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CASTROL LIMITED vs VIPIN, TRADING AS ALL IN ONE BUSINESS SOLUTIONS AND ANR.

Information

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: September 18, 2024
% Pronounced on: October 04, 2024

+ CS(COMM) 160/2024 & I.A. 4203/2024-Stay

CASTROL LIMITED …..Plaintiff
Through: Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Ayush Dixit and Ms. Anuja Chaudhary, Advocates

Versus

VIPIN, TRADING AS ALL IN ONE BUSINESS
SOLUTIONS AND ANR. …..Defendants
Through: Mr. Yash in person appearing on behalf of D-2.
CORAM:
HON’BLE MR. JUSTICE SAURABH BANERJEE
J U D G M E N T
Brief facts:
1. By way of the present lis the plaintiff seeks a decree of permanent injunction against the defendants for infringement of its trademark and copyright, passing off and damages along with other ancillary reliefs against defendant no.1-Vipin, trading as All in One Business Solutions and defendant no.2 Yash Kashyap (hereinafter referred to as “defendants”).
2. The plaintiff, Castrol Limited, a part of the BP (British Petroleum) group of companies, is a company organized and existing under the laws of England, with a place of business at Technology Centre, Whitchurch Hill, Pangboume, Reading, RG8 7QR, United Kingdom. The mark CASTROL/ / / are the house mark of the plaintiff. The mark CASTROL has been used by the plaintiff on a worldwide basis at least since the year 1909 in relation to its goods, including, but not limited to engine oils and lubricants, and other related services.
3. The plaintiff has also used, and continues to use, on a worldwide basis, the word marks ACTIV, , ACTIBOND, , and on and in relation to its engine oils and lubricants. The plaintiff got registered the mark “CASTROL” in Class 04 on 29.06.1942, with user claim from 01.01.1911. The “CASTROL” mark has been declared to be a well-known mark by the Trademarks Registry. The plaintiff has even obtained copyright registration in the label/ artistic work under registration No.A 76013/2006. The plainitiff has had an annual turnover of USD 109,078 Million, USD 164,195 Million, USD 248,891 Million in last three years respectively.
4. The defendant no.1 is trading as All in One Business Solutions with its address at 1st Floor, Shop No. 58, Kheri Road, Nehar Paar, Near Bank of Baroda, Faridabad, Haryana-121 002. The defendant no.2-Yash Kashyap is having his addresses at (1) 1st Floor, Shop No. 58, Kheri Road, Nehar Paar, Near Bank of Baroda, Faridabad, Haryana-121 002 and (2) Block-A, Wazirpur Rd, Hanuman Nagar, Sector 87, Neharpar, Faridabad, Haryana-121 002.
Case of the plaintiff:
5. As per the learned counsel for plaintiff, the defendants are involved in manufacture, marketing, and sale of engine oils, lubricants, etc., bearing the defendants’ marks and packaging on and in relation to these goods. Additionally, the defendants also offer for sale their products bearing the defendants’ marks and packaging through brick-and-mortar stores as well as through the third-party business listing website, IndiaMart.
6. The plaintiff first learned of the defendant no.1 in January 2024, when it came across application no.5967114 for the mark ‘SUPER CASTROL’ (hereinafter referred to as the “impugned mark”) with respect to “industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting” in Class 4 before the Trade Mark Registry filed by the defendant no.1 on “a proposed to be used” basis. Interestingly, as per learned counsel, in the Examination Report issued by the Trade Marks Registry, the plaintiff’s registered trademark CASTROL was also cited as pre-existing mark which was similar to the defendants’ proposed mark.
7. Investigation and detailed searches of the defendants thereafter by the plaintiff revealed that they had commenced use of the impugned mark in a deceptively similar packaging as that of the plaintiff. The pictorial representation thereof is reproduced as under:-

Plaintiff
Defendants

Proceedings before this Court:
8. This prompted the plaintiff to approach this Court by way of the present suit seeking the following reliefs against the defendants:-
“a. An order for permanent injunction restraining the Defendants, and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/entities that are related or affiliated to the Defendants, individually or collectively, as the case may be, and all others, acting for and on behalf of the Defendants, individually or collectively, from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the Internet or otherwise, engine oil, coolants, gear oils and lubricants and/or similar/ related/ allied/ cognate goods, bearing the Defendants’ Marks and Packaging, including, SUPER CASTROL, ACTIV, ACTIBOND, , , , , and/ or the , and marks or packaging that are nearly identical/similar to the Plaintiffs Marks, Name and Packaging (as defined in sub-paragraphs 4A, 4B and 4C);
b. An order for permanent injunction restraining the Defendants, and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/entities that are related or affiliated to the Defendants, individually or collectively, as the case may be, and all others, acting for and on behalf of the Defendants, from doing any act that amounts to trademark infringement of the Plaintiffs registered marks (as detailed in paragraph 28);
c. An order for permanent injunction restraining the Defendants, and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/ entities that are related or affiliated to the Defendants, as the case may be, and all others, acting for and on behalf of the Defendants from doing any act that amounts to infringement of the copyright in the Plaintiff’s Marks and Plaintiffs Packaging (as defined in paragraph 4A, 4B and 4C);
d. An order for permanent injunction restraining the Defendants, and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/entities that are related or affiliated to the Defendants and all others, acting for and on behalf of the Defendants from passing-off their engine oil and lubricants and/ or similar/ related/ allied/ cognate goods bearing the Defendants’ Marks and/ or the Defendants’ Packaging as those of the Plaintiff or that may suggest a connection or association with the Plaintiffs Marks and/or the Plaintiff’s Packaging;
e. An order of mandatory injunction for recall and delivery up by the Defendants to the Plaintiff of all engine oil and lubricants and similar/ related/ allied/ cognate goods, packaging, labels, promotional and advertising material, price tickets, stationery, brochures and any other materials that bear the Defendants’ Marks and/or the Defendants’ Packaging and marks that incorporate the Defendants’ Marks and/or the Defendants’ Packaging and/or marks and/ or packaging that are nearly identical/ deceptively similar to the Plaintiffs Marks and/or the Plaintiffs Packaging as well as any plates, moulds, transfers, negatives, duplicating equipment or other device used or intended to be used for printing or reproducing copies of the Defendants’ Packaging in possession of the Defendants, its subsidiaries or persons or entities related to the Defendants or under control of the Defendants, or with a dealer, distributor, retailer or affiliate of the Defendants;
f. A decree for rendition of accounts of the profits earned by the Defendants, individually and collectively, from the activities complained of and a decree for the amount so found due to be passed in favour of the Plaintiff. The Plaintiff undertakes to file such court fee, as may be required by this Hon’ble Court at any point of time in future;
g. An order directing the Defendant No. 1 to withdraw/ cancel trade mark Application No. 5967114, for the SUPER CASTROL mark, respectively, and any other application(s) the Defendants may have filed/owns for the Defendants’ Marks, marks that incorporate the Defendants’ Marks, and marks that are identical/ similar to the Plaintiffs Marks, Name and Packaging;
h. An order declaring the Plaintiffs ACTIV Device mark , to be well-known in view of the averments and contentions put forth by the Plaintiff.
i. A final money decree in favour of Plaintiff for payment of damages in the sum of Rs.20,000,500/- or in such higher sum as may be determined/ascertained pursuant to the rendition of accounts;
j. An order for costs of the proceeding;”

9. This Court, on 22.02.2024, issued summons in the present suit when it was listed for the first time and in an accompanying application under Order XXXIX rules 1 & 2 of the Civil Procedure Code, 1908 (hereinafter referred to as the “CPC”) passed an ex-parte ad interim order of injunction on the same day as under:-
“Accordingly, till the next date of hearing, the Defendants and any person acting on their behalf are restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, engine oil, coolants, gear oils and lubricants and/ or similar/ related/ allied/ cognate goods bearing “SUPER CASTROL… …”

10. Additionally, vide the very same order dated 22.02.2024, this Court also appointed a Local Commissioner for conducting search and seizure of the impugned goods at the premises of both defendant nos.1 and 2.
11. As per the Local Commissioner’s report, whilst execution of the Commission, 99 bottles bearing the impugned mark along with 4 bill books at the premises of the defendants were recovered.
12. Thereafter, though both defendants were duly served on 15.03.2024 and the present suit was listed on 25.04.2024, 10.07.2024, 22.07.2024, 02.08.2024 and 21.08.2024 prior to the same being listed before this Court on 18.09.2024, the defendant no.1 has not chosen to appear on any of the said dates despite service on 15.03.2024. As such, the defendant no.1 is proceeded ex-parte. Further, since the defendant no.1 has also chosen not to file its written statement within the stipulated mandatory time period, which is already long over, the right of the defendant no.1 to file written statement stands closed.
13. The defendant no.2 on the other hand, though has been appearing before this Court in person since 25.04.2024, however, has also chosen not to file the written statement within the stipulated mandatory time period, which is already long over. As such, the right of the defendant no.2 to file written statement also stands closed. In fact, the said defendant no.2 appearing in person, submits that he does not wish to contest the present matter and is willing to suffer a decree in terms of prayers (a) to (d) of the plaint.
14. Under these circumstances, the learned counsel for plaintiff, relying upon Castrol Limited v. Rajesh Kumar Tuteja, trading as Krishna International & Anr. 2024 SCC OnLine Del 1107, prays for pronouncement of judgment followed by a decree under Order VIII rule 10 of the CPC against both the defendants.
Analysis and Findings:
15. This Court has heard the learned counsel for the plaintiff as also gone through the pleadings and the documents on record as well as the report of the Local Commissioner.
16. The plaintiff is the owner of well-established registered trademarks CASTROL/ / / , ACTIV, , ACTIBOND, , and and their derivatives as detailed hereinabove. The said registered trademarks of the plaintiff are unique, different and distinct in their own right as there are no other. The plaintiff, through its long continuous and uninterrupted extensive use of the said registered trademarks, has been able to build up a worldwide presence, including in India. There is a fame, repute and goodwill attached with the registered trademarks CASTROL/ / / , ACTIV, , ACTIBOND, , and and their derivatives of the plaintiff. The people in India are very much cognizant of the plaintiff and its registered trademarks, which are synonymous with each other. Any engine oils and lubricants and other related products under the marks CASTROL/ / / , ACTIV, , ACTIBOND, , and and/ or their derivatives are only identified and reckoned with that of the plaintiff.
17. Therefore, there was no occasion for anyone like the defendants to have adopted and/ or commenced usage thereof, and that too for the very same products. The pictural depiction hereinabove fortifies that there can be no iota of doubt that the defendants adopted and commenced usage of the impugned marks for the sole reason of taking benefit of the registered trademarks of the plaintiff and also their fame, goodwill and repute.
18. Given the situation that this Court is dealing with the uncontroverted facts and narration as set out by the plaintiff in the plaint since both defendants, despite being duly served, have not filed their written statement(s) before this Court. Therefore, the pleadings made by the plaintiff remain uncontroverted, uncontested, unrebutted and thus unchallenged by both the defendants. As such, for all purposes the pleadings made therein are deemed to have been admitted by them. Moreover, neither of the said defendants have been able to set up a defence/ case which is anything/ anywhere contrary thereto.
19. Moreover, on one hand the defendant no.1 has also chosen to deliberately remain absent and on the other hand, the defendant no.2 has also chosen to accept the case set out by the plaintiff and suffer a decree, albeit in terms of prayers (a) to (d) of the plaint.
20. Consequently, under such circumstances, there is no impediment in this Court granting a decree in terms of the prayers sought by the plaintiff in the plaint.
Conclusion:
21. Accordingly, the defendants, and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/ entities that are related or affiliated to the defendants, individually or collectively, as the case may be, and all others, acting for and on behalf of the defendants, individually or collectively are permanently restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the Internet or otherwise, engine oil, coolants, gear oils and lubricants and/ or similar/ related/ allied/ cognate goods, bearing any marks that are similar to that of the plaintiff’s mark ‘CASTROL’ or its packaging, copyright i.e. , so as to infringe or pass off plaintiff’s mark or its copyright, including but not limited to SUPER CASTROL, ACTIV, ACTIBOND, , , , , and/ or the in any manner whatsoever as also the defendant No.1 is directed to withdraw trade mark application No.5967114 for the mark SUPER CASTROL, and any other application(s) that incorporate marks that are identical/ similar to the plaintiff’s marks, name and packaging within a period of six weeks from the passing of the present judgment.
22. Qua prayers (i) and (j) of the plaint relating to damages and costs, considering that the institution of the present suit is per se based on the mala fide acts of the defendants, who as per the plaint, have blatantly copied the registered trademarks CASTROL/ / / and their derivatives of the plaintiff in all respects, and which is admitted by the defendant no.2, and which has also been supported by the report of the Local Commissioner, the plaintiff has per force been constrained to approach this Court. The same has resulted in the plaintiff encountering unwarranted litigation leading to it not only suffering damages on that account as also incurring financial expenditure and actual cost(s).
23. In view thereof, de hors that the plaintiff has filed an affidavit of cost of one Mr. Harshit Gupta, attorney for the plaintiff to the effect that it has incurred total actual costs of Rs.13,95,346/-, in the considered opinion of this Court, the plaintiff is cumulatively entitled to a sum of Rs.10,09,000/- {towards damages quantified @ Rs.3,00,000/- and towards costs quantified @ Rs.7,09,000/- (Rupees Ten Lakhs Nine Thousand Only) [Rs.1,99,000/- towards the court fees paid + Rs.1,10,000/- towards the fee of the Local Commissioners paid + Rs.2,00,000/- towards token legal fees paid + Rs.1,00,000/- towards token costs + Rs.1,00,000/- towards token special costs]}, to be paid equally by both defendant nos.1 and 2 within a period of six weeks from today. If the aforesaid sum is not paid within the said period, then the plaintiff shall also be entitled for claiming interest @ 6% per annum till the realisation of the aforesaid sum.
24. Qua prayer (e), the plaintiff is directed to recover all the good seized by the Local Commissioner on 25.02.2024 and released on superdari to the defendants, within a period of six weeks, with prior intimation to the defendants. Qua remaining prayers, since no arguments were advanced in respect of them, as such they are not being dealt with.
25. As such, the present suit is decreed in terms of the aforesaid.
26. Decree sheet be drawn up accordingly.

SAURABH BANERJEE, J.
OCTOBER 04, 2024/rr

CS(COMM) 160/2024 Page 1 of 12