Castrol Limited And Another vs Bengal Sales Corporation (India) ...
1996 Latest Caselaw 600 Del

JUDGMENT

K. Ramamoorthy, J.

1. The plaintiffs have filed the suit claiming to be the owner of the trade mark Castrol. According to the plaintiffs, it is in business for a long time. In para 9, it is staled as follows :

(9) The plaintiff No. 1, is the registered proprietor in India of several trade marks, including the trade mark Castrol, Registered under No. 1494 in class 6 as of 29th June, 1942 in respect of bills for heating, lighting and lubricating.

2. The details of the business and the products are mentioned in para 10 of the plaint in the following terms :

(10) The trade mark CASTROL is also registered in India under No. 26026 dated 17th November 1969 in respect of industrial oils and greases (other then edible oils, fats and essential oils) hydraulic fluids being oils, lubricants, fuels and illuminant as a distinctive logo comprising a solid coloured circle across which is an irregularly shaped white portion occupying about one half of the total area of the mark. The word CASTROL appears in an oblique script across the horizontal member of the said white portion. This logo suggests a stylised stenciled letter "C" (hereinafter referred to as the CASTROL logo). The aforesaid registration is renewed upto 17.11.1997 and being a Part "A" registration, more than 7 years old, is conclusively valid under Section 32 the Act."

3. In para 12, the annual turnover of the second plaintiff that is M/s. Castrol India Ltd. is given in the following manner :

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     Year ended                   Turnover Rs.
 --------------------------------------------------
     June, 1983                 47,11,61,115.00 
     June, 1984                 52,01,41,314.00 
     June, 1985                 58,85,71,716.00 
     June, 1986                 73,56,26,937.00 
     June, 1987                 90,74,80,674.00 
     June, 1988              1,14,20,91,069.00 
     June, 1989              1,54,86,80,000.00 
     March, 1990           1,16,60,89,000.00 
     March, 1991           1,83,85,08,000.00 
     December, 1991   1,64,46,88,000.00 
     December, 1992   2,81,34,73,000.00 
     December, 1993   4,00,61,69,000.00 
     December, 1994   5,46,46,39,000.00
 --------------------------------------------------  
 
 

5. In para 14, the plaintiffs have stated that the plaintiffs have been extensively advertising their CASTROL products through printed media including newspapers, magazine and trade journals and other means available in the market. Expenses incurred by the plaintiffs for the last 12 years are given in the following terms :

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    Year ended                  Turnover Rs.
 --------------------------------------------------
    June, 1984                       7,26,368.00 
    June, 1985                     43,61,398.00 
    June, 1986                     54,53,918.00 
    June, 1987                     90,55,319.00 
    June, 1988                   104,11,601.00 
    June, 1989                   129,15,000.00 
    March, 1990                   84,47,000.00 
    March, 1991                1,82,46,000.00 
    December, 1991        2,65,12,000.00 
    December, 1992        5,07,39,000.00 
    December, 1993        8,43,33,000.00 
    December, 1994 14,88,74,39,000.00
 -------------------------------------------------- 
  
 

 6. In para 15 it is shown as to how the container is projected by the plaintiffs.  
 

7. In para 17, the plaintiffs would state about the sale of ball bearing grease with another mark AP 3 which is being done since 1967.

8. In para 18 the plaintiffs have stated that the tin container in which the packed material or CASTROL Ball bearing grease AP 3 is being and would constitute original artistic work under Section 2(c) of the Copyright Act, 1956, which has been designed and drawn by the plaintiffs. It is stated in the plaint that the first defendant is sole proprietor of second defendant. It is the case of the plaintiffs that the defendants have adopted and used deceptively similar trade mark BESTROL in respect of Bestrol Special AP-3 Grease. According to the plaintiffs these containers are being used by the plaintiffs since 1967, the defendants have been using the identical logo.

9. In para 20 the plaintiffs have stated that the word BESTROL appears in an oblique script across the horizontal member of the said white portion. The said logo adopted and used by the defendants suggests a stylish stenciled letter "C" having same and similar colour combination, get up, size and feature as those of the plaintiffs' containers." On this allegation the plaintiffs have come forward with the relief of injunction.

10. The second defendant has filed the written statement staring that the defendants have been using the trade mark BESTROL, since 1979 and the plaintiffs have not objected to it and now the plaintiffs cannot seek the relief. The defendants have also stated that the plaintiffs cannot claim any exclusive right in the user of trade mark CASTROL and also trade mark INDROL.

11. The plaintiffs have filed the following documents :

(1) Photostat copy of Registration certificate pertaining to trade mark 1494, 2263, 260626, 285343, 289629, 373756, 373757, 373758 and 373759.

(2) Some literature of the plaintiff's product bearing the trade mark CASTROL AP 3 and other marks.

(3) Photographs of plaintiffs Ball bearing grease bearing the trade mark CASTROL AP 3 like Annexure "P".

(4) Photographs of defendants Ball bearing grease under the trade mark BESTROL AP 3 like Annexure "d".

(5) Notarial Report dated 4.11.1995.

(6) Photostat copy of the Power of Attorney in favour of Mr. M. H. Thanawala.

(7) Photostat copies of the orders passed in earlier matters.

12. The defendants have filed the following documents :

(1) Zerox copy of page No. 294 appearing in Directory for the year 1981-82 (Directory of 1,500 Indian manufacturers, exporters and suppliers) containing the business address of Plaintiff No. 1 and that of defendant No. 2 on the same pages wherein the mark BESTROL of defendant No. 2 is published and appearing.

(2) Zerox copy of Gate pass for removal of excisable goods under S. No. A-14 dated 2.5.1986 of the defendant having BESTROL as identification mark.

(3) Zerox copy of Bill No. 3651 dated 25th day of September, 1985.

(4) Zerox copy of Order No. BSC 11059 dated 29th May, 1985.

(5) Zerox copy of Bill No. 3693 dated 10.10.1985.

(6) Zerox copy of letter dated 27.9.1985 addressed to the defendants.

(7) Zerox copy of Bill No. 3691 dated 10.10.1985.

(8) Zerox copy of Order No. BSC 5025 dated 14.9.1985.

(9) Zerox copy of Bill No. 3653 dated 26.9.1985.

(10) Zerox copy of Order No. BSC 5023 dated 14.9.1985.

(11) Zerox copy of Bill No. 3652 dated 26.9.1985.

(12) Zerox copy of Order No. BSC 5021 dated 13.9.1985.

(13) Zerox copy of Order No. BSC 5019 dated 20.3.1985.

(14) Zerox copy of Bill No. 4894 dated 15.2.1988.

(15) Zerox copy letter dated 9.2.1988 addressed to the defendants.

(16) Zerox copy of Bill No. 4871 dated 15.1.1988.

(17) Zerox copy of Bill dated 9.1.1988.

(18) Zerox copy of Order No. 974 dated 7.1.1988.

(19) Zerox copy of Bill No. 4865 dated 4.1.1988.

(20) Zerox copy of Bill No. 5378 dated 6.6.1989.

(21) Zerox copy of Order No. BSC 11067 dated 30.5.1989.

(22) Zerox copy of Bill No. 5391 dated 16.6.1989.

(23) Zerox copy of Bill No. 5368 dated 24.5.1989.

(24) Zerox copy of Bill No. 5368 dated 15.5.1989 in favour of the defendants

(25) Zerox copy of Bill No. 5070.

(26) Zerox copy of Bill No. 2367 dated 26.3.1985.

(27) Zerox copy of Bill No. 3880 dated 13.1.1986.

(28) Zerox copy of Bill No. 5215 dated 8.12.1985.

(29) Zerox copy of Bill No. 3859 dated 3.1.1986.

(30) Letter dated 27.6.1990.

(31) Zerox copy of Bill No. 5714 dated 3.3.1990.

(32) Letter dated 22.6.1990.

(33) Bill No. 5709 dated 27.6.1990 and letter dated 6.2.1992.

(34) Zerox copy of Bill No. 6378 dated 8.2.1993.

(35) Zerox copy of Bill No. 2206 dated 28.1.1992.

(36) Zerox copy of Bill No. 6370 dated 29.1.1993.

(37) Zerox copy of Bill No. 11327 dated 29.1.1991.

(38) Zerox copy of Bill No. 5888 dated 4.2.1991.

(39) Zerox copy of letter dated 21.4.1985.

(40) Zerox copy of Bill No. 3432 dated 27.4.1985.

(41) Zerox copy of Bill No. 6328 dated 17.11.1992.

(42) Letter dated 2.11.1990.

(43) Letter dated 13.12.1990.

(44) Zerox copy of Bill No. 5856 dated 26.12.1990.

(45) Letter dated 2.12.1992.

(46) Zerox copy of Bill No. 6340 dated 10.12.1992.

(47) Zerox copy of Bill No. 497 dated 22.7.1994.

(48) Zerox copy of Bill No. 6714 dated 23.7.1994.

(49) Letter dated 27.7.1994.

(50) Zerox copy of letter dated 11.8.1994.

13. On the basis of the documents filed by the defendants it was contended by Mr. K. G. Bansal that the defendants have been using the trade mark BESTROL for more than 10 years and the plaintiff cannot seek to interdict the user now. Mr. Bansal learned counsel for the defendants relied upon the compromise entered by the plaintiffs in suit No. 1717/94 against Truchem Industries wherein the plaintiffs had agreed to the user of the trade mark BESTROL on its tin container provided the same is not in any way identical or deceptively similar to the container used by the plaintiffs. It appears from the two documents filed by the defendants that the defendants have been using the trade make BESTROL for more than 10 years and the products is being sold all over India and the plaintiffs now at this stage cannot seek injunction pending the suit. Mr. Man Mohan Singh, learned counsel for the plaintiff relied upon the judgment of this court in Tata iron & Steel Co. Ltd. v. Mahavir Steels and others , where this court considered the claim of the plaintiff therein against the user of trade mark FISCO which was deceptively similar to the plaintiff's trade mark DISCO.

14. On the facts and circumstances of that case the learned Single Judge granted injunction and the ratio laid down therein would not apply to the facts of this case.

15. Learned counsel for the plaintiffs again relied upon the Judgment in Hitachi Ltd. v. Ajay Kumar Agarwal and others (1995 PTR 122 = 1995 (2) Arb. LR 348). This case also would not help the plaintiffs. Learned counsel for the defendants Mr. K. G. Bansal relied upon the following cases for the proposition that the previous judgments not inter-parties are relevant/admissible.

The Land Acquisition Officer City Improvement Trust Board, Banglore v. H. Narayanaiah etc. , State of U.P. v. Nathho and others , Mahabir Mahton and others v. Mt. Sonmati Kuar and others , Mohannad Pasir v. Munir Khan and another (1987 All LJ 617 & ILR 1971 (1) Del 64).

I do not think I need to go into that question in this case.

16. The important consideration is that the defendants had come into the business long before filing of the suit and the plaintiffs should have taken action early. The plaintiffs cannot pretend that they came to know about the business of the defendants only recently and, therefore, they are justified in filing the suit now. Besides this, in 1993 the plaintiffs themselves had permitted the use of the trade mark BESTROL by a third party and, therefore, now the plaintiffs cannot have any grievance if the same trade mark is used by the defendants.

17. I do not want to go into all the details at this interlocutory stage and I am satisfied that the plaintiffs are not justified in bringing an action for injunction against the defendants. The plaintiffs have not established a prima facie strong case. The case of the plaintiffs that the containers used by the defendants are exactly similar to the container used by the plaintiffs and on that ground they claim relief on the basis of copyright. As I said earlier the plaintiffs should have been vigilant and alert. The balance of convenience is in favour of the defendants. The business done by the defendants would in no way effect the business of the plaintiffs because they are leading in the business. Therefore, I do not find any merit in the application.

Therefore, the IA 12746/95 under Order 39 Rules I and 2 filed by the plaintiffs for injunction is dismissed. IA No. 1720/96 under Order 39 Rule 4 for vacation of stay is allowed. There shall be no order as to costs.

18. Post the matter for further proceedings on 20.11.1996.