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HIGH COURT OF DELHI
JUDGMENT
SANDVIK INTELLECTUAL PROPERTY AB .....Plaintiff
For the Plaintiff : Mr. Urfee Roomi, Ms. Janaki Arun & Mr. Ayush Dixit, Advocates.
For the Defendants : Mr. Neel Mason, Ms. Pragya Jain & Ms. Surabhi Katare, Advocates for D-6.
1. This Application has been filed on behalf of the Plaintiff under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (“CPC”), seeking Pronouncement of Judgment against Defendant No. 1.
2. The Plaintiff has filed the present Suit for a decree of permanent injunction restraining infringement of its Trade Mark, passing off, dilution, damages, rendition of accounts, delivery up, etc.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF:
3. Mr. Urfee Roomi, the learned Counsel for the Plaintiff submitted that the Plaintiff, Sandvik Intellectual Property AB, is an intellectual property holding Company that is organised and existing under the laws of Sweden. The Plaintiff is part of the renowned group of Sandvik Group of Companies (“Plaintiff Group of Companies”).
4. The learned Counsel for the Plaintiff submitted that the Plaintiff Group of Companies was founded in 1862 and is a leading multinational high-tech engineering company specialising in mining and rock excavation, rock processing and metal cutting. The Plaintiff Group of Companies is known for its innovative, digitalised and sustainable engineering solutions that drive industry advancements. The Plaintiff Group of Companies prioritises enhancing customer productivity, promoting sustainability and ensuring safe operations across its business activities.
5. The learned Counsel for the Plaintiff submitted that the Plaintiff utilises various “SANDVIK” Trade Marks (“Plaintiff’s Marks”) in connection with its goods and services. The Mark ‘SANDVIK’ functions as the Plaintiff's House Mark and corporate name and has been in continuous and extensive use on a global scale since 1876. From the inception of its use, the Plaintiff’s Mark has been applied to and is inherently associated with mining, metal cutting, manufacturing, digital manufacturing solutions, tool management solutions, metrology solutions and software, among other offerings. Along with the Word Mark, the Plaintiff has also adopted the
6. Device Marks.
7. The learned Counsel for the Plaintiff submitted that in 2023, the Plaintiff introduced a new logo inspired by its 1962 “SANDVIK” logo, as a homage to the Company's rich history and legacy. The Plaintiff's new brand identity reflects its strategic shift towards integrating hardware, software and digital solutions within the mining, manufacturing and infrastructure industries. This transformation is aimed at enhancing sustainability and productivity for customers on a global scale.
8. The learned Counsel for the Plaintiff submitted that the Plaintiff's Association with India dates back to 1950, following an official invitation from India's first Prime Minister, Pt. Jawahar Lal Nehru, to establish operations in the country. Since then, the Plaintiff has continuously used the Plaintiff’s Marks in India and has significantly expanded its business operations.
9. The learned Counsel for the Plaintiff submitted that to further strengthen its presence in India, the Plaintiff has incorporated subsidiary companies, including Sandvik Coromant India Pvt. Ltd. which was established in 1960 and Sandvik Mining and Rock Technology India Pvt. Ltd. which was established in 2019.
10. Over the years, the Plaintiff has obtained Trade Mark registrations for the Plaintiff’s Marks for its diverse range of goods and services across multiple jurisdictions worldwide. These jurisdictions include, but are not limited to India, the United States of America, the United Kingdom, Australia, the European Union, Canada, New Zealand, Indonesia, France, Malaysia and China. The registrations obtained by the Plaintiff in India are given below:
1. SANDVIK 141520 6 December 9, 1949 Registered
2. SANDVIK 583901 7 November 2, 1992
3. SANDVIK 1510458 6 December 12, 2006
4. SANDVIK 1656741 6, 7, 8, 11, 12, 37, 38 February 21, 2008
5. SANDVIK 1658699 9 February 27, 2008
6. 1673895 6, 7, 8, 9, 11, 12, 37, April 8,
7. SANDVIK IRDI NO. 1, 4, 6, 7, 9, 12, 35, 36, 37, 40, October 29, 2018 Protection Granted
8. IRDI NO. 1, 4, 6, 7, 9, 12, 35, 36, 37, 40, November 9, 2018 Protection Granted
11. The learned Counsel for the Plaintiff submitted that the term “SANDVIK” holds no meaning in English, Hindi, or any Indian language and therefore it is liable to be protected. Over the years, the Plaintiff has experienced substantial growth in revenue due to its provision of services and sale of goods under the Plaintiff’s Marks.
12. The learned Counsel for the Plaintiff submitted that Defendant No. 1 is the proprietor of three entities, namely, Industrial Mining Equipment Zone, Vedanta Dhatu Metal India and Prince Metal Powder Industries. Defendant No. 1, and other person / entities are clandestinely, dishonestly and illegally using the ULTRA SANDVIK and ULTRA SANDVIK Device Marks, and (“Impugned Marks”) on and in relation to rock mining tools, hammers, drills, bits and other tools and equipment.
13. The learned Counsel for the Plaintiff submitted that Defendant No. 1 is carrying out his illegal activities and unauthorizedly using the following email IDs to operate his business, i.e., ultrasandvik12@gmail.com, princemetalpowderindustries@gmail.com and vendantadhatu@gmail.com. Moreover, Defendant No. 1 is also using the following contact numbers for his illegal activities, i.e., +91-9414171899, +91-7426071899 and +91-
8005836997.
14. The learned Counsel for the Plaintiff submitted that the Plaintiff was first alerted by its Indian business about Defendant No. 1 in the second week of July 2024, when the Plaintiff’s customers reported having received the Defendant No. 1’s brochures offering rock mining tools under the Impugned Marks. The Plaintiff’s India business also discovered that the Defendant NO. 1 was visiting the Plaintiff’s offices in India to enquire about the price rates of rock tools sold under the Plaintiff’s Marks. The Plaintiff apprehended that Defendant No. 1 was attempting to determine the competitive market rates of such rock mining tools in order to sell his own goods bearing the Impugned Marks. Immediately, on learning about Defendant No. 1, in July 2024, the Plaintiff’s Indian representative engaged the services of an investigation firm to investigate Defendant No. 1 and use of the Impugned Marks. The investigation revealed that Defendant No. 1 is using the Impugned Marks in a clandestine manner.
15. The learned Counsel for the Plaintiff submitted that Defendant No. 1 was rapidly shifting his bases, and conducting business from different locations, in order to avoid any scrutiny of his activities. The Defendant NO. 1 informed the investigator that he was using the Impugned Marks on and in relation to mining tools, hammers, etc. for the past two to three years. He also disclosed to the investigator that whenever he receives a bulk order for goods bearing the Impugned Marks, he has them manufactured through third-party vendors, and supplies them through an undisclosed location in Nathdwara, Rajasthan and Hyderabad, Telangana to consumers all across India, including consumers in Delhi.
16. A comparison of the Plaintiff’s Marks and the Impugned Marks is as under: S.No. Plaintiff’s Marks Impugned Marks
1. SANDVIK ULTRA SANDVIK
2.
17. The learned Counsel for the Plaintiff submitted that the Impugned Marks are nearly identical / deceptively similar to the Plaintiff's Marks. The Defendant No.1 has merely added the word ULTRA to the Plaintiff’s Mark to arrive at the Impugned Marks, which does not help in differentiating the rival Marks, since the word ULTRA is a laudatory term, and the distinctive and prominent element of the Impugned Marks continues to be the word SANDVIK. Moreover, the device elements in the Impugned Marks do not help differentiate the rival Marks.
18. The learned Counsel for the Plaintiff submitted that Defendant No. 1 is dealing with identical goods for which the Plaintiff uses and enjoys registration for the Plaintiff’s Marks in India. Moreover, the Trade Channels as well as the consumers of the Defendant No. 1 are identical to that of the Plaintiff. It is apparent that the Defendant No. 1 adopted the Impugned Marks with a mala fide intention to ride on the goodwill and reputation attached to the Plaintiff’s Marks.
SUBMISSIONS ON BEHALF OF THE DEFENDANTS:
19. Defendant No. 1 is the contesting Defendant. Defendant No. 1 has not entered appearance despite service and is proceeded ex parte. Defendants Nos. 2 to 6 have complied with the directions given vide Order dated 27.11.2024.
20. The learned Counsel for Defendant No. 6 submitted that Defendant No. 6 will comply with any orders passed by this Court. However, there is a typographical error in one of the email IDs, being princemtalpowderinustries@gmail.com, provided by the Plaintiff in Paragraph No. 62(g) of the Plaint, and if the Plaintiff can provide on Affidavit the correct email ID of Defendant No. 1, Defendant No. 6 will comply with the Order passed by this Court. The Plaintiff has filed an Affidavit dated 27.08.2025 clarifying the email ID of Defendant No. 1. The Affidavit is taken on record.
PROCEEDINGS IN THE PRESENT SUIT:
21. Vide Order dated 27.11.2024, an ex-parte ad-interim injunction was granted against the Defendant No. 1 restraining Defendant No. 1 from using the Impugned Marks or any other Mark which is deceptively or confusingly similar to the Plaintiff's Marks. Further, Defendant No. 2 was directed to furnish details of the Bank Account No. 065505002867 belonging to Defendant No. 1 and file the same before this Court within a period of four weeks from date, Defendant Nos. 3 to 5 were directed to provide complete details of the registrants of the mobile numbers +91-9414171899, +91-7426071899 and +91-8005836997 and file the same before this Court within a period of four weeks from the date of the Order. Furthermore, Direction was issued to Defendant No. 6 to provide complete details and particulars of the associated numbers of the email IDs ultrasandvik12@gmail.com, princemtalpowderinustries@gmail.com and vedantadhatu@gmail.com and file the same before this Court within a period of four weeks from the date of the Order.
22. Vide Order dated 18.03.2025 it was recorded that Defendant Nos. 3 to 6 had complied with the Order dated 27.11.2024. Vide Order dated 08.07.2025, it was recorded that Defendant No. 1 has been served through e-mail on 14.01.2025 and via speed post on 23.01.2025. As none had appeared on behalf of Defendant No. 1 despite service and no Written Statement had been filed on behalf of Defendant No. 1, the right to file Written Statement was closed. It was further recorded that Defendant No. 2 had complied with the Order dated 27.11.2024 and filed an Affidavit of Compliance in this regard.
ANALYSIS AND FINDINGS:
23. The Plaint has been duly verified and is supported by the affidavit of the Plaintiff. In view of the fact that no Written Statement has been filed on behalf of the Defendant No. 1, all the averments made in the Plaint have to be taken to be admitted. Further, since no Affidavit of Admission / Denial has been filed on behalf of the Defendant No. 1 in respect of the documents filed with the Plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules, 2018, the same are deemed to have been admitted.
24. From the averments made in the Plaint and the evidence on record, the Plaintiff has been able to prove that it is the registered proprietor of the Plaintiff’s Marks. Due to its long and extensive use, the Plaintiff has also been able to demonstrate and prove its goodwill and reputation in respect of the same. The Plaintiff has placed on record images of the Impugned Marks to show that the Defendant No. 1 is indulging in the infringement and passing off of the Plaintiff’s Marks.
25. From the comparison of the Plaintiff’s Marks and the Impugned Marks, it is evident that the Impugned Marks are deceptively similar to the Plaintiff’s Marks. Defendant No. 1 has merely added the word ULTRA before the word SANDVIK. The word ULTRA in the Impugned Marks does not help differentiate the rival Marks. Defendant No. 1’s adoption of the Impugned Marks is ex facie dishonest and seems to be a deliberate ploy on part of Defendant No. 1 to come as close as possible to the Plaintiff’s Marks, in order to piggyback on the goodwill and reputation of the Plaintiff. The rival Trade Marks when looked at in their entirety, are nearly identical / deceptively similar in appearance, sound and structure.
26. Defendant No. 1 is dealing with identical goods. Even the Trade Channels as well as the consumers of the Defendant No. 1 are identical to that of the Plaintiff.
27. Based on the discussion above, a clear case of infringement of Trade Mark is made out. Defendant No. 1 has taken unfair advantage of the reputation and goodwill of the Plaintiff's Marks and has also deceived the unwary consumers into believing their association with the Plaintiff by dishonestly adopting the Plaintiff's Marks without any plausible explanation. Therefore, the Plaintiff has established a case of passing off as well.
28. Since Defendant No. 1 has failed to contest the present Suit, despite having been served and passing of an ad interim injunction order, it is evident that there is no defence to put forth on merits.
29. Counsel for the Plaintiff presses for declaration of the Mark “SANDVIK” as a well-known Mark. However, the right of the Plaintiff to get its Mark “SANDVIK” declared as well-known is kept open and the same may be pursued by the Plaintiff in an appropriate proceeding.
30. Considering the aforesaid discussion, it is directed that: i. The Suit is decreed against the Defendant No. 1 in terms of Paragraph No. 62(a) to (c) of the Prayer Clause. ii. Defendant No. 2 shall permanently close / freeze the bank account No. 065505002867 belonging to Defendant No. 1. iii. Defendant Nos. 3 and 4 shall permanently block access of the Phone Nos. +91 7426071899 and +91 9414171899 belonging to Defendant No. 1. iv. Defendant No. 6 shall block access of the email IDs, ultrasandvik12@gmail.com, vedantadhatu@gmail.com and princemetalpowderindustries@gmail.com belonging to Defendant No. 1 v. Defendant No. 1 shall pay an amount of ₹5,00,000/- (Rupees Five Lacs Only) to the Plaintiff as damages and costs within a period of eight weeks from date.
31. Let the decree sheet be drawn up.
32. The present Suit and the pending Applications are disposed of.
TEJAS KARIA, J SEPTEMBER 26, 2025 ‘AK’