The word 'ultra' is descriptive and non-distinctive, and the registration of marks containing 'ultra' does not confer exclusive rights to the plaintiffs.

These Notices of Motion are taken out in trade mark infringement and passing off suits in respect of the Plaintiffs' registered trade marks bearing the word 'UltraTech' as a part thereof. The Plaintiffs complain of the use by the Defendant of the word 'Ultra' in its trade marks as being an infringement and also amounting to passing off.

2. Plaintiff No.1, originally incorporated with the name 'L & T Cement Limited' changed its name to 'UltraTech Cemco Limited' with effect from 19 November 2003 and to its present name 'UltraTech Cement Limited' with effect from 14 October 2004. In the year 2004, Plaintiff No.2 acquired a controlling stake in Plaintiff No.1. Plaintiff No.1 was the registered proprietor of several trade marks containing the word 'Ultra', such as 'UltraTech CEMENT The Engineer's Choice', 'UltraTech CONCRETE'. ' UltraTech READY MIX', 'UltraCem' and 'UltraCem. The Engineer's Choice', in Class 19 in respect of cement, building materials, etc. By a Deed of Assignment dated 30 September 2009, the aforesaid trade marks were assigned by Plaintiff No.1 to Plaintiff No.2, along with goodwill. The relevant applications for bringing on record Plaintiff No.2 as the subsequent proprietor have been pending before the Trade Marks Registry. Plaintiff No.2 is the registered proprietor of the trade marks, namely, a Sun Device followed by 'UltraTech Cement', 'UlTRATECH WHITE CEMENT' (2 applications), also in Class 19 in respect of the same goods. Besides these registered trade marks, both the Plaintiffs are applicants for registration of various marks in Class 19 bearing the word 'UltraTech' as an intrinsic part. The trade marks applied for by Plaintiff No.1 have been subsequently assigned to Plaintiff No.2. Plaintiff No.2 is, thus, the present proprietor of all 'UltraTech' trade marks. By a licence agreement, the use of these trade marks has been licensed by Plaintiff No.2 to Plaintiff No.1, the latter continuing to use the trade marks under such licence.

3. It is the Plaintiffs' case that ever since their adoption in the year 2003, the 'UltraTech' trade marks have been used openly, continuously, extensively and exclusively by the Plaintiffs in respect of cement and other allied products. The Plaintiffs have produced statements of sales and promotional expenses ever since inception and till 2012-13, duly certified by Chartered Accountants. The consolidated sales attained during the year 2012-13 were of about Rs.23,852 Crores, whereas the advertisement expenses incurred were over Rs.114 Crores. Besides, it is claimed that apart from use as a trade mark, the word 'UltraTech' has come to be associated with the corporate identity of Plaintiff No.1, whose stock in the market is identified as 'UltraTech' or 'UltraTech Cement', and whose corporate website is 'www.ultratechcement.com'. The Plaintiffs claim to have thus acquired tremendous goodwill and reputation not only in India, but even in several other jurisdictions.

4. The grievance of the Plaintiffs is that in the month of September 2013, they learnt of the Defendant's use of marks called 'Dalmia ULTRA', 'DALMIA ULTRA', etc. containing as their essential feature the word 'ULTRA'; and that these marks are identical with and/or deceptively similar to the 'UltraTech' trade marks of the Plaintiffs. In an application submitted by the Defendant in August 2013, for registration of its mark 'Dalmia ULTRA' in Class 19 for cement, building materials, etc., the Defendant has claimed to be using the word/mark 'Dalmia' since January 1939, whilst the word/mark 'Dalmia ULTRA' as a whole is merely 'proposed to be used' as on the date of the application. The Plaintiffs claim that the addition of the word 'ULTRA' by the Defendant has been an afterthought and made with a view to establish a false nexus with the business of the Plaintiffs and trade on their reputation. It is claimed that such user not only amounts to infringement of the Plaintiffs' registered trade marks, but by its means the Def