Castrol Ltd. And Anr. vs Auto Link Sales Corporation And ...
2002 Latest Caselaw 1558 Del

JUDGMENT

C.K. Mahajan, J.

1. The plaintiff has filed the present suit for permanent injunction restraining infringement of copyrights, passing off, rendition of accounts of profits, delivery up etc.

2. The plaintiff No. 1 is the registered proprietor of various trademarks in India, including the trademark "CASTROL" registered under No. 1494 in Class 4 as of 29th June, 1942, in respect of oils for heating, lighting and lubricating. The said trademark "CASTROL" is also registered in India under No. 260626 dated 17th November 1969 in respect of industrial oils and greases (other than edible oils, fats and essential oils), hydraulic fluids being oils, lubricants, fuels and illuminants, 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. The plaintiff No. 1 has licensed the use of 39 of its registered trade marks to the plaintiff No. 2 through a registered User Agreement dated 9th June, 1981. The said registered user was renewed by the Govt. of India from time to time. The plaintiff No. 1 also licensed the plaintiff No. 2 the use of 15 additional trade marks through a registered user agreement dated 26th August, 1985 and further the use of 66 trade marks through License Agreement dated 26th August, 1985, The plaintiff No. 2 is the registered proprietor of the trademark "INDROL" under registration No. 400575 dated 27th January, 1983. The plaintiffs have been extensively advertising their products under the name "CASTROL" and "INDROL" throughout the country and incurred crores of rupees. The copyright in respect of "CASTROL" and "INDROL" containers subsists in respect of their get up and layout. The plaintiffs being the owners of their respective copyrights are entitled to the exclusive right to reproduce the artistic features of such containers in any material form. The "INDROL" device with its unique get up and lay out constitutes an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 registered under No. A-47185/85. It is stated that the artistic features of get up, lay out and colour combination of the CASTROL and INDROL containers have been extensively advertised and depicted in colour in various printed media.

3. The defendants have adopted and used the trademark of the plaintiffs "CASTROL" as also copied the colour combination, get up and lay out of CASTROL and INDROL containers and the INDROL device in respect of its diesel and oil filters without seeking any consent, permission or license from the plaintiffs. The defendants are using the containers which are visually similar to the CASTROL and INDROL containers of the plaintiffs. The defendants have thus infringed the copyrights of the plaintiffs in respect of their CASTROL and INDROL containers. It is stated that the defendants have made a misrepresentation in the course of trade to prospective customers which is likely to lead to immense confusion and deception and create an impression that the defendants' products are in some way connected with or some relationship or nexus with the products of the plaintiffs. This act of the defendants caused damage and injury to the plaintiffs' business as well as their reputation and goodwill. The plaintiffs and the defendants' goods are of a cognate and allied nature having identical trading channels and sold to the same class of purchasers. The defendants are passing of their goods as those of the plaintiffs. The plaintiff also addressed a legal notice to the defendants.

4. Summons in the suit were issued on 6th July, 1990 and injunction order was passed on 12th August,1996. As nobody appeared for defendant No. 2 after 13th July, 1990, vide order dated 3rd April, 1998 said defendant proceeded ex-parte. Written statement has been filed by defendant No. 1. As none was appearing on its behalf, the said defendant No. 1 also proceeded ex-parte by order dated 13th December, 2000. The plaintiffs were allowed to lead evidence by way of affidavit. The affidavit of the plaintiffs is on record.

5. From the pleadings of the parties the following issues were framed on 12th August, 1996:-

1. Whether the suit is liable to be dismissed On the grounds of waiver, acquiescence and delay?

2. Whether the suit is liable to be dismissed on the ground of suppression of material fact?

3. Whether the defendants are manufacturing and selling automobile filters under the trade name CASTROL so marked as to be designed or calculated to lead purchaser to believe that they arc plaintiffs goods?

4. Whether the defendants are using the mark CASTROL which is similar or is colourable imitation to the plaintiff's registered trade mark?

5. Whether the defendants are liable for passing off their goods as that of the plaintiffs?

6. Whether the plaintiff is entitled to relief of permanent injunction and rendition of accounts against the defendants?

7. Whether the plaintiff is entitled to damages and if so, of what amount?

8. Relief."

6. I have heard learned counsel for the plaintiffs considered the pleadings and perused the documents on record.

ISSUE NO.1:

The burden of proving the factum of acquiescence is lying on the defendants.

The defendants have neither appeared nor led any evidence. However, the plaintiff's suit could not be affected by delay or acquiescence as an action for passing of is a common law remedy being an action in substance of deceit. Whenever and wherever a person commits a breach of a registered trade mark, he commits a recurring act of breach of such trademark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. (See Waterproofing Ltd. v. Bombay Waterproof Manufacturing Company, ). There must be an express assent by the plaintiff to the defendant using the trade mark and encouraging the defendant to continue with the business to non-suit the plaintiff on the ground of ac quiescence. The courts have held that delay would not deny the plaintiff a permanent injunction. Mere delay after knowledge of infringement per se would not be a bar to the right of injunction. (See Hindustan Pencils Pvt. Ltd. v. Indian Stationary Products Co. and Anr., 1989 PTC 61. If there was inordinate delay or lapse on the part of the plaintiffs after their being aware of the infringement then the court would not come to the rescue of the plaintiff. In the present case there is no case of delay of ac quiescence made out by the defendants. This issue is accordingly decided in favor of the plaintiffs and against the defendants.

ISSUE NO.2:

The onus of this issue rests on the defendants who have failed to prove the same. The defendants were proceeded ex-parte. The plaintiff had given a notice dated 29th September, 1989. The defendants in their written statement had alleged that they had replied to the notice of the plaintiffs. The plaintiffs controverts the receipt of the said reply and state that the document is a concocted document. The defendants also failed to prove this issue. This issue is decided in favor of the plaintiff's and against the defendants.

ISSUE NO.3:

I have seen the documents on record and considered the submissions of counsel for the plaintiffs. The defendants have used deceptively similar trade mark "CASTROL" and "INDROL" in relation to diesel filters. The colour scheme, get up and lay out adopted by the defendants is similar to that of the plaintiffs. I have seen Ex.P8 and Ex.P9 which are photographs of the products of the plaintiffs and the defendants. The defendants have made use of deceptively similar artistic works/colour schemes along with the deceptively similar trade mark of CASTROL & INDROL which is a substantial reproduction of the artistic logo used by the plain-tiffs. The defendants have also engaged manufacturing cognate and allied goods and have literally copied the trade mark and logo of the plaintiffs. The use of the trade mark and the colour scheme, get up and lay out is likely to cause deception and confusion in the market and the defendants would pass of their goods as that of the plaintiffs. Accordingly, the issue is decided in favor of the plaintiffs and against the defendants.

ISSUE NO.4:

A perusal of Ex.P-5A, Ex.P-5B, Ex-P8 and Ex.-P9 which are proved on record by way of an affidavit filed by the plaintiffs it is clearly established that the defendants have adopted an identical mark which is similar or colourable imitation of the plaintiffs' registered trade mark. The plaintiffs' trade mark CASTROL & INDROL are registered under Clauses 4 and 16 on 17th November, 1969 and 21st March, 1984. The registrations were duly renewed. The plaintiffs have also placed on record certificates for use in the legal proceedings for trade marks CASTROL and INDROL respectively. On a perusal of the aforesaid Exhibits it is clear that the plaintiff's trade mark has been infringed and that the defendants are using the mark INDROL which is similar to or is a colourable imitation of the plaintiffs' registered trade mark. This issue is, accordingly, decided in favor of the plaintiff and against the defendants.

ISSUE NO.5:

The defendants are using the trade mark CASTROL & INDROL which is similar and/or a colourable imitation of the plaintiffs' registered trade mark and the get up, colour scheme and lay out, as that of the plaintiffs. This would connect the defendants' goods to those of the plaintiffs and this would amount to passing-off by the defendants of their goods as those of the plaintiffs. The goods of the plaintiffs include "high grade automotive and industrial lubricants, greases, brake fluids, wood preservatives, metal cleaning compounds, Chemicals and various speciality products". The defendants manufacture "diesel filters". The goods of the defendants bear a trade connection with the goods of the plaintiffs which results in confusion and deception. The identity of the two competing trade marks is their close resemblance and there is likelihood of deception and confusion in the market. The close resemblance of a competing trade mark would be one of the tests to establish confusion and deception. The trade connection between different goods is another test. It is quite apparent from the aforesaid that the defendants are passing-off their goods as that of the plaintiffs as would be evident from the various exhibits proved by the plaintiffs. Accordingly, this issue is decided in favor of the plaintiffs.

ISSUE NOS. 6,7 & 8:

The plaintiffs have established on record that they are the registered owners of the trade mark CASTROL & INDROL. It is also established on record that the defendants copied and adopted similar/substantially similar/identical trademark as well as colour scheme, get up arrangement and layout as owned by the plaintiffs. The defendants have dishonestly used the said trade mark, get up, lay out, colour scheme in respect of cognate and allied goods. Accordingly these issues are decided in favor of the plaintiffs.

Counsel for the plaintiffs gives up his claims of rendition of accounts, delivery up and costs as prayed for in prayer Clauses (c), (d) and (e).

In the facts and circumstances of the case, I am satisfied that the plaintiffs are entitled to a decree of permanent injunction against the defendants.

Accordingly, the defendants, their partners or proprietor, servants and agents are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in filters or any other cognate or allied goods, packed in containers that are a substantial reproduction in the matter of get up, lay out and artistic features of the plaintiffs' trade mark CASTROL & INDROL containers or from using INDROL device.

Decree sheet be drawn accordingly.

Suit stands disposed of in the aforesaid terms. No order as to costs.