This judgment from the High Court of Delhi addresses a commercial suit filed by Harley-Davidson LLC, a renowned American company, against Vijal Pal Dhayal accused of infringing the plaintiff’s trademarks and copyrights, as well as passing off goods under a deceptively similar mark. The case, identified as CS(COMM) 609/2023, was adjudicated summarily under Order XIII-A of the Code of Civil Procedure, 1908 (CPC), as amended for commercial disputes, due to the defendant’s failure to contest the claims despite multiple opportunities. The court granted a permanent injunction, ordered the destruction of infringing goods, and awarded damages and costs totaling Rs. 5,00,000 in favor of the plaintiff.
Harley-Davidson LLC, organized under the laws of the United States, has been a prominent name in the motorcycle industry since its inception in 1903. The company, formally incorporated as Harley-Davidson Motor Company on September 17, 1907, expanded its product line over the years to include apparel, shoes, and accessories, all marketed under the well-known “HARLEY-DAVIDSON” mark and associated logos, such as the “Bar & Shield” logo introduced in 1910 and the “Eagle Logo/Device Mark.” These trademarks have been registered globally, with over 2,200 registrations or pending applications, and have acquired significant recognition due to continuous use since the early 20th century. In India, the plaintiff began operations in August 2009 through its subsidiary, H-D Motor Company India Private Ltd., and opened its first dealership in July 2010. It later partnered with Hero MotoCorp to strengthen its presence in the Indian market. The company also operates a website, https://www.harley-davidson.in/, created on February 14, 2005, to promote and sell its products.
The plaintiff’s trademarks in India include registrations for “HARLEY-DAVIDSON,” its logos, and variants like “SCREAMIN EAGLE,” “H-D,” and “HD,” spanning multiple classes under the Trade Marks Act, 1999. For instance, registration no. 490824 for “HARLEY-DAVIDSON” in Class 25 (clothing) dates back to May 10, 1988, while registration no. 1333740 for the “Bar & Shield” logo in Class 25 was filed on January 24, 2005. These marks, along with their distinctive trade dress and artistic elements, are protected as original works under Section 2(c) of the Copyright Act, 1957. The plaintiff’s extensive use, global sales in over 90 countries through 1,460 dealerships, and substantial promotional efforts—evidenced by sales of Rs. 488.09 crore and promotional expenses of Rs. 5.31 crore in India in 2014—have established its marks as market leaders and source identifiers exclusively associated with Harley-Davidson.
The dispute arose in July 2023 when the plaintiff’s representative discovered the defendant using a mark identical or deceptively similar to the plaintiff’s “Eagle Logo/Device Mark” on footwear sold under the brand name “RONTEX.” An investigation revealed that the defendant was stocking, supplying, and selling these shoes, prompting the plaintiff to file the present suit. The plaintiff sought a permanent injunction to restrain the defendant from infringing its trademarks and copyrights, passing off goods as those of the plaintiff, and causing dilution of its brand reputation. Additional reliefs included the delivery and destruction of infringing products, damages, and costs.
The procedural history of the case reflects the defendant’s non-participation. On October 16, 2023, the court issued summons and an ad interim injunction restraining the defendant from using the impugned mark. A Local Commissioner was appointed to visit the defendant’s premises, where 640 pairs of shoes bearing the infringing mark were inventoried. Despite service of summons via email and publication, and multiple extensions granted by the Joint Registrar, the defendant failed to file a written statement within the statutory 120-day period under the Commercial Courts Act, 2015. Consequently, on April 2, 2024, the right to file a written statement was closed, and the plaintiff moved an application (I.A. 42209/2024) under Order XIII-A and Order VIII Rule 10 CPC for a summary judgment.
The court’s analysis focused on the plaintiff’s prima facie case and the defendant’s lack of defense. The plaintiff demonstrated prior adoption and continuous use of its marks since 1903 globally and since 2009 in India, supported by trademark registrations and evidence of goodwill. The Local Commissioner’s report, unchallenged by the defendant, confirmed the presence of infringing goods, aligning with Order XXVI Rule 10(2) CPC, which allows such reports to be read into evidence if uncontested. The court compared the plaintiff’s “Eagle Logo/Device Mark” with the defendant’s mark and found them deceptively similar, noting that the defendant’s use on identical goods (footwear) could mislead consumers and dilute the plaintiff’s brand.
Applying Order XIII-A CPC, designed to expedite commercial disputes, the court assessed whether the defendant had a “real prospect” of defending the claim. Citing Su-Kam Power Systems Ltd. v. Kunwer Sachdev (2019 SCC OnLine Del 10764), the court emphasized that a summary judgment is appropriate when the defendant’s prospects are not “realistic” but “fanciful,” and no compelling reason exists for a trial. Here, the defendant’s failure to file a written statement, respond to the application, or contest the interim injunction indicated an absence of defense. The court concluded that proceeding to trial was unnecessary, as the plaintiff’s evidence—trademark registrations, sales figures, and the Local Commissioner’s findings—established infringement, passing off, and copyright violation.
On the issue of reliefs, the court granted a permanent injunction in terms of prayer clauses 46(a), (b), and (c) of the plaint, restraining the defendant from using the infringing mark. It also ordered the destruction of the 640 pairs of shoes inventoried by the Local Commissioner, to be supervised by the plaintiff’s representative, as per prayer clause 46(e). For damages and costs (prayer clauses 46(g) and (h)), the plaintiff pressed for compensation, citing the defendant’s willful infringement. Referencing Hindustan Unilever Limited v. Reckitt Benckiser India Limited and Inter Ikea v. Sham Murari, the court adopted a “rough and ready calculation” approach, basing damages on the Local Commissioner’s seizure report. Considering the defendant’s conduct and the plaintiff’s reputation, the court awarded Rs. 5,00,000, covering both damages and costs. The plaintiff did not pursue other reliefs, such as rendition of accounts.
Complete Citation
- Case Name: Harley-Davidson LLC Vs. Vijal Pal Dhayal
- Court: High Court of Delhi at New Delhi
- Case Number: CS(COMM) 609/2023
- Date of Decision: April 2, 2025
- Judge: Hon'ble Mr. Justice Amit Bansal
- Neutral Citation: 2025:DHC:2489
