Castrol Limited And Anr. vs Mr. Subhash Kapoor And Anr.
2002 Latest Caselaw 378 Del

JUDGMENT

J.D. Kapoor, J.

1. This is a suit for permanent injunction arising out of infringement of trade mark and passing off. Though initially the relief of rendition of accounts of profits and delivery was also sought but it has now been given up. The case of the plaintiff is based on the following premise:-

2. That the plaintiff No. 1 is a company incorporated under the laws of England and has been carrying on its business on large and extensive scale in the manufacture, processing and marketing of high grade lubricating oil products in the united Kingdom and in several countries all over the world under the trade mark CASTROL of which it is a registered proprietor.

3. That the plaintiff No. 2 is engaged in the business of processing and trading in high grade automotive and industrial lubricants, greases, brake fluids, wood preservatives, metal cleaning compounds and various speciality products in India. It is also the registered proprietor of the trade mark INDROL registered under Clause 4 in respect of Hydraulic fluids and others. Similarly the logo of the plaintiff is also registered. The annual turn over of the goods sold by plaintiff No. 2 during the period 1983 to 1992 has been shown in para 10 of the plaint.

4. Some time in December, 1993 the plaintiffs came to know that the trade mark INDOL is being used by the defendants. The get up, lay out and colour combination of both the Castrol Crimson Container and the INDROL green container have been extensively advertised and depicted in colour in the various printed media.

5. In December, 1983 it came to the notice of the plaintiffs through their Attorney that the defendant No. 1, proprietor of defendant No.2 has adopted the trademark INDOL in respect of multi-purpose and wheel bearing grease and gear oil. It has similar colour combination, get up, lay-out as that of the plaintiffs' products. Similarly they have also adopted the trade mark INDEROIL Girling Brake Clutch Fluid Crimson on which their cap is having the mark INDOL.

6. The perusal of the pleadings shows that the defendant has set up a defense as contemplated under Section 33 of the Trade and Merchandise Act, 1958. It reads as under :-

"33. Saving for vested rights -- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark form a date prior -

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his.

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.

7. According to the defendants they are the prior user of the said trade mark though it is not registered in their name. The defendants also filed tow invoices in support of the claim that they have been using this trade mark since 1981. However these invoices are of very petty amount running into hundreds only. On the contrary the plaintiffs have filed several such documents which show that they had sought the registration of INDROL way back in 1979.

8. Though the defendant contested the claim of the plaintiff at initial stages while resisting the interim order of injunction but subsequently did not take interest in the proceedings and allowed itself to be proceeded ex parte. The plaintiffs filed the affidavit by way of evidence. In support of its claim the plaintiffs have proved the following documents:-

1. Exhibits P-1 & P-2 are the documents showing the advertisements of the plaintiffs products in printed media.

2. Exhibits P-3 & P-4 are the containers used by the defendants.

3. Exhibits P-5 to P-8 are the documents showing the test purchases form the shop of the defendants.

4. Exhibits P-9 to P-13 are the documents showing the comparison of the plaintiffs and defendants products.

9. However in December, 1982 the name of the Company was permitted to be changed to Indrol Lubricants and Specialities Pvt. Limited.

10. The comparison of the infringed and infringing articles and the trade mark shows exact similarities of colour combination, get up, lay out which is an artistic work as defined in Section 2(c) of the Copy Right Act. It reads as under :-

"2. Interpretation- In this Act, unless the context otherwise requires-

(c) "artistic work" means-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) an [Work of architecture] and

(iii) any other work of artistic craftsmanship;"

11. Apart form this the trade mark INDOL adopted by the defendants has deceptive similarities in look and sound to the trade mark INDROL. The use of such a word on the background of the similar colour combination, get up and lay-out is bound to create confusion amongst the unwary customers as to its origin and source.

12. It is settled law that wherever there is an act of passing off or adoption of a trade mark or a colour scheme or lay-out demonstrating deceptive similarities and it leads to misrepresentation in the course of the trade to the prospective customers that the products of the defendants are in some may connected with or have some relationship with the products of the plaintiffs. There is always a risk of immense loss in reputation or goodwill earned by a party over the years at the huge expenses spent in advertising as the motive of the infringing party is only to trade and cash upon the goodwill and reputation of the plaintiff by way of selling the products of inferior quality.

13. Even if a party is not registered owner of the trade mark in a particular country but has its business outlets and is the prior and continuous user it has a right to protect its trade mark from transborder infringement. Monstrous injustice would follow to the plaintiff who has been in the business for many years and earned a good will and reputation merely because it has no business in a particular country if its trade mark having deceptive similarities is used by, the unscrupulous parties. The remedy is of statutory nature in case of registered trade mark owner whereas in case the owner has not got its trade mark registered but is found to be prior continuous and long user the adoption of its trade mark by any other party amounts to offence of passing off. The comparison of the photographs of the two containers shows that without effecting any change the colour scheme, get up and lay-out have been pirated. The plaintiffs have succeeded in establishing that they are the prior user of the trade mark but has also by using the trade mark INDROL which is not only phonetically deceptively similar but visually also. They have the right to protect the aforesaid trade marks.

14. Moreover the plaintiffs have filed the legal proceedings certificate pertaining to the trade mark INDROL and CASTROL which are the registered trade marks of plaintiffs 1 & 2 respectively.

15. As a consequence the suit is decreed in terms of the prayers made in the plaint except for the relief of rendition of accounts. The decree sheet be drawn up accordingly.

16. the suit and the pending applications stand disposed off.