CASTROL LIMITED vs PAWAN KUMAR, TRADING AS BLUEXTAR LUBRICANTS
$~24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 576/2023 & I.A. 15705/2023
CASTROL LIMITED ….. Plaintiff
Through: Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Ritesh Kumar and Mr. Ayush Dixit, Advs.
versus
PAWAN KUMAR, TRADING AS BLUEXTAR LUBRICANTS ….. Defendant
Through: Mr. Pawan Kumar, Defendant in person
CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
JUDGMENT (O R A L)
% 18.12.2023
1. The plaintiff alleges that the defendant is infringing its registered trademarks and passing off its goods as those of the plaintiff, by adopting a trade dress which is similar to that of the plaintiff and copying various distinctive features thereof.
2. The plaintiff is a company which was founded in the United Kingdom in 1899, and claims to be the world leader in the field of lubricants, oils, coolants and grease, and related services, particularly in the automotive, industrial, marine and aviation sectors.
3. The plaintiff is the proprietor of the following registered trademarks:
S. No.
Reg./Appl no.
Mark
Class
Reg/App Date
1.
1117678
CASTROL
POWER 1
4
10/07/2002
2.
838183
ACTIV
4
25/01/1999
3.
3431625
CASTROL
CRB
TURBOMAX
4
09/12/2016
4. The plaintiff has also applied for registration of the following marks:
S. No.
Mark
Year of first use
1
2012
2.
ACTIBOND
2012
5. The aforesaid marks are stated to be distinctive indicia of the trade dress adopted by the plaintiff in respect of its products.
6. The plaintiff sells engine oils and lubricants in containers which bear the following distinctive appearance:
7. The plaintiff also claims that the packing used by it constitutes an original artistic work within the meaning of the Copyright Act and that the plaintiff is therefore entitled to protection against any imitation thereof.
8. In order to vouchsafe its goodwill and reputation, the plaintiff has provided figures of its annual turnover by use of the marks which are asserted in the plaint. During the years 2021 and 2022, the turnover of the plaintiff is to the tune of ? 4200 crores and ? 4800 crores respectively.
9. The plaintiff has also provided the figures of the advertisement and promotional expenses incurred by it for promotion of the brand asserted in the plaint which, during the year 2022, is to the tune of ? 130.21 crores.
10. The plaintiffs grievance is that the defendant is manufacturing and marketing motor oils and lubricants in containers which mimic the containers of the plaintiff, and also incorporate various distinctive features of the plaintiffs design. It is also alleged that the defendant is infringing the plaintiffs registered trade mark. This is indicated in para 48 of the plaint in a tabular fashion thus:
S. No.
The Defendants
Marks and/or the
Defendants Packaging
The Plaintiffs Marks and/or the Plaintiffs Packaging
Changes made by the Defendant
1.
The Defendant has copied the Plaintiffs ACTIV mark and its stylization in entirety. The Defendant, in its ACTIVE mark, has merely added letter E to arrive at the ACTIVE mark.
2.
The Defendant has merely replaced the CASTROL mark, with the word MULTI and removed the numeral 1 from the Plaintiffs mark to arrive at the MULTI POWER mark.
3.
The Defendant has merely replaced the CASTROL mark, with the word ULTRA and removed the numeral 1 from the Plaintiffs mark to arrive at the ULTRA POWER mark.
4.
The Defendant has merely replaced the CASTROL mark, with the word JET as suffix and removed the numeral 1 from the Plaintiffs mark to arrive at the POWER JET mark.
5.
The Defendant has replaced the CASTROL CRB mark and has copied TURBOMAX in totality from the Plaintiffs mark to arrive at the TURBOMAX mark.
6.
The Defendant has added the letter combination VE to the Plaintiffs ACTIBOND mark, to arrive at the Defendants ACTIVEBOND
mark. Further, the Defendant is making an attempt to come as close as possible by incorporating the
word ACTIVE, which is nearly
identical to the ACTIV mark of the
Plaintiff.
7.
The Defendant has copied the Oil
in Action Device in its entirety.
8.
The overall colour scheme, get-up and layout of the rival packaging are deceptively similar. The Defendant has only made minor alterations such as the replacement
of the CASTROL Device mark
with the BLUEXTAR Device mark and made other insignificant changes.
11. On the face of it, the marks ACTIVE, MULTI POWER, ULTRA POWER, POWER JET, TURBO MAX, and ACTIVEBOND as well as the (Oil device) and device marks are deceptively similar to the plaintiffs registered trademarks and the marks of which the plaintiff has sought registration. The defendants container is also similar in colour to the container of the plaintiff and the label used by the defendant also replicates a colour scheme similar to that contained on the plaintiffs label with a white upper half and a green lower half, containing the oil device of the plaintiff and words ACTIVE in black written above the green lower half of the label.
12. These factors are bound to result in confusion in the minds of a consumer of average intelligence and imperfect recollection, between the products of the defendant and the plaintiff. As such, the use, by the defendant, of the impugned marks and the adoption, by the defendant, of a trade dress which is deceptively similar to that of the plaintiff is clearly with a view to pass off the defendants products as those of the plaintiff.
13. In these circumstances, while issuing summons in the suit, this Court, vide order dated 21 August 2023, granted ad interim injunction and also appointed a local commissioner to visit the premises of the defendant and inventorise and take into custody the infringing products.
14. The report of the local commissioner reveals that, at the premises of the defendant, 220 units of filled containers, 40 units of stickers, 25 units of empty containers and 450 empty cartons were found and taken into custody.
15. Mr. Urfee Roomi has also drawn my attention to para 13 of the report of the local Commissioner which reads as under:
13. The Defendant upon inquiring informed us that he had been approached by one Mr. Amit Tomar (+91 8800442587) on dt. 21.08.2023 around 7:00 P.M. informing the Defendant that there was a case against him in the Honble Delhi High Court with respect to infringement of Castrols Trademarks. The Defendant allegedly denied the same, but nonetheless tried to poach more information out of Mr. Amit Tomar. Then, the Defendant allegedly inquired from Mr. Tomar if he was being extorted to which Mr. Tomar allegedly denied and pretended to inform the Defendant as a good Samaritan. Thereafter, at 7:10 P.M., Mr. Tomar messaged the Defendant with a picture of the Causelist with the Defendants name to show credibility of the information shared by him.
16. Mr. Roomi submits that these facts indicate that the defendant had secured information, in advance, of execution of the commission, which indicates that, in all probability, the defendant may have removed a considerable quantity of the offending goods, even before the commission was executed.
17. Today, Mr. Pawan Kumar appears in person on behalf of the defendant and submits that he does not seek to contest the case.
18. Mr. Roomi submits that, while the suit may be decreed in view of the statement of Mr. Pawan Kumar in terms of the prayer for injunction as sought therein, his client would also press for costs, though it would not be pressing for damages as the plaintiff has been subjected to an unnecessary litigation.
19. In view of the aforesaid, the suit stands decreed in the following terms:
(i) There shall be a permanent decree of injunction restraining the defendant as well as all others acting on his behalf from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, physically or virtually, any goods, engine oil, coolants, lubricants or any other similar, related, allied or cognate goods bearing any of the marks registered in favour of the plaintiff or the marks ACTIVE, ACTIVEBOND, ULTRA POWER, MULTI POWER, , or any other mark which is identical or deceptively similar to the plaintiffs marks.
(ii) The defendant as well as all others acting on his behalf shall stand restrained from manufacturing or selling motor oils, coolants or any other allied or cognate goods in the impugned packaging or any other packaging which bears the trade dress which is confusingly or deceptively similar to the trade dress in which the plaintiff sells its products or copies any of the essential features thereof.
(iii) Given the facts of the present case, I am of the opinion that the defendant necessarily has to be subjected to costs. Accordingly, the defendant shall pay representative costs to the plaintiff of ? 2 lakhs within a period of four weeks from today.
20. The suit stands decreed in the aforesaid terms.
21. Let a decree sheet be drawn up accordingly.
22. The next date before the learned Joint Registrar (Judicial), i.e. 7 February 2024 stands cancelled accordingly.
C.HARI SHANKAR, J
DECEMBER 18, 2023
ar
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CS(COMM) 576/2023 Page 1 of 1