Delhi High Court
Ashland Licensing And ... vs Dinesh Mahajan & Ors on 12 July, 2016
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 12th July, 2016.
+ CS(COMM) 185/2016 & IAs No.10946/2015 (u/O 39 R-1&2 CPC),
12907/2015 (of D-4 to 6 u/O 39 R-4 CPC) & 22006/2015 (u/O 12 R-
6 CPC)
ASHLAND LICENSING AND INTELLECTUAL
PROPERTY LLC & ANR ..... Plaintiffs
Through: Mr. Peeyosh Kalra, Mr. C.A. Brijesh,
Ms.Rosalyn Malik and Mr. Sumit
Srivastava, Advs.
Versus
DINESH MAHAJAN & ORS ..... Defendants
Through: Mr. Vinay Kumar Shukla and Mr.
Pankaj Kumar Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1.
The two plaintiffs Ashland Licensing and Intellectual Property LLC
and Valvoline Cummins Private Limited have sued for permanent injunction
restraining the defendants Tavoline Petro (India) Private Limited and
Commercial Lubricants and of which the other defendants namely Mr.
Dinesh Mahajan, Ms. Aditi Mahajan, Mr. Niteesh Mahajan and Ms. Sunila
Mahajan are partners / directors, from infringing the trademark
„VALVOLINE‟ of the plaintiffs by using the trademark „TAVOLINE‟ in
relation to the same goods namely automobile lubricants.
2. The suit was entertained and vide ex-parte ad-interim order dated 21st
May, 2015 the defendants were restrained from using the trademark
„TAVOLINE‟ or any other mark deceptively similar to the plaintiffs‟
trademark „VALVOLINE‟. The said order has continued till now.
3. Pleadings have been completed. The application of the plaintiffs being
IA.No.10946/2015 (u/O 39 Rule 1 & 2 CPC) and the application of the
defendants No. 4 to 6 being IA.No.12907/2015 (u/O 39 Rule 4) and the fresh
application filed by the plaintiffs being IA.No.22006/2015 (u/O 12 Rule 6
CPC) are for consideration and the suit is also ripe for framing of issues.
4. It is inter alia the contention of the counsel for the plaintiffs that the
defendant No.6 Commercial Lubricants was the C&F Agent of the plaintiffs
from 2006 to March, 2013 and after severing relationship with the plaintiffs
has commenced business of manufacturing and marketing of the same
products / goods for which it was the C&F Agent of the plaintiffs in the
name and style of TAVOLINE. It is further the case of the plaintiffs that the
defendants had applied for registration of the trade mark TAVOLINE in
Class 4 and upon the plaintiffs issuing the cease and desist notice to the
defendants, the defendants in the year 2010 admitted phonetic similarity of
the trade mark/name adopted by them and in the year 2011 agreed to
withdraw their application for registration of the trade mark TAVOLINE and
undertook to the plaintiffs not to use the said trade mark in relation to the
subject products/goods.
5. Attention in this regard is invited to pages 392 and 400 of Part III file.
It is the case of the plaintiffs that the trade mark TAVOLINE is
similar/deceptively similar to the registered trade mark VALVOLINE of the
plaintiffs.
6. The counsel for the defendants states that C&F agency was of the
defendants No. 1 and 2 Mr. Dinesh Mahajan and Ms. Aditi Mahajan only in
the name of Commercial Motors and the other defendants were not the C&F
Agent and had no relationship with the plaintiffs.
7. The counsel for the plaintiffs confirms the correctness of the aforesaid
statement.
8. The counsel for the defendants has further fairly conceded that the
only question to be considered in the suit is whether the use by the
defendants of the trade mark TAVOLINE in relation to the same products
infringes the trade mark VALVOLINE of the plaintiffs. His contention is
that the trade mark TAVOLINE is distinct and is not similar or deceptively
similar to the plaintiffs registered trade mark.
9. Counsels further fairly state that it is for this Court to decide whether
in the facts aforesaid, TAVOLINE can be said to be infringing
VALVOLINE and no evidence is required to be led on this aspect.
10. Accordingly, the following issues are framed for decision:
A. Whether the trademark TAVOLINE adopted by the defendants
infringes the trademark VALVOLINE of the plaintiffs? OPP
B. Relief.
11. No other issue arises or is pressed.
12. The counsels have agreed to and have been heard on the aforesaid
issue.
13. The counsel for the defendants has in support of his contention that
there is no similarity, relied on -
i. G.D. Searle & Co. Vs. Medigraphs Pharmaceuticals Pvt. Ltd
1998 PTC (18) where "Slotil" was held to be not in infringement
of "Lomotil".
ii. J.R. Kapoor Vs. Micronix India 1994 (2) Arbitration Law
Reporter 274 where "Microtes" was held to be not in
infringement of "Micronix".
iii. POL-RAMA T.M. (1977) R.P.C. 581 T.M.R. where the Trade
Mark Registry held "Pol-Rama" to be not in infringement of
"Polaroid".
iv. Sunstar Lubricants Limited Vs. Federal Chemical Industries
1996 V AD (Delhi) 594 where there was held to be no similarity
in "Golden Cruiser" and "Sun Cruiser".
v. F. Hoffmann-la Roche & Co. Ltd. Vs. Geoffrey Manner & Co.
Pvt. Ltd. (1969) 2 SCC 716 where „Dropovit‟ and „Protovit‟ were
held to be dissimilar.
vi. M/s Amrit Banaspati Company Ltd Vs. M/s Suraj Industrial Ltd
AIR 1996 Himachal Pradesh 70 where "Angan" was held to be
not similar to "Gagan".
14. It is further the contention of the counsel for the defendants that the
mere fact that the defendants earlier had a relationship with the plaintiffs will
not make any difference.
15 Per contra, the counsel for the plaintiffs has referred to:
(i) Amritdhara Pharmacy Vs. Satya Deo Gupta AIR1963 SC 449
where "Lakshamandhara" was held to be in infringement of
"Amritdhara";
(ii) Kirorimal Kashiram Mktg. & Agencies Pvt. Ltd. Vs. Shree Sita
Chawal Udyog Mill Tolly Vill 2010 (44) PTC 293 (Del) (DB) where
"Golden Deer" was held to be in infringement of "Double Deer";
(iii) Parle Products (P) Ltd. Vs. J.P. & Co., Mysore (1972) 1 SCC
618 in relation to „Gluco Biscuits‟ and „Glucose Biscuits‟; and
(iv) Medley Laboratories (P) Ltd., Mumbai Vs. Alkem Laboratories
Limited 2002 (25) PTC 592 (Bom) (DB) where "Supaxin" was held to
be deceptively similar to "Spoxin".
16. The counsel for the defendants has also handed over the download
from the website of Controller General of Patents Design & Trade Marks to
show registration of trademarks VASELINE, HAVOLINE, COALINE
SLYLINE & VACUOLINE in relation to the same goods and has on the
basis thereof contended that communality of the alphabets "LINE" in
VALVOLINE and TAVOLINE should not be construed as the two marks
being similar / deceptively similar. It is further contended that since the
plaintiffs did not object to other similar marks being registered, the plaintiff
has no right to object to TAVOLINE.
17. I am unable to concur with the contention of the counsel for the
defendants that the past relationship between the parties is not relevant for
determining the issue of infringement by the defendants of trademark of the
plaintiffs. All the defendants are members of a family and the concerns,
whether partnership firms or private limited companies through medium of
which they are carrying on business are family concerns with some or other
member of the family being partner / director / shareholder therein
depending on the exigencies. Once the defendants, from the same premises
from where they were for the past more than six years dealing in the goods
of the plaintiffs under the trademark VALVOLINE, commence dealing in
the same goods under the trademark TAVOLINE, a large number of
customers of the said goods who are habitual of coming to the said premises
for the goods of the plaintiffs are likely to, without realising that the
defendants have stopped dealing in the goods of the plaintiffs and are selling
their own goods, without noticing the difference between VALVOLINE and
TAVOLINE, purchase the said goods of the defendants.
18. The question of infringement cannot be decided in vacuum and is to
be decided in the context of the facts. What may not constitute infringement
in one set of facts may be infringement in another factual situation. It cannot
be lost sight of that the purpose of the law of infringement is to not allow a
person to pass off his goods and services as of another and to prevent a
person from causing deception and confusion. The test thereof may vary
from trade to trade. What may be capable of causing deception and
confusion relating to one trade, may not be so for another. Similarly, what
may be capable of causing deception and confusion amongst customers of
one category of customers, may not be capable for customers of others. The
test may also vary from country to country depending upon the education,
awareness, marketing conditions, trade practices etc.
19. The counsel for defendants agrees that the class of persons dealing
with the commercial lubricants is not literally educated, though may be
experts in their own field. Not only so, the said goods are likely to be
purchased and used in automobiles and other industries / workshops, more
by the „workman‟ than by the owner of the automobile / industry / workshop
himself.
20. The similarity in the two trademarks, is restricted not only to the
alphabets „LINE‟ but extends to „VOLINE‟. The reference to other
registrations is without any pleading and it is not even the case that the
trademarks subject matter thereof are in use.
21. No reason also is given by the defendants for immediately after
stopping to deal with the goods of the plaintiffs under the trademark
VALVOLINE, coming the trademark TAVOLINE for dealing with the same
goods.
22. For all the aforesaid reasons, in my view, a case for grant of decree for
permanent injunction is made out.
23. The counsel for the defendants on enquiry has fairly informed that the
defendants started using the mark TAVOLINE in the year 2014. The
defendants have now for the last one year stood restrained from using the
said mark.
24. It has been suggested to the counsel for the defendants that the
defendants, if are not desirous of taking any advantage of the past association
with the plaintiffs or of the trademark of the plaintiffs, should consider
modifying their mark so as to be clearly distinct from that of the plaintiff and
to not create any doubts in the mind of any of the consumer of the subject
goods.
25. The counsel for the defendants states that he will obtain instructions
from the defendants who are at Bangalore.
26. If possible, one of the defendants or their representative, in a position
to take decision, to remain present in court on the next date of hearing.
27. List on 19th July, 2016.
RAJIV SAHAI ENDLAW, J.
JULY 12, 2016
bs/M
