Case title:
CASTROL LIMITED v. KAPIL & ANR.
Date of Order:
18th FEBRUARY, 2025
Bench:
Hon’ble Ms. Justice Mini Pushkarna
Parties: Plaintiff: Castrol Limited
Defendants: Kapil & Anr.
SUBJECT:
The Hon’ble High Court of Delhi adjudicated a trademark dispute where Castrol sued for a permanent injunction against the unauthorized use of its well-known marks. The Defendants were found selling engine oils and lubricants under "ACTIVE" and "ACTIBOND," deceptively similar to Castrol’s registered trademarks "ACTIV" and "ACTIBOND". Evidence submitted by Plaintiff confirmed the sale of counterfeit products. Additionally, the Defendant’s failure to file a written statement within the statutory period, resulted in the Court proceeding with a summary judgment. The Court ruled that the marks were deliberately copied to mislead consumers. Consequently, the Court permanently restrained the Defendants from using the infringing marks, imposed Rs. 10,00,000/- in costs and damages on each, and permitted Castrol to destroy the counterfeit goods.
IMPORTANT PROVISIONS:
The Code of Civil Procedure, 1908 (CPC):
Order VIII Rule 10
The Trade Marks Act, 1999 (the Act):
Section 11(6)
The Copyright Act, 1957
OVERVIEW:
- The Plaintiff, Castrol Limited, founded in the year 1899, and is a globally renowned company in the field of lubricants, oils, coolants, grease, and related goods and services. It uses the trade marks ACTIV and ACTIBOND for its products and also the copyright for its unique trade dress (packaging) under The Copyright Act.
- The Plaintiff’s products have earned global recognition, making its trademarks well-known. Some of its trademarks have also acquire the status of well-known marks under Article 6bis of the Paris Convention. Additionally, the Plaintiff’s trademarks are recognized as well-known trademarks according to sections 2(1)(zg) and 11(6) of the Act.
- The Defendants’ infringing activities came to light when the Plaintiff came across 2 Facebook profiles in April 2024 under the names, ‘Makkvoll Lubricants’ and ‘Makkvoll Engine Oil’.
- The pages belonged to the Defendants, 2 individuals who underhandedly were engaged in manufacturing, selling, and advertising engine oils and lubricants under the infringing marks ACTIVE and ACTIBOND, packaged in a similar trade dress as the Plaintiff.
- Upon investigation, it was established that the infringing products were sold on e-commerce websites, under the brand name Makkvoll.
- Aggrieved, the Plaintiff filed a suit against Defendants, seeking a permanent injunction to restrain them from using marks deceptively similar to its trademarks ACTIV, ACTIBOND and packaging. It also sought declaration of its mark ACTIV as well-known.
ISSUES RAISED:
- Whether the Defendants were engaged in manufacturing goods bearing the Plaintiff’s trademarks?
ARGUMENTS ADVANCED BY THE PLAINTIFF:
- The Plaintiff is a globally recognized brand, with its marks recognized by the Paris Convention and The Trade Marks Act. The Plaintiff’s marks are registered and have statutory protection dating back to 1999.
- The Defendants are attempting to ride on the goodwill and reputation of the Plaintiff by using identical marks and trade dress as that of the plaintiff. They are deliberately trying to mislead an unwary consumer of average intelligence by selling deceptively similar products.
- The Local Commissioner’s report confirmed that the Defendants were in possession of the products bearing the infringing trademarks.
- The Defendants were not only manufacturing but also selling and promoting the infringing products on e-commerce websites and social media. The Defendants were in fact, looking for distributors for its infringing products via social media.
- Given the blatant deceptive similarity of the products, the Defendants ought to be injuncted from continuing their infringing activities, lest the Plaintiff suffer irreparable financial losses.
JUDGEMENT ANALYSIS:
- The Court noted that the evidence submitted by the Plaintiff and the Local Commissioner’s report clearly show that the Defendants were engaged in the business of manufacturing and selling the infringing products.
- Upon comparing the competing parties’ products, the Court observed the similarities in the marks, colour schemes, and packaging. The Defendants labels and packaging were nearly identical to the Plaintiff’s.
- It held that the deceptive similarities were deliberate on the Defendants’ part for the purpose of misleading the consumers.
- The Court relied on the Supreme Court’s ruling in Parle Products (P) Ltd. v. J.P. and Co., to underscore that deceptive similarity is based on the overall impression rather than side-by-side comparison.
- The Defendants’ products were deemed deceptively similar to the Plaintiffs. The Defendants merely added the letter ‘E’ to the Plaintiff’s trademark ACTIV. The Court placed reliance on its ruling in National insurance an Indemnity Corporation & Anr. v. Virat Travels & Anr.
- On account of no submission of a written statement or substantial arguments raised by the Defendants, the Plaintiff’s arguments remained unrebutted. The Court no merit in putting the case for trial and proceeded with a summary judgment.
- With no effective defense raised by the Defendants, the Court held that they had deliberately attempted to mislead the consumers by infringing the Plaintiff’s trademarks.
CONCLUSION
Consequently, the Delhi High Court cited the judgment in Sandisk LLC & Anr. v. Laxmi Mobiles & Ors., to state that in cases involving mala fide adoption of marks and seizure of infringing goods, Courts can proceed with summary judgments and award damages to the Plaintiff. In addition to a decree in the Plaintiff’s favour, the Court awarded the Plaintiff damages in costs and granted the Plaintiff the liberty to visit the Defendants’ premises to destroy any goods bearing its marks.
