs approached the High Court seeking a permanent injunction to restrain the Defendant from infringing the Plaintiffs’ registered ‘UltraTech’ trademarks as set out in Exhibit P9 (“UltraTech trademarks”) and from committing the tort of passing off.
that the defendant's conduct amounted to infringement of trademarks. The counsel for the plaintiff, Mr. Kamod further submitted that this court through an ex parte ad interim order dated 1^st August 2016, seized 1102 cement bags from the premises of the defendant through the Court’s receiver report dated 12^th August 2016.

Plaintiff is the registered proprietor of the mark and contended that the defendant’s actions clearly amounted to the violation of Section 29 of the Trade Mark Act, 1999, as the impugned mark used by the defendant is deceptively similar to its registered trademarks and was being used in relation to identical goods, namely “Cement”. Further the counsel for the plaintiff has also submitted that despite service of the writ of summons on 30^th September 2016, the Defendant has neither appeared in person nor through an advocate. In Nov 2013 the plaintiffs came an advertisement of the Defendant’s Mark in Class 19 application No. 2291944 for the Mark “Ultra Cement” for which registration has been applied by the Defendants. However, it has been abandoned due to the non-filing of a counter statement by the Defendant.

The Present suit, being a Commercial Suit is governed by Section 35 of CPC,1908, as amended by Section 16 of the Commercial Courts Act, 2015 also the act of the Defendants were done with the malafide intention to ride upon the goodwill and reputation of the UltraTech trade marks.

Legal Issues Involved:

The case primarily revolved around the following legal issues:

1. Whether Shiv Cement Corporation’s branding constituted infringement of the mark under the Trademark Act, 1999.
2. Whether the defendant’s actions amounted to passing off, thereby misleading the consumers.
3. Whether the plaintiff was entitled to a permanent injunction restraining the defendant from continuing such activities.

Therefore, these issues required the Court to examine not only the similarity between the descriptive mark but also the intent and conduct of the defendant.

Background:

Plaintiff is the registered proprietor of the mark and contended that the defendant’s actions clearly amounted to the violation of Section 29 of the Trade Mark Act, 1999, as the impugned mark used by the defendant is deceptively similar to its registered trademarks and was being used in relation to identical goods, namely “Cement”.

Further the counsel has also submitted that despite service of the writ of summons on 30^th September 2016, the Defendant has neither appeared in person nor through an advocate. In Nov 2013 the plaintiffs came an advertisement of the Defendant’s Mark in Class 19 application No. 2291944 for the Mark “Ultra Cement” for which registration has been applied by the Defendants. However, it has been abandoned due to the non-filing of a counter statement by the Defendant.

The Counsel for the Plaintiffs submitted that the present suit, being a Commercial Suit is governed by Section 35 of CPC,1908, as amended by Section 16 of the Commercial Courts Act, 2015 also the act of the Defendants were, done with the malafide intention to ride upon the goodwill and reputation of the UltraTech trade marks.

Judgement of the Court

The Bombay High Court in the case of UltraTech Cement Ltd. & Anr. v. Shiv Cement Co. dated, 28 April 2026 ruled in favour of Plaintiffs by granting a permanent injunction against trademark infringement. The Court held that the marks were similar to Plaintiff’s mark “UltraTech”, which is continuous since 2003 and had acquired immense goodwill and was recognised as a well-known trademark in India, which has been marked in evidence as Exhibit P20.

The mark used by the Defendants, namely ULTRA PLUS/ ULTRAPLUS CEMENT/ ULTRA HITOUCH/ ULTRA HITOUCH CEMENT BEMISAL MAJBUTI/ and ULTRA POWER as a whole was visually, structurally, and phonetically similar to mark used by Plaintiffs, and it is enough for creating confusion among consumers taking into account kinds of goods and their sale.

The Court further held that the Defendant’s adoption of the impugned marks was deliberate, dishonest and in bad faith giving as it did a ‘free-ride’, upon the goodwill and reputation of the Plaintiff. The Court found the conduct of the defendant’s dishonest and lacks bonofide intention as the defendant avoided regular notices, failed to appear before the Court and continuous use of infringing marks and ordered to pay Rs. 50 lakh as damage and Rs. 16.48 lakh as litigation expenses to plaintiff’s and stated such order was necessary to prevent further injury and dilution to the trademark of Plaintiff.

Conclusion:

The decision in Ultra Tech Cement Ltd. v. Shiv Cement Corporation (2026) ultimately reinforces a central principle of Trade Mark law: that the brand identity once established, is entitled to protection against misuse capable of misleading consumers. The case is not merely about the mark “ULTRA” it is about the reputation, goodwill and consumer trust that UltraTech has built over several years.

Today in highly diverse competitive economy, Trademarks are not just name or symbols but valuable intellectual assets of business identity. The judgment in UltraTech Cement Ltd Anr. vs. Shiv Cement Co. is significant in Indian Trademark law as it strongly protects brand identity from being misused and that may cause confusion to consumers and protect against “dishonest” adoption of deceptively similar marks by warding punitive damages against willful infringers.

Thus, the Court acknowledges the importance of wider public interest in preventing misleading and dishonest commercial practices.

References:

1. https://economictimes.indiatimes.com/industry/indl-goods/svs/cement/ultratech-wins-trademark-battle-bombay-high-court-bars-ultra-branded-rival-cement/articleshow/130728147.cms?from=mdr
2. https://www.indialaw.in/blog/intellectual-property-rights/trademark-infringement-in-ultratech/
3. https://indiankanoon.org/doc/5188085/
4. https://www.verdictum.in/bombay-high-court/2026bhcos11103-ultra-tech-cement-v-shiv-cement-co-1613255

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