Well-Known Trade Mark Protection Across Classes: ACC Case Ruling

Summary

ACC Limited, the cement major using the ACC mark since 1938, sued Bengaluru-based ACC Steel Pvt. Ltd. for selling TMT bars as "ACC TMT 500" and adopting ACC in its corporate name. A commercial court granted a permanent injunction, a corporate name change and an account of profits. The Karnataka High Court dismissed ACC Steel's appeal and held that a well-known trade mark is not confined to the class of its registration, and that a rival's own registration and different goods are no answer where reputation, trade channels and market confusion are shown. The ruling clarifies how Sections 11, 28, 29 and 31 of the Trade Marks Act work together for reputed marks.

Background

A brand in use since 1938 for cement met the same three letters on steel reinforcement bars, and the Karnataka High Court had to decide whether a well-known trade mark stops at the edge of its registration class.

ACC Limited (“ACC”) manufactures cement and ready-mix concrete and has used ACC as its company name, trading style and trade mark since 1938. It holds registrations for the word mark and several ACC formative marks, and uses a red and white logo. ACC Steel Pvt. Ltd. (“ACC Steel”) of Bangalore Rural sold TMT bars as “ACC TMT 500”, used ACC in its corporate name and held a Class 6 registration under Application No. 3409808.

ACC sued on 6 October 2020 before the Dedicated Commercial Court, Bengaluru Rural, alleging infringement, passing off and copying of its logo. It obtained an ex parte interim injunction on 9 October 2020, confirmed on 14 January 2022. The Intellectual Property Appellate Board stayed ACC Steel’s registration on 26 October 2020 in rectification proceedings. ACC Steel traced its mark to a partnership, Prime Alloys, which used “ACC TMT 500” from 2015, applied for registration on 14 November 2016 and assigned the mark on 28 December 2019 to ACC Steel, incorporated on 4 February 2019. It claimed ACC was coined from its promoters’ fathers’ names and the place of business. By its decree of 5 November 2024, the commercial court granted a permanent injunction, directed a change of corporate name, ordered destruction of infringing goods and rendition of accounts, and declined the claim for Rs. 10 lakhs in damages. ACC Steel appealed.

Issues

1. 1. Whether ACC Steel’s Class 6 registration, and ACC’s registrations principally in Class 19, decide the dispute under Sections 28 and 31 of the Trade Marks Act, 1999 (“Trade Marks Act”).
   2. Whether ACC is a well-known trade mark entitled to protection against dissimilar goods under Sections 11(6), 11(7) and 29(4) of the Trade Marks Act.
   3. Whether use of ACC in the corporate name “ACC Steel Private Limited” infringes under Section 29(5) of the Trade Marks Act.
   4. Whether ACC Steel proved bona fide independent adoption, and whether passing off was established.
   5. Whether the reliefs under Section 135 of the Trade Marks Act, including the corporate name change and account of profits, warranted interference.

ACC Steel’s Arguments

• • ACC’s rights relate principally to cement and allied goods in Class 19, while ACC Steel deals in steel and metal goods in Class 6, so no infringement arises across classes.
  • ACC Steel’s mark was adopted bona fide by its predecessors for a specific steel product and registered after due procedure.
  • The words “TMT 500”, the nature of the goods and the composite presentation distinguish ACC Steel’s mark, and no actual confusion was proved.
  • ACC did not deal in TMT steel, and two of its registrations had not been renewed in 2013.
  • The directions for a corporate name change, destruction of goods and rendition of accounts could not follow from a bona fide use of a registered mark.

ACC’s Arguments

• • The commercial court rightly appreciated the oral and documentary evidence and found long, extensive use and goodwill in ACC.
  • ACC Steel’s use of ACC in “ACC TMT 500” and its corporate name associates its goods with ACC and dilutes ACC’s goodwill, notwithstanding the difference between cement and steel.
  • The directions followed findings recorded after a full trial, and ACC Steel merely repeated contentions the commercial court had rejected.

Court’s Analysis

Registration Class Is Not a Wall

The court noted that ACC Steel’s principal defence assumed ACC’s rights must be tested only within the class of registration. The court observed that Section 28 opens with the words “subject to the other provisions of this Act”, so a registration is not an independent defence against an earlier, reputed mark. The court held that Section 31 gives a registration only prima facie evidentiary value, and that ACC Steel’s own registration, stayed in rectification proceedings, could not put ACC’s prior rights beyond examination. The court further observed that Sections 51 and 122 create no substantive right to use another proprietor’s mark.

How a Well-Known Trade Mark Travels Beyond Its Class

The court found that ACC had been included in the Registry’s list of well-known trade marks under Rule 124 of the Trade Marks Rules, 2017, and that this recognition rested on the cumulative factors in Sections 11(6) and 11(7): duration and extent of use, publicity, sales, distribution, registrations in several classes and reputation in the construction industry. The court reasoned that Sections 11(2) and 29(4) protect a well-known trade mark even against dissimilar goods where use without due cause takes unfair advantage of its repute, so the difference between Class 6 and Class 19 does not conclude the matter. The court noted that cement and steel are both used in construction, move through overlapping trade channels and reach persons connected with construction, and that the commercial court had weighed evidence of actual inquiries from people who believed ACC Steel’s products were associated with ACC.

Corporate Name and Doubtful Adoption

The court stated that ACC Steel carried on business as “ACC Steel Private Limited”, so its use of ACC was no incidental reference and independently attracted Section 29(5). The court observed that adding “TMT 500” after ACC did not remove the appropriation of the feature that identifies ACC. The court opined that the claimed origin of ACC from the promoters’ fathers’ names and place of business lacked documentary support, and that the assignment deed was not produced. The court held that similarity in font, colour combination and get-up, together with market inquiries, supported the findings on passing off, and that the defence of a different class of goods could not displace a decree passed after trial. The court added that Section 135 permits injunction, damages or an account of profits once infringement or passing off is found.

Findings

In view of the observations and the arguments presented by both the parties, the Karnataka High Court held that:

• • Section 28 is subject to the other provisions of the Trade Marks Act, and neither ACC Steel’s stayed Class 6 registration nor the difference between Class 6 and Class 19 defeats ACC’s claim.
  • ACC is a well-known trade mark, and Sections 11(2) and 29(4) protect it against use on dissimilar goods that takes unfair advantage of its repute.
  • ACC Steel’s use of ACC in its corporate name independently supports the injunction under Section 29(5).
  • ACC Steel failed to prove bona fide independent adoption, and the findings of passing off and the similarity in presentation were upheld.
  • The commercial court’s permanent injunction, corporate name change, destruction of goods and rendition of accounts stand, and the appeal is dismissed with no order as to costs.

Case Citation: ACC Steel Pvt. Ltd. v. ACC Limited, Commercial Appeal No. 273 of 2025, High Court of Karnataka at Bengaluru, decided on 1 October 2026. Available at https://indiankanoon.org/doc/121373050/.

Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels