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Delhi High Court

Castrol Limited vs Gautam Kumar, Trading As Shri Balaji Oil ... on 30 August, 2024

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                          *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                          %                                          Date of decision: 30th August, 2024
                          +        CS(COMM) 886/2023 & I.A. 25092/2023
                                   CASTROL LIMITED                                           .....Plaintiff

                                                      Through:     Mr. Urfee Roomi, Ms. Janaki Arun,
                                                                   Mr. Ritesh Kumar, Advocates
                                                                   (M:9811600017)

                                                      versus

                                   GAUTAM KUMAR, TRADING AS SHRI BALAJI OIL &
                                   CHEMICALS AND ANR.                    .....Defendants

                                                      Through:     Mr. Sanchit Bhushan, Mr. Sanjit
                                                                   Singh, Mr. Kumar Rajesh, Advocates
                                                                   along with defendant no.1 in person
                                                                   (M:9821974055)
                                   CORAM:
                                   HON'BLE MS. JUSTICE MINI PUSHKARNA
                                   MINI PUSHKARNA, J (ORAL)

1. The present suit has been filed for permanent injunction restraining trademark infringement, copyright infringement, passing off, acts of unfair competition, seeking damages/rendition of accounts, delivery up and other appropriate reliefs.

2. As per the case canvassed by the plaintiff in the plaint, the plaintiff has sold Engine Oil and Lubricant on worldwide basis, bearing the plaintiff‟s marks and packaging. Further, the plaintiff is also proprietor of various valid and subsisting registrations for the plaintiff‟s marks in India. The plaintiff has used, and continues to use, on a worldwide basis, the marks Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 1 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 ACTIV, ACTIV Device , ACTIBOND, ACTIBOND Device , POWER1, and CASTROL CRB TURBOMAX, in relation to its engine oils and lubricants.

3. As per the plaintiff, the plaintiff has sold engine oils and lubricants, in the containers which have a distinctive shape, in the following manner:

4. The present suit has been filed by the plaintiff, being aggrieved by the use of the marks by the defendants, i.e., ACTIV , ACTIVE , ACTIVATE , SUPER POWER Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 2 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 , GOLD POWER, TURBO POWER and ACTIBOND .

5. It is further the case of the plaintiff that the defendants‟ engine oil and lubricants, bearing the defendants‟ marks, are sold in the containers which are deceptively similar to the plaintiff‟s containers. The photographs showing the products of the defendants, as given in the plaint, are as follows:

6. A side-by-side comparison of the rival marks and packaging of products of the plaintiff and defendants, is as follows:

By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 5 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00

7. Learned counsel for the plaintiff submits that the defendant no.1 is Gautam Kumar, who has been trading as Shri Balaji Oil & Chemicals and defendant no.2 is Seema Devi, trading as Siddhi Vinayak Petrolube (India).

The defendants have been using the defendants‟ mark and packaging as hereinabove, in relation to engine oils, coolants and lubricants, which infringe the marks registered in favour of the plaintiff.

8. Thus, the present suit was filed.

9. This Court vide order dated 14th December, 2023 granted an ex-parte ad interim in favour of the plaintiff, restraining the defendants from using, in any manner, the defendants‟ marks and packaging, ACTIV, ACTIVE, ACTIVATE, SUPER POWER, GOLD POWER, TURBO POWER, and/or bearing trade dresses .

10. This Court also appointed a Local Commissioner to visit the defendants‟ premises and prepare an inventory and seize and seal all the products bearing defendants‟ marks and packaging. The Local Commissioner conducted the commission on 16th December, 2023, and seized a total of 11,898 sticker labels, 9 empty bottles, 10 filled buckets and drum, all bearing the infringing marks.

11. Learned Local Commissioner also filed a copy of the defendants‟ sales register, which was obtained during the commission, from which it is evident that just in the month of November, 2023, the defendants‟ had sold Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 7 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 sixteen thousand and twenty-three units, comprising of buckets and boxes.

12. This Court notes the submission made by learned counsel for the plaintiff that the defendants are rank counterfeiters as well as repeat offenders, since apart from the plaintiff, other entities, such as Hero Motocorp Limited had also filed a case before the Tis Hazari Court, titled as Hero Motocorp Limited Vs. Mr. Gautam Kumar and Anr., CS (COMM) 386/2023, for trademark as well as design infringement in May 2023.

13. Attention of this Court has been drawn to the order dated 24 th May, 2023 passed in the said case, wherein, injunction was granted against the defendants.

14. Thus, it is manifest that the defendants have been acting in bad faith, as they continued infringing plaintiff‟s rights despite a case for trademark and design infringement, being filed against them by another entity.

15. The summons was duly served on the defendants on 02nd January, 2024. The defendants through their counsel also entered appearance before this Court on 15th February, 2024. However, despite lapse of statutory period, defendants did not file their written statement.

16. Hence, it is seen that the period to file written statement by the defendants, has lapsed and defendants have failed to put forth any defence in this matter. Accordingly, this Court is of the view that the matter can be disposed of in exercise of power of this Court under Order VIII Rule 10 of the Code of Civil Procedure, 1908 ("CPC"), and a decree can be passed in favour of the plaintiff.

17. The defendants are clearly guilty of infringement of the plaintiff‟s trademark and copyright. In view of the fact that the defendants have been found to be indulging in acts of infringement on more than one occasion, the defendants are certainly not innocent infringers. The defendants are rank Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 8 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 counterfeiters, who have copied the plaintiff‟s trademarks and device marks. Furthermore, the overall colour scheme, getup and layout of the packaging of the defendants, are nearly identical with that of the plaintiff. Such unauthorised use and adoption by the defendants is patently dishonest and constitutes trademark infringement.

18. Since the defendants are engaged in manufacturing, marketing and sale of products which are nearly identical to the plaintiff‟s products, amounting to counterfeiting, and the defendants have no defence on record, the plaintiff is entitled to costs as per Section 35 of the Commercial Courts Act, 2015. Further, the report of the Local Commissioner establishes the extent of infringing activity carried out by the defendants, entitling the plaintiff to damages also, in the present case.

19. The defendants have clearly acted in bad faith, since they continued infringing the plaintiff‟s right, despite a case for trademark and design infringement being filed against them by another entity. Considering the fact of repeated infringement by the defendants, the plaintiff is entitled to costs and damages.

20. Holding that counterfeiting is a commercial evil, which erodes brand value, having serious repercussions on the fabric of the national economy, this Court in the case of Louis Vuitton Malletier versus Capital General Store and Others, 2023 SCC OnLine Del 613, has held as follows:

"xxx xxx xxx

33. Counterfeiting is an extremely serious matter, the ramifications of which extend far beyond the confines of the small shop of the petty counterfeiter. It is a commercial evil, which erodes brand value, amounts to duplicity with the trusting consumer, and, in the long run, has serious repercussions on the fabric of the national economy. A counterfeiter abandons, completely, any right to equitable consideration by a Court functioning within the confines of the rule of law. He is entitled to no sympathy, as he practices, knowingly and with complete Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 9 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 impunity, falsehood and deception. Even while remaining within the confines of the provision with which it is seized - in this case, Order 39 Rule 2A - the Court is, therefore, required to be economically and socially sensitized, and to send a deterrent message to others who indulge, or propose to indulge, in the practice of counterfeiting.

xxx xxx xxx"

(Emphasis Supplied)

21. It is noted that with respect to assessing damages and costs, in the case titled as, Koninlijke Philips N.V. and Another vs. Amazestore and Others, 2019 SCC OnLine Del 8198, this Court has held, as follows:

"xxx xxx xxx

41. Keeping in view the aforesaid, this Court is of the view that the rule of thumb that should be followed while granting damages can be summarised in a chart as under:--

# Degree of mala fide conduct Proportionate award

(i) First-time innocent infringer Injunction

(ii) First-time knowing infringer Injunction + Partial Costs

(iii) Repeated knowing infringer which Injunction + Costs + causes minor impact to the Partial damages Plaintiff

(iv) Repeated knowing infringer which Injunction + Costs + causes major impact to the Compensatory damages.

                                        Plaintiff
                                  (v) Infringement which was deliberate       Injunction + Costs +
                                        and                      calculated   Aggravated       damages
                                        (Gangster/scam/mafia) + wilful        (Compensatory         +
                                        contempt of court.                    additional damages)
                                xxx xxx xxx"

22. Considering the aforesaid, this Court is of the view that ends of justice shall be met, if costs of ₹ 7,00,000/- and damages of ₹ 1,00,000/-, are imposed upon the defendants.

23. At this stage, learned counsel for the defendants, upon instructions from the defendant no.1, who is present in court, submits that some time may be granted to the defendants to pay the amount of costs and damages to Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 10 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00 the plaintiff.

24. Accordingly, the following directions are issued:

I. The suit is decreed in favour of the plaintiff and the defendants in terms of the prayer clause „a‟, „b‟, „c‟, „d‟ of the plaint. II. The defendants are directed to destroy all the infringing materials that were seized by the Local Commissioner in the presence of a representative of the plaintiff.

III. The plaintiff is entitled to costs of ₹ 7,00,000/- and damages of ₹ 1,00,000/-, totalling to ₹ 8,00,000/-. IV. The defendants shall pay the costs and damages to the plaintiff within a period of sixteen weeks.

25. Let decree sheet be drawn up.

26. The suit, along with pending application, stands disposed of.

MINI PUSHKARNA, J AUGUST 30, 2024 au Signature Not Verified Digitally Signed CS(COMM) 886/2023 Page 11 of 11 By:AMAN UNIYAL Signing Date:02.09.2024 10:47:00