Bombay High Court Restrains Hamon Cooling Systems from Using the ‘HAMON’ Mark in John Cockerill Hamon SA’s Favour

By Vikrant Rana and Rupin Chopra

Introduction

The Bombay High Court has restrained Hamon Cooling Systems Private Limited (“Defendant No. 1”) from using the mark HAMON, holding that John Cockerill Hamon SA (the “Plaintiff”) had made out a strong prima facie case that it is the proprietor of the HAMON trade marks in India, and that Defendant No. 1’s use of the marks — traceable to a now-expired “Brand Usage Right” granted following a cross-border insolvency-driven transfer of the Hamon group’s global IP portfolio — amounted to infringement and passing off. The Order was passed by Justice Arif S. Doctor on 6th July 2026, allowing the Plaintiff’s Interim Application seeking to restrain Defendant No. 1 from using “HAMON COOLING” and “HCS HAMON COOLING” as trade marks and as part of its corporate name.

Background

Origin and chain of title of the HAMON Marks

The mark HAMON was adopted in 1963 by ENGETRA S.A. (“ENGETRA”), a Belgian entity, in respect of goods in Classes 7 and 11, including air cooling and air-conditioning apparatus, air condensers, water heaters and heat exchangers. In 1988, ENGETRA obtained Indian registrations for the word mark HAMON (Nos. 495228 and 495229) and a device mark (Nos. 495230 and 495231), in Classes 7 and 11.

On 15th September 1999, ENGETRA executed a Deed of Assignment transferring its rights in the HAMON marks (Nos. 495228, 495229 and 495230), together with the associated goodwill, to Hamon & CIE (International) S.A. (“HCI”).

Corporate history of Defendant No. 1

HCI thereafter acquired approximately 70% of the shareholding of an Indian company, Thermopack Engineers Pvt. Ltd., which was renamed Hamon Thermopack Engineers Pvt. Ltd. and, in 1998–99, further renamed Hamon Thermopack. On 12th April 1999, HCI acquired 100% of the shareholding in Hamon Thermopack. In 2007, Hamon Thermopack entered into a joint venture with Shriram EPC Ltd. for cooling-tower engineering projects, with Shriram EPC acquiring 50.01% equity and the company being renamed Hamon Shriram Cottrell Pvt. Ltd. (HCI separately filed applications for device-mark registrations in India on 16th July 2008 and 3rd July 2009, which matured into registration Nos. 1710809 and 1836422.) In 2013, Shriram Industrial Holdings acquired Shriram EPC’s 49.99% stake through an internal transfer. In 2019–20, HCI increased its shareholding to 99.16%, and the company was renamed Hamon Cooling Systems Pvt. Ltd. — the present Defendant No. 1. For FY 2023–24, Defendant No. 1 recorded a turnover of approximately Rs. 219.51 crore and a net worth of approximately Rs. 36.41 crore; Defendant No. 2 (Hamon India) recorded a turnover of Rs. 9,81,417 in the same year.

The Belgian insolvency and transfer to the Plaintiff

In 2022, HCI initiated judicial reorganisation proceedings in Belgium, which were converted into bankruptcy proceedings, with three Court-appointed Trustees. On 20th May 2022, CMI France, a subsidiary of the John Cockerill Group, submitted a bid to acquire substantially all of HCI’s intellectual property assets, covering the entire HAMON brand and trade mark portfolio, the ERP, patents, the website, and HCI’s equity interests in the Esindus subgroup (which carried on the group’s wet-cooling and water-management businesses); the Trustees ultimately obtained approval only for the transfer of HCI’s assets excluding the Esindus subgroup shares. On 27th May 2022, the Specialised Commercial Tribunal, Bobigny, ordered the transfer of certain French Hamon-group assets for the benefit of CMI France, and on 30th May 2022 the Trustees sought and (on 1st June 2022) obtained authorisation to sell HCI’s assets (excluding the Esindus shares) to CMI France, acting for and on behalf of the Plaintiff. On 2nd June 2022, CMI France paid €1,100,000 to the Trustees as consideration/guarantee.

A Transfer Agreement was executed on 25th July 2022 between HCI (through its Trustees) and the Plaintiff, deemed effective from 1st June 2022. Clause 1.1.1.1 records that the entire portfolio of brands held by HCI, including all brand and trade names attached to the HAMON brands, stood transferred to the Plaintiff. Under Clause 6, the Plaintiff paid an additional €500,000 to permit certain former Hamon-group companies not acquired by the Plaintiff to continue using the HAMON brands for a limited period, solely to complete ongoing projects — described in Clause 1.1.1.2 as the “Brand Usage Right.” Defendant No. 1 was one such company. This position was reiterated in a Confirmatory Deed dated 18th April 2024, executed on behalf of HCI’s Trustees by Mr. Xavier Ibarrondo as Curator.

Events giving rise to the dispute

On 30th September 2022, a Share Sale Agreement (“SSA”) was executed between Mr. Akhileshwar G. Chorasiya, Defendant No. 2 and Hamon (Netherlands) B.V., transferring Defendant No. 2’s 99.16% stake in Defendant No. 1 to Mr. Chorasiya; the Plaintiff’s case is that the SSA transferred only shares, and no IP rights, brand ownership or logo rights. On 18th August 2022, Defendant No. 1 filed a trade mark application (No. 5573155) for “HAMON COOLING” in Class 7 on a proposed-to-be-used basis. The Registry’s Examination Report dated 31st January 2023 cited the Plaintiff’s registration No. 495228 as a conflicting mark; Defendant No. 1’s reply distinguished the marks but did not assert any prior or independent right. The Plaintiff applied on 30th May 2024 to be recorded as subsequent proprietor of the HAMON marks; the Registry rejected Defendant No. 1’s “HAMON COOLING” application on 9th December 2024, following which Defendant No. 1, on 11th December 2024, filed fresh applications for “HCS HAMON COOLING” (No. 6751645, Class 7) and for “HAMON COOLING” and “HCS HAMON COOLING” (Nos. 6751644 and 6751646, Class 11), again on a proposed-to-be-used basis. The Court records that, upon discovering Defendant No. 1’s continued use of the mark notwithstanding the expiry of the Brand Usage Right, the Plaintiff issued a cease-and-desist notice in April 2024, to which Defendant No. 1 did not respond, and thereafter instituted the present Suit.

The Interim Application

By the Interim Application, the Plaintiff sought to restrain Defendant No. 1 from using the mark HAMON — or any deceptively similar mark — as a trade mark, corporate name, domain name, email address, business name or trading style, so as to infringe registration Nos. 495228, 495229, 1710809 and 1836422, and from passing off its goods and services as those of the Plaintiff. The Plaintiff also sought transfer of the domain name www.hamonindia.com to the Plaintiff.

Submissions on Behalf of the Plaintiff

The Plaintiff’s counsel chain of title — from ENGETRA to HCI in 1999, and from HCI to the Plaintiff under the 2022 Transfer Agreement and 2024 Confirmatory Deed — was clear and complete, and that Clause 1.1.1.1 of the Transfer Agreement (“the entire portfolio of brands held by HCI”) admitted no exclusion of the Indian registrations.

• Defendant No. 1 was a mere derivative/permitted user whose use of HAMON since 1999 was, on its own pleaded case, with the “implied or express consent” of HCI — a licence that could not ripen into an independent proprietary right, and which is inconsistent with any simultaneous claim of prior independent use under Section 34.
• The temporary “Brand Usage Right” granted to Defendant No. 1 under Clause 1.1.1.2/Clause 6 of the Transfer Agreement — for which the Plaintiff paid an additional €500,000 — had expired, and Defendant No. 1’s continued use thereafter was unauthorised.
• Defendant No. 1’s own applications for “HAMON COOLING” and “HCS HAMON COOLING”, filed on a proposed-to-be-used basis in 2022 and 2024, were themselves an admission that Defendant No. 1 had no subsisting independent right in HAMON.
• Actual confusion in the trade had already resulted from Defendant No. 1’s conduct, evidenced by emails from Technip and Relysolutions seeking clarification as to ownership of the HAMON marks.
• The plea of acquiescence was untenable, since there can be no acquiescence in the acts of one’s own licensee, and no positive act by the Plaintiff or HCI encouraging Defendant No. 1’s use had been shown — relying on Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448.
• The balance of convenience favoured the Plaintiff, as any inconvenience to Defendant No. 1 flowed from its own deliberate conduct in continuing to trade on the HAMON name after notice.

Submissions on Behalf of Defendant No. 1

The counsel for the defendant resisted the Application principally on the following grounds:

• The Plaintiff was not the registered proprietor of the HAMON marks — the Register still recorded HCI as proprietor, the Plaintiff’s application to be recorded as subsequent proprietor was pending, and the Registrar had raised clarifications/objections regarding the assignment.
• The Plaintiff had failed to establish even a prima facie chain of title: the Transfer Agreement did not specifically refer to HCI’s Indian trade marks; HCI’s Indian business was, on the Plaintiff’s own case, never acquired by CMI France; the Confirmatory Deed referred to an unproduced “Private Deed dated 1st June 2022”; and both the Transfer Agreement and the Confirmatory Deed were unstamped and hence inadmissible.
• The Confirmatory Deed was executed only by a Curator (rather than all three Trustees), and no authority empowering the Curator to confirm the transfer of the Indian marks had been produced.
• The purported assignment did not comply with Section 42 of the Trade Marks Act, 1999 (requiring advertisement of an assignment without goodwill within six months) or with Rule 75 of the Trade Marks Rules, 2017, and the Registrar’s function in recording an assignment was not merely ministerial — relying on Electronica India Ltd. v. Electronica Hitech Machines Pvt. Ltd.
• Defendant No. 1, incorporated in 1971, had continuously used the HAMON name since 1999 and built independent goodwill; no written licence existed as contemplated by Section 2(r)(ii)(c), and mere shareholding by HCI did not, without more, establish a licence — relying on Bacha F. Guzdar v. CIT, AIR 1955 SC 74, and on the absence of any quality control by HCI as required under American Home Products Corp. v. Mac Laboratories Pvt. Ltd. (1986) 1 SCC 465 and Gujarat Bottling Co. Ltd. v. Coca Cola Co. (1995) 5 SCC 545.
• Defendant No. 1 was entitled to defences of prior/continuous user under Section 34, use by consent under Section 30(2)(b), and acquiescence under Section 33 — HCI having never objected to Defendant No. 1’s use since 1999, and the Plaintiff having taken no action from 2022 until April 2024.
• The claim for passing off was unsustainable in the absence of any operating business or goodwill of the Plaintiff/HCI in India, whereas Defendant No. 1 had built substantial turnover and reputation over decades; the two emails relied upon showed, at most, routine commercial enquiries.
• The balance of convenience favoured Defendant No. 1, which was executing projects worth over Rs. 450 crore for public-sector and industrial clients; an injunction would jeopardise ongoing public infrastructure projects and employees, while the Plaintiff had no operating business in India and would suffer no comparable prejudice.

FINDINGS OF THE COURT

Justice Doctor held that, at the interlocutory stage, the Court is not required to conduct a mini-trial or finally resolve disputed questions of fact or law, and confined itself to assessing prima facie case, balance of convenience, and irreparable harm. On that basis, the Court made the following key findings:

• Chain of title: the Plaintiff had made out a strong prima facie case of proprietorship, based on (i) the undisputed 1999 Deed of Assignment from ENGETRA to HCI; (ii) Clause 1.1.1.1 of the 2022 Transfer Agreement, read with Clause 3 (which exhaustively lists excluded assets, and does not exclude the Indian HAMON marks); (iii) the orders sanctioning transfer of HCI’s assets to CMI France (undisputedly part of the John Cockerill Group); (iv) the 2024 Confirmatory Deed; and (v) the fact that the Plaintiff had already been recorded on the Register as proprietor of Registration No. 1836422.
• Non-recordal of assignment is not a bar: an assignment is complete inter partes on execution and does not require recordal as a condition of validity, following SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd. (2010) 42 PTC 389 (Bom) and K. Jain v. Ziff-Davies Inc., 2000 (56) DRJ (Suppl) 810 (SC); Cott Beverage Inc. v. Silvassa Bottling Co. was distinguished.
• “Private Deed” objection rejected: the Court accepted the Plaintiff’s clarification that the “Private Deed dated 1st June 2022” referred to in the Confirmatory Deed was, in fact, the Transfer Agreement itself (deemed effective from that date under Clause 6), and not a separate undisclosed document.
• Stamping/Section 42 objections rejected: Clause 1.1 transferred “all IP Rights” without severance of goodwill, and the Confirmatory Deed expressly confirmed transfer of the trade marks “as well as the related goodwill”; absent express severance, Section 42 (which applies only to assignments without goodwill) was not attracted.
• Defendant No. 1 cannot impeach the assignment: being neither the assignor nor a competing assignee, and HCI itself not having challenged the Transfer Agreement or Confirmatory Deed, Defendant No. 1 was not entitled to impeach their validity — following Parksons Cartamundi (P) Ltd. v. Suresh Kumar Jasraj Burad, 2012 SCC OnLine Bom 438. A Trustee’s email dated 16th June 2025 further confirmed the Plaintiff as sole legal owner.
• Section 34 unavailable to a permitted user: Defendant No. 1’s own pleaded case — that its use since 1999 was with the “implied or express consent” of HCI — was fundamentally inconsistent with any claim of independent prior use under Section 34, which protects independent adoption, not permissive use.
• Conduct before the Registry: filing applications for “HAMON COOLING” and “HCS HAMON COOLING” on a proposed-to-be-used basis in 2022 and 2024 — a quarter-century after Defendant No. 1’s claimed date of first use — and failing to assert independent rights in reply to the 2023 Examination Report, was found to reflect dishonest conduct inconsistent with any bona fide claim of independent ownership.
• Passing off established: goodwill built up through permitted/licensed use inures to the licensor (and its successor), not the licensee, following Patton International Ltd. v. Patton Electronics (I) Pvt. Ltd., 2009 (40) PTC 633 (Cal), and Velcro Industries B.V. v. Velcro India Ltd., 1992 SCC OnLine Bom 582; actual instances of confusion (the Technip and Relysolutions emails) were accepted as sufficient at the prima facie stage.
• No acquiescence: acquiescence requires a positive act by the proprietor inducing the defendant’s use (per Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448); none was shown, the Plaintiff had acted within the five-year period under Section 33, and, in any event, acquiescence has no application where the defendant’s use was itself permissive.
• Balance of convenience and public interest: the balance was found to overwhelmingly favour the Plaintiff; any hardship to Defendant No. 1 was self-created, and — given that some of Defendant No. 1’s projects were public projects — the Court held it would in fact serve the larger public interest to restrain Defendant No. 1 from securing public contracts on the strength of a reputation and lineage it did not own.

Order

The Court quoted its own conclusion in terms that succinctly capture the basis for relief:

“The Defendants are, on their own admitted case, derivative users whose authority to use the marks has expired. The balance clearly favours the Plaintiff, and even considering if the injunction is refused, the Plaintiff, in fact, will continue to suffer its marks being exploited by a former permitted user who is actively projecting continuity of corporate identity and lineage to which it has no entitlement whatsoever.”

The Interim Application was allowed in terms of prayer clauses (a) and (b) — restraining Defendant No. 1 from using HAMON, or any deceptively similar mark, as a trade mark, corporate name, domain name, email address, business or trade name, and from passing off its goods/services as those of the Plaintiff — with no order as to costs. Prayer clause (c), seeking transfer of the domain name www.hamonindia.com to the Plaintiff, was not separately addressed in the operative order.

Analysis

The ruling reinforces a well-established, but frequently litigated, principle of Indian trade mark law: a party whose use of a mark is traceable to the consent or authority of the proprietor cannot, once that authority lapses, pivot to a claim of independent proprietary or prior-user rights in the same mark. The Court’s finding that Defendant No. 1’s own pleadings — asserting both permissive use since 1999 and independent use under Section 34 — were “fundamentally inconsistent and mutually destructive” is likely to be of significant precedential value in cases involving former licensees, joint-venture vehicles, or erstwhile subsidiaries that continue trading under a group mark after divestment.

The decision is also notable for treating the goodwill generated during a period of licensed or group use as inuring entirely to the trade mark owner (and its successors-in-title), even where the erstwhile licensee has built decades of independent commercial track record and substantial turnover under the mark. Equally significant is the Court’s treatment of conduct before the Trade Marks Registry — filing fresh applications on a “proposed-to-be-used” basis, long after an asserted date of first use — as probative of the absence of any genuine independent claim, a point that may be of broader relevance in future proprietorship disputes involving group or subsidiary entities.

On the cross-border insolvency dimension, the Court’s willingness to treat a broadly worded “all IP Rights”/“entire portfolio of brands” clause in a foreign transfer agreement as extending to Indian registrations — notwithstanding the absence of an itemised reference to Indian registration numbers — will be of interest to multinational groups undertaking cross-border restructurings or insolvency-driven asset transfers that touch Indian IP assets, and underscores the importance of clearly drafted exclusion clauses (or their absence) in such instruments.

It should be noted that this remains an interim order passed on a prima facie assessment; Defendant No. 1’s objections as to registered proprietorship, the validity and stamping of the Transfer Agreement and Confirmatory Deed, and its statutory defences under Sections 30, 33, 34 and 42 of the Trade Marks Act, 1999, remain to be finally adjudicated at trial.

Conclusion

The Bombay High Court’s order in John Cockerill Hamon SA v. Hamon Cooling Systems Pvt. Ltd. & Anr. restrains Defendant No. 1 from using the HAMON mark, the domain www.hamonindia.com, and related branding, on the strength of a prima facie finding that its authority to use the mark — traceable to a temporary “Brand Usage Right” granted as part of a 2022 cross-border insolvency transfer — had expired. The ruling offers a useful illustration of how Indian courts approach derivative and permitted use, the limits of acquiescence as a defence against a licensee’s own licensor, and the treatment of goodwill following a change in ultimate trade mark ownership through insolvency proceedings abroad.

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