Full Text
HIGH COURT OF DELHI
Date of Decision: 27th November, 2024
CASTROL LIMITED .....Plaintiff
Through: Mr. Urfee Roomi, Mr. Janaki Arun, Mr. Ritesh Kumar and Ms. Chahat Bhatia, Advocates.
Through: Nemo.
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademark and copyright of the plaintiff, passing off their goods and services as that of the plaintiff, along with other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. The plaintiff, Castrol Limited, is a company incorporated under the laws of England, engaged in the business of lubricants, oils, coolants, grease and related goods and services. It is a part of the British Petroleum group of companies. The plaintiff’s predecessor-in-interest was founded in the year
1899.
3. It is averred in the plaint that the mark ‘CASTROL’ is the house mark of the plaintiff. In the year 1909, the plaintiff started using the said mark on a worldwide basis in relation to its goods, including, but not limited to, engine oils and lubricants and related services. The plaintiff first used the aforesaid mark in India in the year 1911.
4. The plaint asserts that the plaintiff is the registered proprietor of the trademark ‘CASTROL’ and its formative marks under different classes in India. The earliest registration of the mark ‘CASTROL’ dates back to the year 1942 in India. The plaintiff has also obtained registrations for the marks ‘ACTIV’ and ‘ACTIVE’ with respect to lubricants. The trademark registrations/applications of the plaintiff as given in paragraph 27 of the plaint are set out below:
1. 1494 CASTROL 4 29/06/1942 Registered
2. 373759 CASTROL 4 23/03/1981 Registered
3. 909193 4 10/03/2000 Registered
4. 1342921 18, 25, 07/03/2005 Registered
5. 1240239 37, 29/09/2003 Registered
6. 838183 ACTIV 4 25/01/1999 Registered
7. IRDI No.3355419 4 08/04/2016 Protection
8. 2709612 4 31/03/2014 Registered
9. 2317448 ACTIBOND 4 18/04/2012 Pending
10. 6153641 4 17/10/2023 Pending The Certificates of Registrations, Certificates for use in Legal Proceedings and the Certificates of Renewal are filed as document no. 20 of the documents filed alongwith the plaint. All the aforesaid trademark registrations/applications remain valid and subsisting.
5. Furthermore, the plaintiff’s mark ‘CASTROL’ was declared to be a ‘well-known’ trademark in a judgment passed by the Co-ordinate Bench of this Court, Castrol Limited & Anr. v. Mahendra Automobiles & Anr., 2011 SCC OnLine Del 3485 [decided on 18th August, 2011].
6. It is further asserted that the container in which the plaintiff sells its engine oil and lubricants as well as the labels affixed to that container (collectively referred to as ‘the plaintiff’s packaging’) have distinctive features. Hence, the plaintiff claims that its device marks and packaging are original artistic works and the plaintiff is entitled to copyright protection under the Copyright Act, 1957. The images of packaging of the said products are given in paragraph 4C of the plaint. The plaintiff has also obtained copyright registration in the label/ artistic work “ ” under registration no. A-76013/2006.
7. In the year 1995, the plaintiff registered the domain name, ‘CASTROL.COM’. As early as the year 1998, this domain name has been used as an active website on which the plaintiff’s marks and packaging are prominently displayed. Apart from the aforementioned domain name, the plaintiff owns several other domain names such as ‘CASTROLOIL.COM’, ‘CASTROL.ORG’, ‘CASTROL.NET’, ‘BPCASTROL.COM’, ‘CASTROL.CO.IN’, ‘CASTROL.IN’.
8. Over the years, the plaintiff has expanded its online presence on the world's most popular and trafficked social networking sites. In addition to this, the plaintiff has been promoting engine oils, coolants and lubricants bearing the plaintiff’s marks and packaging through product placement in various Indian movies and television/OTT shows. It has also sponsored various international sporting events such as FIFA World Cup, the Premier League, ICC Cricket World Cup etc. As a result of the above-mentioned activities undertaken by the plaintiff, the mark ‘CASTROL’ and other registered trademarks/trade dress of the plaintiff enjoy immense reputation and goodwill among consumers.
9. The plaintiff’s products bearing the mark ‘CASTROL’ had annual sales of Rs. 4,800 crores (approx.) in the year 2021-2022 in India. During the period 2010-2022, the sales of the plaintiff’s products bearing the mark ‘CASTROL’ in India are given in paragraph 33 of the plaint. The plaintiff’s marketing expenses for the aforesaid products during the period 2011-2022 in India are given in paragraph 34 of the plaint.
10. The defendant no.1 is the sole proprietor of Tridev Auto Parts and the defendant no.2 is trading as UP Oil Traders.
11. In November 2023, the plaintiff came across the defendant no.1’s trademark application for the impugned device mark ‘CRISTOL ACTIV’/ covering "industrial oils, greases, lubricants oils" under class 4 bearing application no. 5476778. Thereafter, the plaintiff’s Indian representative initiated an investigation into the defendant no.1. From this investigation, it emerged that the defendant no.1 is offering for sale engine oils and lubricants bearing the impugned mark ‘CRISTOL ACTIV’ and packaging similar to that of the plaintiff, through brick-and-mortar stores and the third-party business listing website, IndiaMart.
12. Pursuant to this investigation, the plaintiff’s Indian representative sent a legal notice dated 13th December, 2023 to the defendant no.1 and its counsel via courier and email. Since no reply was forthcoming, the plaintiff’s Indian representative sent a reminder letter dated 21st December, 2023 via email. However, it elicited no response from the defendant no.1.
13. Furthermore, in December 2023, during routine Internet searches, the plaintiff found that the defendant no.2 is also engaged in marketing and sale of engine oils and lubricants bearing the impugned mark ‘CRISTOL ACTIV’ and packaging similar to that of the plaintiff.
14. The plaintiff once again engaged an investigation firm to investigate the defendant no.2. It was revealed in the investigation that both the defendants are working in tandem and are engaged in the business of retail/wholesale of engine oils and lubricants bearing the impugned mark and packaging similar to that of the plaintiff.
15. Accordingly, the plaintiff filed the present suit on 10th January, 2024 seeking to restrain the defendants from carrying on their infringing activities.
PROCEEDINGS IN THE PETITION
16. On 11th January, 2024, this Court granted an ex parte ad interim injunction in favour of the plaintiff restraining the defendants from manufacturing, selling and advertising the engine oil, coolants, gear oils and lubricants or any cognate goods bearing ‘CRISTOL’/, ‘CRISTOL ACTIV’ /, ‘ACTIV’/,, ‘ACTIBOND’/ marks and packaging similar to that of the plaintiff. This Court also appointed a Local Commissioner to visit the defendant no.2’s premises.
17. The Local Commissioner conducted the commission on 17th January, 2024 at the defendant no.2’s premises. A total of 1,082 counterfeit bottles bearing the plaintiff’s ‘CASTROL’ mark were seized by the Local Commissioner. Additionally, the Local Commissioner seized 261 bottles bearing the impugned ‘CRISTOL ACTIV’ mark.
18. Via order dated 18th March, 2024, the Joint Registrar noted that the defendant no.2 was duly served through email and speed post on 11th March,
2024. Despite this, the defendant no.2 did not enter appearance and no written statement was filed on behalf of the defendant no.2.
19. The present suit has already been decreed qua the defendant no.1 via order dated 13th September, 2024 on the basis of a settlement. In the same order, it was noted that the defendant no.2 has not filed his written statement within the maximum permissible period of 120 days and the right to file the same was closed. Further, the defendant no.2 was also proceeded against exparte.
20. The plaintiff now seeks a decree against the defendant no.2 in terms of Order VIII Rule 10 of the Code of Civil Procedure, 1908 (hereinafter, ‘CPC’).
ANALYSIS AND FINDINGS
21. I have heard the submissions of Mr. Urfee Roomi, learned counsel for the plaintiff and also perused the material on record.
22. The plaint has been duly verified and is also supported by the affidavit of the plaintiff. In view of the fact that no written statement has been filed on behalf of the defendant no.2, all the averments made in the plaint have to be taken to be admitted. Further, since no affidavit of admission/denial has been filed on behalf of the defendant no.2 in respect of the documents filed with the plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules 2018, the same are deemed to have been admitted. Therefore, in my opinion this suit does not merit trial and the suit is capable of being decreed in terms of Order VIII Rule 10 of CPC.
23. From the averments made in the plaint and the evidence on record, the plaintiff has been able to prove that it is the registered proprietor of the trademark ‘CASTROL’ and other formative marks. Due to its long and continuous use, the plaintiff has also acquired a copyright over the packaging used in its bottles.
24. The plaintiff has placed on record images of the defendant no.2’s impugned trademarks/packaging to show that the defendant no.2 is indulging in infringement and passing off of the plaintiff’s registered mark, ‘CASTROL’ and other formative marks. The similarities between the plaintiff’s marks/packaging and the defendant no.2’s impugned marks/packaging are set out below:
1. CASTROL CRISTOL
2. ACTIV CRISTOL ACTIV
3.
4. ACTIBOND ACTIBOND
5.
25. The comparison above categorically shows that the device marks and packaging used by the defendant no.2 are identical in terms of colour combination, arrangement of letters and figures. The similarities are highlighted below: i. The defendant no.2 merely removed the letter ‘A’ from the plaintiff’s word mark ‘CASTROL’ and replaced it with letters ‘R’ and ‘I’ to arrive at the word mark ‘CRISTOL’. Hence, the defendant no.2’s mark bears phonetic, structural and visual similarities to that of the plaintiff. ii. Furthermore, the defendant no.2 has also copied the structural scheme of the plaintiff’s device ‘CASTROL’ including a green sphere followed by the word ‘CRISTOL’ in a red italicized font. iii. The ‘CRISTOL ACTIV’ mark of the defendant no.2 incorporates the plaintiff’s ‘ACTIV’ mark as a whole. iv. The defendant no.2’s oil in action device mark at S. No. 3 of the table above and ‘ACTIBOND’ mark are exact replicas of the plaintiff’s marks. v. The overall colour scheme, layout and structure of the bottles of the two competing products are nearly identical. Furthermore, the defendant no.2’s packaging incorporates all the marks detailed above.
26. Hence, the defendant no.2 has replicated the contents, colour scheme, and the word marks/ device marks of the plaintiff’s packaging.
27. Based on the discussion above, a clear case of infringement of trademark and copyright is made out. The defendant no.2 has taken unfair advantage of the reputation and goodwill of the plaintiff’s trademarks/artistic works and has also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered mark without any plausible explanation. Therefore, the plaintiff has established a case of passing off as well.
28. At this stage, it may be relevant to note that the defendant no.2 did not appear before the Court, despite service of summons on 11th March, 2024 via email and speed post. Further, no communication on behalf of the defendant no.2 has been placed on record in respect of the allegations of the plaintiff in this suit. Hence, the right to file written statement for the defendant No.2 was closed on 13th September, 2024.
29. Since the defendant no.2 has failed to take any requisite steps to contest the present suit, despite having suffered an ad interim injunction order, it is evident that it has no defence to put forth on merits.
RELIEF
30. In view of the foregoing analysis, a decree of permanent injunction is passed in favour of the plaintiff in terms of prayer clauses 70(a), 70(b), 70(c), 70(d) of the plaint.
31. Insofar as the reliefs of damages and costs sought in prayer clauses 70(i) and 70(j) are concerned, reference may be made to the judgment in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
32. In the present case, the report of the Local Commissioner sheds light on the illegal activities of the defendant no.2, who has been selling counterfeit products under the marks ‘CASTROL ACTIVE’ and ‘CASTROL GTX’, in addition to selling the infringing bottles bearing ‘CRISTOL ACTIV’ mark. The Local Commissioner seized a total of 1,082 counterfeit bottles and 261 bottles bearing the impugned mark ‘CRISTOL ACTIV’. Taking a holistic view, the actions of the defendant no.2 are clearly aimed at capitalizing on the plaintiff’s goodwill and reputation.
33. In light of the foregoing analysis, I am of the view that the defendant no.2’s conduct warrants the imposition of both costs and damages. Thus, in addition to the decree passed in the terms above, the plaintiff is also awarded a cumulative sum of Rs. 7,00,000/- towards damages and costs.
34. Counsel for the plaintiff does not press for the remaining reliefs.
35. Let the decree sheet be drawn up.
36. All pending applications stand disposed of. AMIT BANSAL, J NOVEMBER 27, 2024