Settle trademark row via arbitration: HC to Munjals

The Delhi High Court has directed two factions of the Munjal family battling over a trademark to approach an arbitrator, as has been stipulated in the settlement agreements signed over a decade ago when the Hero group’s businesses were divided among the family members.

Vijay Munjal-promoted Hero Electric Vehicles and Hero Exports had sought the court’s intervention to restrain Pankaj Munjal-led Lectro E-Mobility from dealing, in any manner, in electric bikes having a throttle using ‘Hero’ or any mark deceptively similar as a trademark, brand name or trade name.

In 2010, the businesses of the Hero group were divided among four family groups, designated as F-1, F-2, F-3 and F-4, under a family settlement agreement. Under that, Hero Exports, along with its business, was transferred to the F-1 group that Vijay Munjal belongs to. Hero Cycles was among the businesses that went to the F-4 group of Pankaj Munjal, who also controls Lectro.


At the time of separation of the businesses, Munjals had also entered into a trademark and name agreement, which assigned the right to use the trademark “Hero”, and its variants, among the family groups for the products and services each of them catered to, to the exclusion of the other groups.

Hero Electric claimed in the court that as per the trademark agreement, the F-1 group had the exclusive right to use the trademarks ‘Hero’ and ‘Hero Electric’, and its variants, on all-electric vehicles, including electric bikes. It argued in the court that Hero Electric and Pankaj Munjal’s Lectro were manufacturing and selling electric bikes under the Hero brand.

Hero Electric manufactures electric scooters, while Lectro makes electric cycles.

“Usage of the ‘Hero’ and ‘Hero Electric’ trademarks, by the defendants (Lectro) for electric bikes, is bound to result in confusion in the market, regarding the actual manufacturer of the electric vehicles,” argued the petitions filed by Hero Exports and Hero Electric Vehicles.
Senior advocate Akhil Sibal, who appeared for Lectro, argued that all disputes arising out of or in connection with the family settlement and trademark agreements were amenable to arbitration.

The lawyer for the Vijay Munjal-promoted firms, senior counsel Sudhir Chandra, argued that determination of this issue did not require the court to refer to the two family agreements, as the plaintiffs were relying on the Trade Marks Act and the fact that Hero Exports was the registered proprietor of the trademark ‘Hero’ for electric bikes, an expression that he said would include electric bicycles as well.