Court Rules that Use of "ACC" on Steel Products and Corporate Name Violates Trademark Rights Despite Different Product Classes; Appeal Dismissed
In a landmark decision dated October 1, 2026, the Karnataka High Court (Division Bench) dismissed the appeal filed by ACC Steel Pvt. Ltd., thereby upholding the permanent injunction granted by the Commercial Court against it for infringing the well-known trademark "ACC" owned by ACC Limited. The judgment reinforces the protection accorded to well-known trademarks under the Trade Marks Act, 1999, particularly emphasizing that statutory protection extends beyond the class of goods in which the mark is registered when such use takes unfair advantage of or damages the distinctive character or reputation of the mark.
ACC Limited, a reputed manufacturer of cement and ready-mix concrete, had instituted a commercial suit seeking permanent injunction, delivery of infringing goods for destruction, amendment of the defendant's corporate name, rendition of accounts, and damages for unauthorized use of its registered trademark "ACC," including its logo and get-up. The defendant, ACC Steel Pvt. Ltd., engaged in the manufacture and sale of steel products such as TMT bars under the mark "ACC TMT 500," contended that its registration of the mark under Class 6 for steel products was valid and that there was no infringement because ACC Limited's mark was registered under Class 19 for cement.
The Commercial Court had earlier held that the mere difference in the classes of goods (cement under Class 19 and steel under Class 6) does not preclude a finding of infringement or passing off, especially when the plaintiff's mark enjoys well-known status and extensive reputation in the construction industry. The Court found that the defendant's use of the identical essential mark "ACC," not only on its steel products but also as part of its corporate name "ACC Steel Pvt. Ltd.," was likely to cause confusion among the consumers, who operate in overlapping trade channels related to construction materials.
The Karnataka High Court, in its detailed judgment, agreed with the Commercial Court's findings, emphasizing several key legal principles:
1. Well-Known Mark Protection Beyond Class of Goods: The Court relied on Sections 11(2), 11(6), 11(7), 29(4), and 29(5) of the Trade Marks Act, 1999, which provide that a well-known trademark is entitled to protection against unauthorized use on dissimilar goods if such use takes unfair advantage or is detrimental to the distinctive character or reputation of the mark.
2. Infringement by Use of Essential Mark: The Court clarified that infringement does not require replication of the entire composite mark. Use of the essential and dominant part of a mark ("ACC") in a deceptively similar manner suffices to establish infringement and passing off.
3. Use in Corporate Name: The defendant's adoption of "ACC" as part of its company name was held to be an independent basis for the injunction, as it amounted to appropriation of the plaintiff's registered trademark.
4. Market Confusion and Overlapping Trade Channels: Despite differences in the nature of goods (cement and steel), the Court noted that both products are used in construction and move through overlapping trade channels, increasing the likelihood of confusion among the relevant public.
5. Invalidity of Defendant's Registration as a Defence: The defendant's trademark registration for "ACC TMT 500" was under challenge and stayed in rectification proceedings. Thus, it could not be relied upon as a conclusive defense against the plaintiff's prior rights.
6. Relief Granted: The Court upheld the Commercial Court's directions that the defendant be permanently restrained from using the mark "ACC" or deceptively similar marks, including in its corporate name. The defendant was also ordered to amend its corporate name in the Ministry of Corporate Affairs records, deliver infringing products for destruction, and render accounts of profits earned through unauthorized use. The claim for damages was declined due to lack of proof but with liberty to pursue the same in account proceedings.
The judgment underscores the importance of protecting established trademarks against unauthorized use that may mislead consumers or dilute the brand's reputation, even where the infringing goods fall under a different class in the trademark registry. It also highlights that registration alone does not guarantee the right to use a mark if it conflicts with an earlier well-known trademark.
Senior Counsel Promod Nair appeared for the appellant, while Senior Counsel Dhyan Chinnappa represented the respondent.
This ruling reaffirms the robust legal framework in India safeguarding intellectual property rights and provides a significant precedent for similar trademark disputes involving well-known marks across different product classes.
Bottom Line:
Trade Marks Act, 1999 - Prior and well-known mark "ACC" protected against use by defendant on dissimilar goods also - Mere difference in classes, i.e. cement under Class 19 and steel/TMT bars under Class 6, does not defeat infringement and passing off where plaintiff proved long prior use, reputation, well-known status, identical adoption of essential mark "ACC", use in corporate name, similar get-up and likelihood of confusion - Appeal dismissed.
Statutory provision(s): Trade Marks Act, 1999 Sections 11(2), 11(6), 11(7), 28, 29(4), 29(5), 31, 135
ACC Steel Pvt. Ltd. v. ACC Limited, (Karnataka)(DB) : Law Finder Doc Id # 2992055
