Obtaining a Deceptively Similar Trademark Registration During an Injunction as Contempt: Madras High Court’s Strict Application of Order XXXIX Rule 2A CPC in Hindustan Unilever Ltd v. Roopa Industries

Obtaining a Deceptively Similar Trademark Registration During an Injunction as Contempt: Madras High Court’s Strict Application of Order XXXIX Rule 2A CPC in Hindustan Unilever Ltd v. Roopa Industries

1. Introduction

The decision of the Madras High Court in A. No.1861 of 2025 in O.A. No.489 of 2020 in C.S. No.427 of 2015, Hindustan Unilever Limited v. Roopa Industries & Anr, delivered on 26 November 2025 by N. Senthilkumar, J., is a significant ruling on the consequences of violating a civil court’s injunction under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC).

The judgment arises from a trademark and copyright infringement dispute involving Hindustan Unilever Limited (HUL), owner of the well-known detergent marks “WHEEL” and “ACTIVE WHEEL”, and Roopa Industries/Satish Honahalli, who were using and later registering deceptively similar marks such as “DOUBLE WHALE” and then “DOUBLE WHEEL” for detergent products.

Central to this ruling is the Court’s holding that:

  • Continued use of, and application for registration of, a deceptively similar mark during the subsistence of an injunction constitutes a contumacious breach actionable under Order XXXIX Rule 2A CPC.
  • The contemnor cannot invoke technical objections to the maintainability of the underlying suit or initiate parallel proceedings in another State to justify non-compliance with an existing injunction.
  • Courts are prepared to deploy the full range of sanctions under Order XXXIX Rule 2A—including attachment of property and detention in civil prison—in IP infringement disputes where orders are wilfully flouted.

This commentary analyses the decision in depth, focusing on its reasoning, reliance on precedent, and its implications for contempt jurisprudence and trademark enforcement.

2. Background and Procedural History

2.1 Parties and Underlying IP Rights

The applicant/plaintiff, Hindustan Unilever Limited (HUL), is a multinational company engaged in manufacture and marketing of detergents under the registered trademarks “WHEEL” and “ACTIVE WHEEL”. These marks are supported by distinctive packaging (label/artistic works) used in relation to washing powder and washing bars.

The respondents/defendants are:

  • Roopa Industries, represented by Mr. Satish Honnahalli, and
  • Mr. Satish Honnahalli personally, proprietor of New Hindustan Petro Chemicals, Gadag, Karnataka.

They marketed detergent products under the marks “DOUBLE WHALE” and later “DOUBLE WHEEL”, accompanied by packaging allegedly deceptively similar to HUL’s labels and artistic works.

2.2 The Main Suit and Interim Injunctions

HUL instituted C.S. No.427 of 2015 before the Madras High Court seeking, inter alia:

  • Perpetual injunction against infringement of its registered trademarks “WHEEL” and “ACTIVE WHEEL” by the defendants’ use of “DOUBLE WHALE” and related marks.
  • Perpetual injunction against passing off by using labels/marks similar to HUL’s.
  • Perpetual injunction against copyright infringement of HUL’s artistic works in the packaging of its detergent products.

On 03.06.2015, in O.A. Nos.555 to 557 of 2015, the Court granted an interim injunction restraining the defendants from using the mark “DOUBLE WHALE”.

Subsequently, on 16.10.2020, an interim injunction was again granted (and on 23.12.2020 it was made absolute) in O.A. No.489 of 2020 in C.S. No.427 of 2015, restraining the defendants from using, continuing to use, or otherwise exploiting deceptively similar marks and labels.

2.3 Alleged Breach of Injunction

Despite these injunctions, the applicant alleged that:

  • Around 2019–2020, when HUL modified its “ACTIVE WHEEL” labels, the second respondent modified his own branding and switched to the mark “DOUBLE WHEEL”, along with packaging even more deceptively similar to HUL’s label/artistic work.
  • The second respondent applied for and obtained registration of the mark “DOUBLE WHEEL” while the injunction was very much in force.

HUL thus contended that the respondents had deliberately violated the Court’s injunctions and that these breaches were continuing.

2.4 Parallel Karnataka Litigation

Complicating the situation, the second respondent instituted a separate suit, Commercial O.S. No.12 of 2024, before the Principal District and Sessions Judge, Gadag, Karnataka. The cause title shows that:

  • The plaintiff there is Shri Satish Honnalli, and
  • The defendants are HUL entities, including its registered office (Mumbai) and regional office (Chennai).

This Karnataka suit relates to copyright, apparently concerning an artistic work marked as Ex.D14 in the Madras proceedings. In C.S. No.427 of 2015, the Madras High Court recorded on 17.03.2025 that HUL was seeking to obtain a stay of the Karnataka trial.

The respondents attempted to use this parallel proceeding as a contextual justification in resisting the contempt application.

2.5 The Present Application under Order XXXIX Rule 2A CPC

HUL filed Application No.1861 of 2025 under Order XXXIX Rule 2A CPC seeking action against the second respondent for disobedience or breach of the injunction granted on 23.12.2020, including:

  • Detention of the second respondent and persons in charge in civil prison, and
  • Attachment of property of the respondents.

The key question framed by the Court was:

“Whether the respondents have flouted the injunction orders of this Court?”

3. Summary of the Judgment

The Madras High Court held that the respondents had indeed flouted the injunction, and it granted stringent relief under Order XXXIX Rule 2A CPC:

  • The Court found that during the subsistence of its injunction, the second respondent had continued to use and had even applied for and obtained registration of the mark “DOUBLE WHEEL”, a mark in respect of which the Court had granted injunction.
  • The parallel suit filed by the second respondent in Karnataka (Commercial O.S. No.12 of 2024) was held to be irrelevant to the question of contempt; it could not “come to the rescue” of the respondents as long as the Madras injunction order subsisted and was being violated.
  • Invoking Order XXXIX Rule 2A CPC, the Court directed:
    • Attachment of the property in the name of the first respondent, Roopa Industries, in C.S. No.427 of 2015, and
    • Detention of the second respondent in civil prison for a period of three months.
  • The Registry was directed to issue appropriate warrants for attachment and arrest.

In reaching this conclusion, the Court relied in particular on the Supreme Court’s decision in Anil Panjwani v. Unknown, (2003) 7 SCC 375, which articulates the principle that a court may, in appropriate cases, withhold access to or participation in proceedings by a contemnor who persists in non-compliance.

4. Detailed Analysis

4.1 Core Legal Issues

The judgment implicates several key legal issues:

  1. Scope of Order XXXIX Rule 2A CPC: To what extent can a civil court penalise disobedience of its interim or final injunction orders by attachment of property and civil imprisonment?
  2. Effect of subsequent trademark registration: Does obtaining statutory registration of a mark during the pendency of an injunction excuse or override the injunction or does it itself amount to further contempt?
  3. Relevance of parallel litigation: Can filing a separate suit in a different State court (here, Karnataka) shield a party from contempt for breaching an injunction passed by the Madras High Court?
  4. Maintainability objections as a defence to contempt: Can the alleged defect in authorisation or signing/verification of the original plaint provide a defence to a charge of contempt for violating an existing order?

The Court’s emphatic answers are:

  • The injunction must be obeyed as long as it stands, irrespective of parallel proceedings.
  • Obtaining registration and continuing use in defiance of an injunction constitutes a breach, not a justification.
  • Technical objections to the maintainability of the underlying suit are immaterial at the stage of contempt, so long as the injunction order is in force and not set aside.

4.2 Precedents Cited and Their Role

4.2.1 Anil Panjwani, (2003) 7 SCC 375

The applicant relied on the Supreme Court’s decision in Anil Panjwani. In that case, the Supreme Court discussed the court’s power to deal with a contemnor who persists in disobedience. Paragraph 9, quoted by the Madras High Court, states:

“… the rule as to denying, hearing or withholding right of participation in the proceedings to the contemner … lies within the discretion of the court… This is a flexible rule of practice and not a rigid rule of law… Where the court may form an opinion that the contemner is persisting in his behaviour and … the disobedience … impedes the course of justice and/or renders it impossible for the court to enforce its orders in respect of him, the court would be justified in withholding access to the court or participation in the proceedings from the contemner.”

Key takeaways from Anil Panjwani as utilised by the Madras High Court:

  • The discretion of the court in contempt matters is broad and can extend to:
    • denying the contemnor the right to participate in proceedings, and
    • insisting that the contempt be purged before the contemnor is heard.
  • This power is not a rigid rule of law but a flexible rule of practice, to be applied based on the facts and the contemnor’s conduct.
  • The underlying idea is to protect the authority and effectiveness of court orders where continued disobedience would otherwise render them ineffectual.

While the Madras High Court did not actually bar the respondents from being heard, its reliance on Anil Panjwani underscores the gravity with which it viewed the respondents’ persistent non-compliance and informs its decision to impose stringent sanctions (attachment and civil imprisonment).

4.2.2 Janki Vashdeo Bhojwani v. Indusind Bank Ltd., 2004 (SC)

The respondents relied on Janki Vashdeo Bhojwani v. Indusind Bank Ltd., 2004 Lawsuit (SC) 1465, a well-known decision of the Supreme Court concerning the role of a power-of-attorney holder. Among other things, that judgment establishes that:

  • A power-of-attorney holder can appear and act on behalf of the principal, but
  • He cannot depose to matters of which only the principal has personal knowledge, especially in relation to contentious facts, and
  • Corporate authorisation to institute a suit must be properly proved.

In the present case, the respondents argued that:

  • There was no clear authorisation allowing HUL’s Assistant Legal Counsel to institute the suit; and
  • The plaint was not correctly signed or verified as required by Order XXIX Rule 1 CPC.

These arguments were intended to show that the very initiation of the suit was defective.

The Madras High Court, however, did not rule on these maintainability objections in this contempt application. Instead, by focusing solely on the existence and breach of the injunction, the Court implicitly adhered to a settled principle of contempt jurisprudence:

A party who is subject to an order of a competent court must obey that order so long as it remains in force, even if the party believes the order to be erroneous or the suit to be defective; the remedy is to challenge or vary the order, not to disobey it.

Thus, Janki Vashdeo was not determinative of the outcome at this stage, because the Court’s task under Order XXXIX Rule 2A was not to revisit the validity of the suit, but to examine whether a subsisting order had been breached.

4.2.3 Bhimappa v. Allisab, 2006 Lawsuit (Kar) 164

The respondents also cited the Karnataka High Court decision in Bhimappa v. Allisab, which, like Janki Vashdeo, deals with the scope of authority of a power-of-attorney holder and representation in court proceedings.

Again, while relevant to the underlying civil suit’s procedural validity, this precedent had no real bearing on the narrow question of contempt. The Madras High Court did not apply it to dilute its contempt jurisdiction, and the respondents’ attempt to use these procedural points as a shield against a clear injunction was effectively rejected.

4.3 Court’s Legal Reasoning

4.3.1 Narrow Contempt Question

At paragraph 11, the Court framed the sole question:

“Whether the respondents have flouted the injunction orders of this court?”

This formulation is important. It shows that the Court:

  • Deliberately confined itself to the fact of breach of an existing order, and
  • Declined to turn the contempt application into a surrogate forum for arguments about the maintainability or merits of the main suit.

4.3.2 Text and Scope of Order XXXIX Rule 2A CPC

The Court reproduced Order XXXIX Rule 2A CPC, which empowers the Court in the event of disobedience of its interim orders to:

  • Attach the property of the person guilty of disobedience; and
  • Detain such person in civil prison for a term not exceeding three months.

It also noted that:

  • An attachment under Rule 2A cannot remain in force for more than one year, and
  • If disobedience continues, the attached property may be sold, and the Court may award compensation to the injured party from the sale proceeds.

By setting out the Rule in full, the Court anchored its decision within the clear statutory framework.

4.3.3 Finding of Breach: Continued Use and Registration of “DOUBLE WHEEL”

At paragraph 13, the Court recorded two critical factual findings:

  1. The Court had initially granted an injunction on 16.10.2020, later making it absolute by a detailed order, which covered continuous usage and registration of the trademark “DOUBLE WHEEL”.
  2. During the subsistence of this injunction, the second defendant “had applied and obtained registration for the trademark ‘DOUBLE WHEEL’”.

The Court thus concluded that:

  • The respondents’ conduct amounted to a direct violation of the injunction order, particularly because the injunction was not merely against using “DOUBLE WHEEL” but extended to preventing its registration and continuous usage.
  • This was not an inadvertent or technical slip but a deliberate act of defiance, aggravated by the fact that the respondents sought statutory registration of the prohibited mark.

4.3.4 Irrelevance of the Karnataka Suit

The Court explicitly held that the separate suit filed by the respondent as plaintiff in Commercial O.S. No.12 of 2024, pending before the Principal District and Sessions Judge, Gadag, Karnataka, “will not come to the rescue” of the respondents.

The reasoning is rooted in a fundamental principle:

An order of injunction passed by a competent court must be obeyed by the parties bound by it, irrespective of any collateral proceedings they may initiate elsewhere. A party cannot neutralise or undermine an injunction by institution of another suit in a different jurisdiction.

This holding is especially significant in the context of modern IP litigation where parties sometimes:

  • engage in forum shopping, and
  • seek to create conflicting judicial narratives by instituting parallel suits.

The Madras High Court’s approach reinforces that contempt is judged with reference to the order in place, not with reference to strategic litigation elsewhere.

4.3.5 Sanctions: Attachment and Civil Imprisonment

Having found breach, the Court invoked the full rigour of Order XXXIX Rule 2A CPC:

  • It ordered attachment of the property in the name of the first respondent, Roopa Industries, in C.S. No.427 of 2015.
  • It directed that the second respondent be detained in civil prison for three months, i.e., the maximum period permissibly ordered at one time under Rule 2A.

The Court’s decision to impose both pecuniary (attachment) and personal liberty (civil prison) sanctions signals an intention to:

  • Deter continued non-compliance, and
  • Send a clear message that court orders, particularly IP injunctions, are not advisory but binding.

The reliance on Anil Panjwani reinforces the idea that the Court views such contumacious behaviour as warranting robust judicial response, lest the authority of the Court and the efficacy of its proceedings be undermined.

4.4 Scope and Application of Order XXXIX Rule 2A CPC

Order XXXIX Rule 2A CPC is a specific statutory mechanism to address non-compliance with interim injunctions. It is distinct from, though related to, the Court’s broader powers in contempt under the Contempt of Courts Act, 1971.

Key features as illustrated by this case:

  • It applies to disobedience of injunctions granted under Order XXXIX Rules 1 or 2 or breach of terms on which such injunctions were granted.
  • The Court may:
    • Attach property of the contemnor; and/or
    • Order detention in civil prison for up to three months.
  • Attachment cannot continue beyond one year. If disobedience still persists, the property may be sold, with compensation awarded to the injured party.

In practical terms, a court examining an application under Rule 2A typically considers:

  1. Whether a clear injunction order was in force;
  2. Whether the respondents had knowledge of that order; and
  3. Whether there was disobedience which is deliberate or wilful.

Though the Madras judgment does not spell out this tripartite test in so many words, its reasoning follows this pattern: it identifies the injunction, records continued use and registration of “DOUBLE WHEEL” despite the injunction, and treats such conduct as deliberate flouting.

4.5 Impact and Significance

4.5.1 For Trademark and IP Litigation

This judgment has particular significance for IP enforcement, especially in the context of trademarks:

  • It makes clear that injunctive orders take precedence over subsequent registration in the sense that a defendant cannot justify continuing infringing use merely by acquiring registration after being injuncted.
  • It reinforces that registrations obtained in violation of subsisting court orders cannot be a shield against contempt; indeed, the act of obtaining such registration may itself be an aggravating factor.
  • The severity of sanctions is likely to act as a strong deterrent against “repeat infringers” who treat injunctions as negotiable.

4.5.2 On Litigation Tactics and Forum Shopping

The Court’s dismissal of the Karnataka suit as irrelevant to contempt has broader implications:

  • Parties can no longer expect that by initiating parallel suits in other jurisdictions, they can dilute or sidestep an existing injunction from another court.
  • The decision discourages strategic behaviour intended to create jurisdictional confusion or to buy time while continuing infringing activities.

4.5.3 On Procedural Objections and Obedience to Court Orders

The respondents’ reliance on technical objections (lack of authorisation, defective signing/verification) and decisions like Janki Vashdeo and Bhimappa was effectively neutralised at the contempt stage. The implicit message is:

Procedural objections regarding how a suit was instituted must be raised and decided in appropriate proceedings. They do not give a party a license to ignore a subsisting court order.

This reinforces the foundational rule of the rule of law: court orders bind until set aside.

4.5.4 Strengthening the Culture of Compliance

By ordering civil imprisonment for three months, the Court has signalled a strong stance on non-compliance:

  • In many civil disputes, particularly commercial/IP matters, courts are often reluctant to order imprisonment, preferring monetary sanctions or mere warnings. This judgment indicates a willingness to use personal liberty restraints where conduct is egregious and persistent.
  • It may embolden plaintiffs in IP matters to actively pursue contempt remedies when faced with deliberate violations, knowing that courts are prepared to enforce orders robustly.

5. Complex Concepts Simplified

5.1 Trademark Infringement and Passing Off

  • A trademark is a sign (word, logo, label, etc.) that distinguishes the goods of one trader from another.
  • Infringement occurs when someone uses a mark that is identical or deceptively similar to a registered trademark in relation to similar goods, in a manner likely to cause confusion among the public.
  • Passing off is a related but separate, common law remedy. Even without registration, a trader can sue if another misrepresents their goods as being associated with the first trader by using a similar mark or get-up, causing damage to goodwill.

5.2 Copyright in Artistic Works on Labels

The artistic design of packaging (colours, layout, graphics, etc.) is typically protected by copyright as an “artistic work”. Copying such packaging without authorization can constitute copyright infringement in addition to trademark infringement and passing off.

5.3 Injunctions: Interim vs. Perpetual

  • An interim (temporary) injunction is granted at an early stage of a suit to preserve the status quo until the suit is finally decided.
  • A perpetual injunction is a final order, usually granted in the decree, permanently restraining a party from a certain act.

In this case, the focus is on the interim injunctions which the Court found had been breached.

5.4 Order XXXIX Rule 2A CPC: Disobedience of Injunction

Order XXXIX Rule 2A CPC allows a court to penalise a party who disobeys its injunction order. The penal tools are:

  • Attachment of property—a form of seizure; and
  • Detention in civil prison for up to three months.

“Civil prison” does not imply a criminal conviction. It is a coercive measure to compel compliance with a civil court’s order.

5.5 Contemnor and Denial of Hearing

  • A contemnor is a person who is alleged or found to have committed contempt of court by disobeying a court’s order or otherwise undermining the administration of justice.
  • As explained in Anil Panjwani, in extreme cases, courts may refuse to hear the contemnor or allow them to participate in proceedings until they have purged the contempt (i.e., complied with the order or otherwise made amends).

Although the Madras High Court did not invoke this particular measure, its citation of Anil Panjwani indicates that it views persistent disobedience as justifying strong judicial response.

5.6 Authorisation of a Company to Sue

A company, being an artificial legal person, must act through human agents. Hence:

  • To institute a suit, a company must authorise a specific person (Director, Company Secretary, authorised officer, etc.) via a Board resolution or similar corporate act.
  • The plaint must be signed and verified in accordance with Order VI Rule 15 and Order XXIX Rule 1 CPC.

The respondents attacked HUL’s suit on this basis, but as explained, such issues are to be decided in the main suit, not used as a justification for violating an injunction already in force.

6. Conclusion

The Madras High Court’s decision in Hindustan Unilever Ltd v. Roopa Industries is a robust affirmation of the principle that court orders, particularly injunctions, must be respected and obeyed. The judgment clarifies that:

  • Continuing to use and even registering a deceptively similar trademark during the subsistence of an injunction amounts to a clear breach, actionable under Order XXXIX Rule 2A CPC.
  • Parallel suits in other jurisdictions and technical objections to the maintainability of the underlying action do not excuse disobedience of a subsisting injunction.
  • Courts are prepared to employ the full spectrum of sanctions—including attachment of property and civil imprisonment—to enforce their orders in IP disputes.

By invoking Anil Panjwani and applying Order XXXIX Rule 2A CPC in its full rigour, the Madras High Court has sent a clear message: injunctions in trademark and copyright matters are not to be taken lightly, and parties who defy them do so at the peril of their property and personal liberty. The ruling thus strengthens both contempt jurisprudence and IP enforcement in India, and is likely to serve as a persuasive precedent in future cases involving persistent infringement in the face of clear court orders.

Case Details

Year: 2025
Court: Madras High Court

Judge(s)

Honourable Mr.Justice N.SENTHILKUMAR

Advocates

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