Bombay High Court Restrains Hamon Cooling Systems From Using 'HAMON' Trademark

The Bombay High Court has restrained Hamon Cooling Systems Private Limited from using the "HAMON" mark and deceptively similar variants, holding that Belgian company John Cockerill Hamon SA had made out a strong prima facie case of trademark infringement and passing off.

Justice Arif S. Doctor passed the order while allowing an interim application filed by John Cockerill Hamon SA.

"Not only has the Plaintiff made out a strong prima facie case for the grant of interim relief, but I must also note that Defendant No. 1 would not be entitled to any equitable relief, both on account of its conduct and the stand taken by it in the pleadings.", the court observed.

John Cockerill Hamon SA claimed ownership of the "HAMON" trademarks, which were originally adopted by Belgian company ENGETRA S.A. in 1963 and registered in India in 1988. The marks were assigned to Hamon & CIE (International) S.A. in 1999 and later transferred to John Cockerill Hamon SA following insolvency proceedings involving the Belgian company.

The dispute arose after Hamon Cooling Systems, which was sold to a new owner in 2022, continued using "HAMON COOLING" and "HCS HAMON COOLING" as part of its corporate identity. John Cockerill Hamon SA contended that the company had only a limited right to use the brand to complete ongoing projects and continued using it even after that arrangement ended.

Rejecting the company's objections, the court held that an assignment of a trademark becomes effective upon execution of the assignment deed and does not require the assignee's name to be entered on the Trade Marks Register before it can be enforced.

"It is now well settled that an assignment of a trade mark is complete and effective inter partes upon execution of the instrument of assignment and does not require recordal on the Register as a condition precedent to its validity or enforceability.", the court observed.

The court also found Hamon Cooling Systems' stand inconsistent with its conduct before the Trade Marks Registry. While claiming in court that it had independently used the HAMON mark since 1999, it had filed trademark applications describing the marks as "proposed to be used."

"A party asserting continuous independent use of a mark since 1999 does not, a quarter century later, solemnly declare before a statutory authority that the mark is 'proposed to be used'.", the court observed.

The court observed that this "alone establishes the patently dishonest conduct on the part of Defendant No. 1."

Noting that Hamon Cooling Systems was executing public sector projects under the disputed mark, the court held that an injunction would shield the public and public authorities from the company's misuse of the HAMON mark.

"It would in fact be in the larger public interest to shield the public and public authorities from Defendant No. 1's misuse of the HAMON Mark."

The court restrained Hamon Cooling Systems from using the "HAMON" mark or any deceptively similar variant in its corporate name, trade name, or domain name or in relation to its goods and services. No order as to costs was passed.

Following the pronouncement, Hamon Cooling Systems sought a four-week stay of the order. John Cockerill Hamon SA opposed the request but agreed that the injunction would not be acted upon for three weeks