M/S. Castrol Limited & Anr. vs M/S. Ramesh Rajput & Ors.
2011 Latest Caselaw 3762 Del

               IN THE HIGH COURT OF DELHI: NEW DELHI

+                  CS (OS) No. 656/2005

                    Judgment reserved on 2nd August, 2011

%                   Judgment delivered on 5th August, 2011

M/s. CASTROL LIMITED & ANR.                                 ......PLAINTIFFS

                               Through:       Mr. Sushant Singh, Mr. P.C.
                                              Arya,    Mr. Gautam Panjwani
                                              and Ms. Parveen, Mr. V.K.
                                              Sinha and Mr. V.K. Shukla,
                                              Advs. for the Plaintiff.


                         Versus

M/s. RAMESH RAJPUT & ORS.                                 ..... DEFENDANTS

                         Through:             Ex-parte
Coram:
HON'BLE MR. JUSTICE A.K. PATHAK

      1. Whether the Reporters of local papers
         may be allowed to see the judgment?                   No

      2. To be referred to Reporter or not?                    No

      3. Whether the judgment should be
         reported in the Digest?                               No


A.K. PATHAK, J.

1. Plaintiffs have filed this suit against the defendants for passing of a

decree of injunction in relation to the infringement of trademark and

copyright, rendition of accounts and delivery of all the infringing material.

2. It is alleged in the plaint that plaintiff no.1 Castrol Ltd. is a

company incorporated under the laws of England. Plaintiff No.1, interalia,

is involved in manufacture, processing, and marketing of high grade

lubricating oil products in United Kingdom and several other countries in

the world. Plaintiff No.1 commenced its activities in India in the year 1919

in its then name C.C. Wakefield & Co. Ltd which was changed to

CASTROL LTD in 1960. On 31st May, 1979, plaintiff No.2, CASTROL

INDIA LTD was incorporated under the Indian Companies Act, 1956,

having its registered office at Technopolis Knowledge Park, Mahakali

Caves Road, Chakala, Andheri (East), Mumbai and regional office at 5th

Floor, East Towers, NBCC Place, Pragati Vihar, Bhishma Pitamah Marg,

New Delhi - 110003 with the object of processing and marketing high

grade automotive and industrial lubricants and specialty products in

India. Plaintiffs have been carrying on large scale business which,

interalia, includes processing of and trading in high grade automotive and

industrial lubricants, greases, brake fluids, wood preservatives, metal

cleaning compounds, hydraulic fluids, anti-freezing compounds etc.

3. Plaintiff is the registered proprietor of the trade marks, namely,

CASTROL, CASTROL GTX, DEUSOL, CASTROL SUPER TT and CASTROL

CRB in respect of oils for heating, lighting, lubricating, industrial oils,

greases, hydraulic fluids etc. All the above said trademarks have been

renewed from time to time and are still subsisting on the Register of

Trademarks and plaintiff No.2 is the permitted user of the said trade

marks in India. The trade mark „CASTROL‟ is dominant in the automotive

sector for which they manufacture and market a wide variety of products.

Plaintiff also uses packaging material with distinctive color scheme, get

up, layout and artistic features. Plaintiff is the owner of the copyright of

the artistic work shown on the packaging material and has exclusive right

to reproduce, publish and distribute the same.

4. Plaintiffs have been extensively advertising their products through

various print media including newspapers, magazines and trade journals,

leaflets and other promotional literature depicting the said trademarks

which have been extensively distributed to all the plaintiffs‟ dealers

throughout the country. The annual expenditure incurred by the plaintiff

runs in crores of rupees. In paragraphs 11 and 12 of the plaint, plaintiffs

have given details of their annual turnover, however, figures of last three

years in this regard would be sufficient to indicate the reputation of

plaintiffs:-

Annual turnover of goods sold by the plaintiff No. 1 under the trade mark CASTROL in United Kingdom YEARS VALUE IN POUNDS STERLING 1994-95 1481000,000 1995-96 1784000,000 1996-97 1846000,000 Annual turnover of goods sold by the plaintiff No. 1 under the trade mark CASTROL in world over YEARS VALUE IN POUNDS STERLING

1994 1587000,000 1995 1910000,000 1996 1989000,000 Annual turnover of goods sold by the plaintiff No. 2 under the trade mark CASTROL in India YEAR ENDED VALUE IN RS.

      December 1995           7,14,20,01,000.00
      December 1996           8,88,24,52,000.00
      December 1997           9,93,03,00,000.00

5. In the month of September 1989, plaintiffs came to know that

defendant no.1, ex-employee of plaintiff no.2, was marketing and selling

spurious oil and brake fluid under the trade mark CASTROL, CASTROL

GTX EXTRA and CASTROL UNIVERSAL BREAK FLUID. Defendant no.1

stocks the spurious oils under the above said trademarks in his godown.

It is alleged in the plaint that Defendant nos. 1 & 2 are getting filled and

packed the said spurious oil through defendant nos.3 to 5 and one Mr.

Ramesh Gupta. The trademark used by the defendants is identical to that

of the plaintiffs. Even the packaging material used by the defendants is

identical to that of the plaintiff, inasmuch as, the color scheme, get up,

layout and arrangement of the features is also same. Defendants have not

been authorized by the plaintiffs to market and sell any of its products or

to use its trademark.

6. On 3rd October 1998, plaintiff no. 2, through a Notary Public had

purchased the spurious goods from the defendants and had analyzed it in

its laboratory and found that it was not marketed or sold by the plaintiffs.

Thus, defendants have infringed the trademark of the plaintiffs and also

its copyright on the artistic work of the packaging material. It is alleged

that defendants have malafidely adopted plaintiffs trade mark so as to

pass off its inferior quality goods as that of plaintiffs‟ genuine goods and

make illegal profit over it. Defendants are also using names and addresses

of the plaintiffs. They are creating confusion amongst the prospective

customers by misrepresentation and deception thereby causing great

prejudice to the reputation of the plaintiffs as well as financial losses.

7. Defendants were served by way of publication of summons in the

newspaper "The Statesman" dated 6th May, 2008. Despite service,

defendants did not appear in court and were proceeded against ex-parte.

8. Plaintiff has led ex-parte evidence by way of affidavit. PW1 Mr.

Muralidhar Subramanium, Constituted Attorney of Plaintiff no.1 and Head

of Trade Marks of plaintiff no.2, has supported the averments made in the

plaint and has also proved the relevant documents. Copy of Power of

Attorney has been exhibited as Ex. PW1/1. Trademark registration

certificates have been collectively exhibited as Ex. PW1/3. Sample of

plaintiffs‟ products/ packaging material is Ex. PW1/4. Literature of

plaintiff is marked as Ex. PW1/5. Notarial reports dated 3/10/1998 and

13/2/1999 along with affidavits of Notary are marked as Ex. PW1/6 and

Ex. PW1/7. Quality test report of the products seized from defendants‟

premises is marked as Ex. PW1/8.

9. In view of the ex parte evidence, documentary and by way of

affidavit, plaintiffs have been successful in disclosing a case of

infringement of trademark and copyright so as to enable them to obtain a

decree for injunction. The literature and sample of packaging material

placed on record clearly shows that color scheme, get up, layout and

arrangement of the features used by the defendants on its products is

identical to that of plaintiffs in toto.

10. For the foregoing reasons, a decree of injunction is passed in favor

of the plaintiffs and against the defendants in terms of prayer (a), (b) and

(c) of paragraph 28 of the plaint with costs. Decree sheet be drawn.

A.K. PATHAK, J.

August 5, 2011 rb