Delhi High Court

M/S Castrol Limited & Anr. vs Iqbal Singh Chawla & Anr. on 3 January, 2018

     *IN THE HIGH COURT OF DELHI AT NEW DELHI
%                        Judgment delivered on: 03rd January, 2018
+        CS(OS) 4/2011
M/S CASTROL LIMITED & ANR.                                       ..... Plaintiffs

                                 versus

IQBAL SINGH CHAWLA & ANR.                                     .... Defendants
Advocates who appeared in this case:
For the Plaintiffs         :     Mr Sushant Singh with Mr Harshwardhan Pathak and
                                 Mr Tajinder Singh,
For the Defendants         :     None.

CORAM:-
HON'BLE MR JUSTICE SANJEEV SACHDEVA
                               JUDGMENT

SANJEEV SACHDEVA, J.

1. On 04.08.2017, when the suit was listed for hearing, none appeared for the defendants, however, as the evidence of the parties stood concluded, instead of proceeding under Order 9 of the Code of Civil Procedure (CPC), the matter was considered under Order 17 of the CPC.

2. The plaintiffs have filed the present suit seeking a decree thereby restraining the defendants from selling, marketing, offering for sale any packaging/label/empty container used/re-cycled and re- conditioned in respect of the Industrial Oil, engine oil, lubricants, grease under the trade mark 'LUMAX ACTIVE' or any other trade mark, which is deceptively similar with the plaintiffs' trade mark

'ACTIV'.

3. The plaintiffs claim to be the registered proprietor of the trademark 'CASTROL' and are stated to have adopted the trademark 'ACTIV' in respect of lubricant oils in the year 1999. The trade mark of the plaintiffs 'ACTIV' is registered with the Registrar of Trade Marks as word per se bearing registration No.838183 in Class-4 in respect of industrial oils, greases, lubricants, lubricating oils and greases, fuels, non-chemical additives for fuels, lubricants and greases. Plaintiffs also claim to be the owner of the trade dress and the copyright in the packaging, which includes the container that acts as the trade dress of the plaintiffs.

4. It is submitted that plaintiffs are also the owner of the trade dress and own copyright in the packaging, which includes the container that acts as trade dress of the plaintiffs. The current packaging used by the plaintiffs contain various features which include the overall get up of the artistic features and layout existing on the packaging/bottle and label affixed on the same and arrangement of features on the said label. Plaintiffs claim copyright under Section 2(c) of the Copyright Act, 1957 being the original artistic work.

5. It is submitted that the plaintiffs also claim proprietary rights because of its prior user in the shape and overall getup of the container, the imitation of which coupled with other features may cause passing off the goods of third parties, including the defendants herein, as that of the plaintiffs.

6. It is submitted that in the month of December, 2010, the plaintiffs learnt that defendant No.1 - proprietor of Mahendra Oil Company was selling 4T oil under the trade mark 'LUMAX ACTIVE', which is a blatant infringement of the plaintiffs' registered trade mark and was also imitating the get up, layout and features of the packaging of the plaintiffs by adopting red, white and green colours on the label in an identical manner and also shape and configuration of the bottle leading to infringement of plaintiffs' trade dress rights including infringement of copyright and passing off. It is submitted that defendant No.1 is the manufacturer and defendant No.2 M/s Ajit Plastic is the seller of the lubricant oils container.

7. It is contended that the defendants were using the trademark 'LUMAX ACTIV 4T', which amounted to passing off and infringement of the registered trademark 'ACTIV' of the plaintiffs. It is further contended that the trade dress, shape of bottle, label, lay-out and colour scheme adopted by the defendants is identical to that of the plaintiffs and thus amounted to an infringement of the trade mark as well as the copyright of the plaintiffs in their container and the action of the defendants amounted to passing off their goods as goods of the plaintiffs.

8. The defendants filed their written statement contending that the suit pertained to a sub-brand and the plaintiffs were not using the mark 'ACTIV' independently but were using the same in conjunction with the mark 'CASTROL'. Further, it is contended that the word

'ACTIV' is descriptive being common dictionary word. The objection was also taken that Mr Iqbal Singh Chawla was not the proprietor of M/s. Mahindra Oil & Company and as such, the suit was bad for misjoinder of Mr Iqbal Singh Chawla.

9. On the pleading of the parties, on 29.11.2011, the following issues were framed:-

1. Whether the defendants have infringed the registered trade mark 'ACTIV' of the plaintiffs using the mark 'T4 ACTIV'?

2. Whether the plaintiffs are entitled to the injunction claimed by them? OPP.

3. Whether the defendants have infringed the copyright of the plaintiffs by using the impugned label ? OPP.

4. Whether the defendants are passing off their goods as those of the plaintiffs? OPP.

5 Whether the suit is bad for misjoinder of Mr Iqbal Singh Chawla, as alleged in the written statement?

6 Whether the plaintiffs are entitled to damages and, if any, to what amount and from whom?

7. Whether the plaintiffs are entitled to delivery up of the infringing material?

8. Relief.

10. In support of his case, the plaintiffs led the evidence of one witness, Mr Murlidhar Balasubramanian as PW-1 and the defendants respectively produced themselves as DW-1 & DW-2.

11. Since Issues 1 to 4 are interrelated, they are taken up for disposal together.

12. Mr Balasubramanian PW 1 in his examination in chief has proved his authority to sign and institute the Suit. He has also proved the registration of the trademarks 'CASTROL' and 'ACTIV' in favour of the plaintiff. He has deposed that the plaintiff has been using the trademark 'CASTROL' and 'ACTIV' for several years. He has proved that the product of the plaintiff is packed in a particular plastic container. The container is having a unique trade dress with a distinctive design, layout, and shape and configuration. The plaintiff No. 1, is the first person who conceived the said trade dress having a unique shape and configuration of the said design and thus has exclusive rights in the said unique trade dress of the container having a distinctive shape and configuration. He has deposed that the artistic features of the get up, layout and colour combination of above said product has been extensively devised and depicted in the colour in various print media and its features are exclusively associated with the plaintiffs and no one else. He has proved the annual turnover as well as the substantial promotional expenditure incurred.

13. PW1 has deposed that the entire get up of the container of the defendants which includes the shape, configuration and arrangement of features are identical to the get up of the plaintiff's distinctive container. The very adoption of the said mark ACTIVE by the defendants in respect of identical goods is not a matter of coincidence

and the same is a deliberate attempt on behalf of the defendants to encash upon the goodwill and reputation of the plaintiff company. I say that the plaintiffs submit that the defendants' adoption and use of the said trademark ACTIVE is fraudulent and with a malafide intention of passing off their inferior goods under the trademark ACTIVE as that of the plaintiffs. The defendants are creating a misrepresentation in the course of the trade to the prospective customers which is likely to lead to immense confusion and deception. The misrepresentation is calculated to cause damage and injury both to the plaintiffs' business and to their reputation and goodwill and the consumer and general public.

14. Mr. Shiv Balak proprietor of M/s Mahendra Oil Company deposed as DW1. Mr Iqbal Singh Chawal, proprietor of M/s Ajit Plastic deposed as DW2.

15. Both the witnesses have reiterated the stand taken in their respective written statement to the effect that 'ACTIVE' being a common dictionary word, the plaintiff cannot claim MONOPOLY or exclusive right to the use of the said mark. They have deposed that the plaintiff has failed to show that the trademark 'ACTIV' was ever used by the plaintiffs in isolation. They have deposed that the trademark ACTIV has always been used in conjunction with the trademark CASTROL. They have deposed that they had honestly and bonafidely adopted the mark LUMAX ACTIVE and use of the mark LUMAX ACTIVE does not in any manner amount to passing off the trade mark

CASTROL ACTIV.

16. The rival trademarks and trade dress of the Plaintiff and the Defendants is as under:

Plaintiff's product

Defendant's product

17. The respective trademarks CASTROL of the Plaintiff and LUMAX of the Defendant are completely different. 'ACTIVE' is a common dictionary word. One of its definitions is 'Moving or tending to move about vigorously or frequently'. The product in respect of which it is used by both the plaintiff and the defendants is lubrication oil. The purpose of a lubricant is to reduce friction and consequent generation of heat at the time running of the motor. No one can claim monopoly on the word ACTIVE per se.

18. If one were to examine the respective trademarks CASTROL

ACTIV of the plaintiff and LUMAX ACTIVE of the defendant in isolation of the trade dress, colour scheme, packaging, design, layout, shape and configuration there does not appear to be any deceptive similarity, however when the rival trademarks are examined in conjunction with the trade dress, colour scheme, packaging, design, layout, shape and configuration, it is clear that the adoption of the trademark ACTIVE by the defendants - in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration - is clearly dishonest and to encash upon the goodwill and reputation of the plaintiffs. No plausible explanation is forthcoming from the defendants as to how they could bonafidely come up with an identical trade dress, colour scheme, packaging, design, layout, shape and configuration. Clearly, the defendants have designed their packaging and label keeping in mind the packaging and label of the Plaintiff.

19. In view of the above, issues 1 to 4 are decided in favour of the Plaintiff. It is held that the defendant by adoption of the identical trade dress, colour scheme, packaging, design, layout, shape and configuration have infringed the trademark ACTIV of the plaintiff, infringed the copyright of the plaintiff in the label and are passing off their goods as those of the plaintiff. The plaintiffs are thus entitled to a permanent injunction thereby restraining the defendants from using the trademark ACTIV in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration. However, the injunction would not affect the right of the defendant to use the word ACTIVE in a completely different trade dress, colour scheme,

packaging, design, layout, shape and configuration.

20. Issue No. 5: misjoinder of Mr Iqbal Singh Chawla. Plaintiff has arrayed Mr. Iqbal Singh Chawla as proprietor of the Defendant No. 1, Mahindra Oil Company. Mr. Iqbal Singh Chawla claims to be the proprietor of M/s Ajit Plastic which has been arrayed as Defendant No. 2. It is contended that Mr. Iqbal Singh has never manufactured and sold goods under the mark LUMAX ACTIVE and thus the Suit is bad for misjoinder. Mr. Iqbal Singh Chawla claims to be the proprietor of Ajit Plastics (Defendant No. 2) and has filed his written statement and defended the Suit and even filed his evidence on behalf of the Defendant No. 2. The Plaintiff has deposed the goods bearing the mark LUMAX ACTIVE were recovered from the possession of Mr. Iqbal Singh Chawla, the Suit is not bad for misjoinder of Mr. Iqbal Singh Chawla. The issue is decided in favour of the Plaintiff.

21. Issue No. 6 : Damages. Apart from a bald statement by the Plaintiff that it has suffered damage due to illegal action of the defendants and estimates the damages from the infringing acts of the defendants to the tune of Rs.20 lakhs, no evidence has been led by the plaintiff. In view of the fact that there is no evidence has been led by the plaintiff establishing the loss of Rs. 20,00,000/- the same cannot be awarded. However, defendant No. 1 in its additional affidavit dated 02.07.2012 has contended that it has made substantial sales during the period 2006 - 2009. Since the adoption of the mark in the identical trade dress, colour scheme, packaging, design, layout, shape and

configuration, has been held to be dishonest, it would be expedient to direct Defendant No. 1 to pay notional damages of Rs. 2,00,000/- in favour of the plaintiff.

22. Issue 7: Delivery up of infringing material. In view of the above facts, the issue is decided in favour of the Plaintiff. The Plaintiff is held entitled to delivery up of the infringing material comprising of the infringing label and the packaging etc.

23. In view of the above, the Suit is accordingly decreed in favour of the Plaintiff and against the Defendants as under:

(i) The defendants are restrained by way of a permanent injunction from using the mark ACTIV and/or ACTIVE in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration as that of the Plaintiffs. However, the injunction would not affect the right of the defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration.

(ii) A decree in the sum of Rs. 2,00,000/- is passed in favour of the Plaintiff and against the Defendant No. 1.

(iii) Direction is issued to the Defendants to deliver up to the Plaintiff the infringing material comprising of the infringing label and the packaging etc.