Delhi High Court
Castrol Limited & Anr. vs Mahendra Automobiles & Ors. on 18 August, 2011
Author: J.R. Midha
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.1369/2006
Date of decision: 18th August, 2011
CASTROL LIMITED & ANR. .... Appellant
Through Mr. Tejinder Singh, Adv.
Versus
MAHENDRA AUTOMOBILES & ORS. ...Respondents
Through None.
CORAM:
HON'BLE MR. JUSTICE J.R. MIDHA
1. Whether reporters of Local papers may be YES
allowed to see the judgment?
2. To be referred to the reporter or not? YES
3. Whether the judgment should be reported YES
in the Digest?
JUDGMENT (ORAL)
J.R. MIDHA, J.
*
1. The plaintiffs have filed the suit for permanent injunction
for restraining infringement of trademark, copyright, passing
off and damages against the defendant with respect to
plaintiffs‟ trademarks CASTROL, CASTROL CRB PLUS and
CASTROL EXTREME PRESSURE GEAR OIL 90 EP.
2. Plaintiff No.1 is carrying on the business of manufacture,
processing and marketing of high grade lubricating oil products
in United Kingdom and in several other countries all over the
world. Plaintiff No.2 is carrying on the aforesaid business in
India.
3. Plaintiff No.1 is the proprietor of the trademark CASTROL
bearing registration No.1494 in Class 4 registered on 29th June,
1942 in respect of oils for heating, lighting and lubricating. The
trademark CASTROL is also registered under registration
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. It
has 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 trademark CASTROL
CRB is registered in class 4 as No.421424 as of May 4, 1984 in
the name of plaintiff No.1 in respect of industrial oils and
greases (other than edible oils, fats and essential oils) and
lubricants and fuels (including motor spirit) claiming to be the
user since 1960. All the aforesaid trademarks have been
renewed from time to time and are subsisting.
4. In April, 2006, the plaintiffs came to know that defendants
were infringing the plaintiffs‟ trademark and copyright by
manufacturing, packaging and selling counterfeit goods under
the trademark CASTROL, CASTROL CRB PLUS and CASTROL
EXTREME PRESSURE GEAR OIL 90 EP whereupon the plaintiff
filed the present suit.
5. Vide ex-parte interim order dated 7th July, 2006, the
defendants were restrained from manufacturing, selling,
marketing and distributing the goods under the trademark
CASTROL, CASTROL CRB PLUS and CASTROL EXTREME
PRESSURE GEAR OIL 90 EP. The said interim order is continuing
till date.
6. The defendants were served by publication of summons
on 6th May, 2008 but they failed to appear before this Court to
contest this case. The defendants were, therefore, proceeded
ex-parte by this Court on 8th August, 2008.
7. The plaintiffs have examined one witness namely PW-1
who filed his ex-parte evidence by way of affidavit and proved
the documents Ex.PW-1/1 to Ex.PW-1/6. PW-1 has proved that
the trademark CASTROL was registered under No.1494 in
respect of lubricating oils in Class 4 on 29th June, 1942 and
No.260626 in respect of industrial oils and greases on 17th
November, 1969. The trademark CASTROL CRB has been
registered in respect of industrial oils and greases in Class 4 on
4th May, 1984. All aforesaid trademarks are renewed from time
to time and are still subsisting. Plaintiff No.1 is the permitted
user of the said trademarks in India. The plaintiff is also using
the trademark EXTREME PRESSURE GEAR OIL 90 EP in respect
of gear oil. The trademark certificates are Ex.PW-1/2
collectively. The packaging material of the plaintiffs‟ products
bearing trademark CASTROL, CASTROL CRB PLUS and CASTROL
EXTREME PRESSURE GEAR OIL 90 EP have unique colour
scheme. The plaintiffs are the owners of the copyright in the
artistic work on the packaging material and the said artistic
work is the original artistic work produced by the plaintiffs and
the plaintiffs have legal right in respect of the said artistic work
and the copyright in them. The photographs of the plaintiff‟s
products are Ex.PW-1/3 and Ex. PW-1/4.
8. Mr. Sushant Singh, learned counsel for the plaintiffs
submit that the plaintiffs‟ trademark CASTROL is a well-known
trademark under Section 2(1)(zg) read with Section 11(6) of
the Trade Marks Act, 1999 and exclusive rights are conferred
upon the plaintiffs under Section 28 of the Trade Marks Act. It
is submitted that the defendants are guilty of the infringement
of the said rights under Section 29 of the Trade Marks Act. The
learned counsel refers to and relies upon the judgments of this
Court in the cases of Rolex SA v. Alex Jewellery Pvt. Ltd.,
2009 (41) PTC 284 (Del.) and Honda Giken Kogyo
Kabushiki v. R.K.P. Patel, 131 (2006) DLT 618 in which
the Court has declared the trademarks „Rolex‟ and „Honda‟ as
well-known trademarks.
9. On the basis of the unrebutted testimony of the plaintiffs‟
witness, the plaintiffs have succeeded in proving their case.
The plaintiffs are the registered proprietor of the trademark
CASTROL. The plaintiffs have placed on record the list of 126
cases for successful enforcement of the plaintiff‟s trademark
Castrol. The plaintiffs have acquired immense reputation and
goodwill amongst the trade and public. The plaintiffs have
given the particulars of the sales of the plaintiffs products
during the period of 1983 to 2003. The annual turnover of
plaintiff No.2 in December, 2003 was Rs.13,60,51,00,000/-. The
annual expenditure of plaintiff No.2 in December, 2003 was
Rs.54,33,00,000/-. The plaintiffs have given the annual
expenditure of plaintiff No.2 in India on advertising and
publicity for the last 20 years. Considering the record of
successful enforcement of the trademark CASTROL by the
plaintiffs and the duration, extent and geographical area of use
as well as promotion of the said trademark, this Court is
satisfied that the plaintiff‟s trademark CASTROL is a well-known
trademark within the meaning of Section 2(1)(zg) read with
Section 11(6) of the Trade Marks Act, 1999 and the plaintiffs
are entitled to the protection against the infringement of their
well-known trademark.
10. The defendants are infringing the plaintiff‟s trademark
and copyright by manufacture and sale of their products by
using the trademark CASTROL, CASTROL CRB PLUS and
CASTROL EXTREME PRESSURE GEAR OIL 90 EP. The defendants
are also indulging in counterfeit products. The comparison of
the plaintiffs‟ trademark and copyright in Ex.PW-1/4 with that
of defendants in Ex.PW-1/5 and Ex.PW-1/6 show that all the
defendants are infringing the plaintiffs‟ trademark as well as
copyright and are also selling counterfeit/spurious products.
Plaintiff No.2 also tested the samples purchased by the
defendant in its laboratory. The laboratory test report dated 9th
June, 2006 indicates that the material contained in the
defendants‟ packaging is sub-standard and counterfeit. The
defendants are selling spurious goods to the public at large.
The defendants have infringed the plaintiffs‟ well-known
trademark and, therefore, the plaintiffs are entitled to the
decree of permanent injunction.
11. The plaintiffs have sought punitive damages from the
defendants. The learned counsel for the plaintiffs have
referred to and relied upon the judgments of Intel
Corporation vs. Dinakaran Nair, 2006 (33) PTC 345 (Del),
Time Incorporated vs. Lokesh Srivastava, 2005 (30) PTC
3 (Del), Adidas - Salomon AG vs. Jagdish Grver, 2005
(30) PTC 308 (Del) and Microsoft Corporation vs. Yogesh
Papat, 2005 (30) PTC 245 (Del). The findings of this Court
in the case of Intel Corporation vs. Dinakaran Nair (supra)
are as under:-
"13. The only other question to be examined is
the claim of damages of Rs.20 lakh made in
Para 48 (iii) (repeated) of the plaint. In this
behalf, learned counsel has relied upon the
Judgments of this Court in Relaxo Rubber
Limited & Anr. v. Selection Footwear Anr.,
1999 PTC (19) 578, Hindustand Machines
v. Royal Electrical Appliances, 1999 PTC
(19) 685 and CS(OS) 2711/1999 M/s. L.T.
Overseas Ltd. v. M/s. Guruji Trading Co. &
Anr. decided on 7.9.2003. In all these cases,
damages of Rs.3 lakhs were awarded in favour
of the plaintiff. In Times Incorporated v.
Lokesh Srivastava & Anr., 2005 (30) PTC 3
(Del) apart from compensatory damages even
punitive damages were awarded to discourage
and dishearten law breakers who indulge in
violation with impunity. In a recent Judgment in
Hero Honda Motors Ltd. v. Shree
Assuramji Scooters, 125 (2005) DLT 504:
2006(32) PTC 117 (Del) this Court has taken
the view that damages in such a case should be
awarded against defendants who chose to stay
away from proceedings of the Court and they
should not be permitted to enjoy the benefits of
evasion of Court proceedings. The rationale for
the same is that while defendants who appear
in Court may be burdened with damages while
defendants who chose to stay away from the
Court would escape such damages. The actions
of the defendants result in affecting the
reputation of the plaintiff and every endeavour
should be made for a larger public purpose to
discourage such parties from indulging in acts
of deception.
14. A further aspect which has been
emphasised in Time Incorporated case
(supra) is also material that the object is also to
relieve pressure on the over-loaded system of
criminal justice by providing civil alternative to
criminal prosecution of minor crimes. The
result of the actions of defendants is that
plaintiffs, instead of putting its energy for
expansion of its business and sale of products,
has to use its resources to be spread over a
number of litigations to bring to book the
offending traders in the market. Both these
aspects have also been discussed in CS (OS)
No.1182/2005 titled Asian Paints (India)
Ltd. v. Balaji Paints and Chemicals & Ors.
decided on 10.03.2006. In view of the
aforesaid, I am of the considered view that the
plaintiff would also be entitled to damages
which are quantified at Rs.3 lakhs.
15. A decree is thus passed in favour of the
plaintiff and against the defendants in terms of
the para 48(i) to (iii) of the plaint and the
plaintiff is also entitled to a decree for damages
for a sum of Rs.3 lakh against the defendants
jointly and severally."
12. In the facts and circumstances of the case, the suit is
decreed in favour of the plaintiffs and against the defendants in
terms of prayer Clause 32(a), (b) & (c). Following the aforesaid
judgments, a decree of punitive damages in the sum of Rs.5
lakhs is also passed in favour of the plaintiffs and against the
defendants. The plaintiffs shall also be entitled to future
interest on the said damages at the rate of 7.5% per annum
from the date of the judgment till realization. The plaintiffs
shall also be entitled to the costs. The decree sheet be drawn
accordingly.
J.R. MIDHA, J
AUGUST 18, 2011
