Delhi High Court - Orders
M/S Castrol Limited & Anr vs Iqbal Singh Chawla & Anr on 21 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~43
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 127/2023, I.As. 4533/2023, 13256/2023 & 13275/2023
M/S CASTROL LIMITED & ANR ..... Plaintiffs
Through: Mr. Sushant Singh, Mr. Akshat
Gupta, Mr. Sourav Pattanaik, Advs.
(M. 9811777625)
versus
IQBAL SINGH CHAWLA & ANR ..... Defendants
Through: Mr. Manoj Kumar Sahu, Adv. (M.
9654448699)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 21.12.2023
1. This hearing has been done through hybrid mode.
2. The background of the present suit is that the Plaintiff Nos. 1 & 2-M/s Castrol Ltd. & M/s Castrol India Ltd. filed the present suit seeking a decree restraining the Defendant Nos. 1 & 2-Mr. Iqbal Singh Chawla & M/s. Ajit Plastic from selling, marketing, offering for sale any packaging/label/empty container used/re-cycled and reconditioned in respect of the Industrial Oil, engine oil, lubricants, grease under the mark 'LUMAX ACTIVE' or any other trade mark, deceptively similar with the Plaintiffs' trade mark 'ACTIV'.
3. In the present case the Plaintiffs have been engaged in the business of manufacturing, processing and marketing lubricating oil products, anti- freezing compounds, hydraulic fluids, brake fluids, dewatering fluids, metal working, cutting oil and chemical cleaning materials under the mark 'CASTROL ACTIV'. The Plaintiff No.1 registered the mark 'CASTROL' CS(COMM) 127/2023 Page 1 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 bearing no.1494 way back on 29th June, 1942 in class 4. The mark 'ACTIV' bearing no. 838183 has also been registered in class 4 since 25th January, 1999.It is averred that the artistic work in the mark 'CASTROL ACTIV' has also been given copyright protection.
4. The Plaintiffs claim that they became aware of the Defendants being engaged in selling lubricant oil under the mark 'LUMAX ACTIVE 4T', in the month of December, 2010. It is averred that the mark is deceptively similar to the Plaintiffs' mark 'ACTIV'. Thereafter, the present suit was filed.
5. The present suit was disposed of vide judgment dated 3rd January 2018, wherein the Defendants were restrained by way of a permanent injunction from using the mark 'ACTIV' and/or 'ACTIVE' in an identical trade dress, colour scheme, packaging, design, layout, shape and configuration as that of the Plaintiffs. However, in terms of the said order, the injunction order 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.
6. The said order was challenged in appeal by the Plaintiffs, and vide order dated 14th December 2022, in RFA(OS) 17/2018 titled 'M/s. Castrol Limited v. Iqbal Singh Chawla', the ld. Division Bench set aside the judgment dated 3rd January 2018, and remanded the matter back to the ld. Single Judge for a fresh consideration. In relation to additional evidence, the ld. Division Bench passed the following order:
"Consequently, both the learned counsel suggest that the impugned judgment/decree dated 3rd January, 2018 be set aside and the matter be remanded back for a fresh consideration by the learned Single Judge.CS(COMM) 127/2023 Page 2 of 14
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 They pray that the parties be allowed to lead additional evidence by filing affidavits within eight weeks. They also state that they have no objection if the interim arrangement made by this Court vide order dated 11th April, 2018 is extended till the disposal of the suit.
In view thereof, the impugned judgment/decree dated 3rd January, 2018 is set aside and the matter is remanded back to the learned Single Judge for a fresh consideration. The counsel for the parties are permitted to lead additional evidence by filing affidavits within eight weeks. The interim arrangement made by this Court vide order dated 11th April, 2018 shall continue till the disposal of the suit. In view of the pendency of CM Appl. 21614/2019, the appellant-plaintiff is given liberty to file a fresh application under Order XXXIX Rule 2A CPC before the learned Single Judge alleging violation of the interim order dated 11th April, 2018 by the respondent-defendant."
7. Vide order dated 20th November, 2023 the Plaintiff-M/s Castrol Ltd. sought permission as per I.A. 4533/2023 to place reliance on additional documents in terms of Order XI Rule 1(5) CPC as mentioned in paragraph 4 of the application. The Plaintiffs wished to introduce new documents to strengthen their case regarding the Defendants' use of the word 'ACTIVE' in their marks, which infringes on the Plaintiffs' 'ACTIV' marks. The application bearing no. I.A. 13275/2023 was also filed by the Plaintiffs, seeking to place on record additional instances of the Defendant No. 1 infringing upon the Plaintiffs' mark. The said applications were heard on 20th November 2023 and certain directions were given for placing on record some documents.
8. In the contempt application, however, statement of Mr. Shiv Balak CS(COMM) 127/2023 Page 3 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 Goswami was recorded. After recording statement in the contempt application, the following orders was passed:
"11. Statement of Mr. Goswami has been recorded. It is clear that he is continuing to use the mark ACTIVE. He has again been clearly cautioned not to use the marks 'ACTIV' or 'ACTIVE' as the same would be identical and deceptively similar to the Plaintiffs' mark 'ACTIV'. The order dated 11th April, 2018 passed by the Ld. Division Bench is clear to the following effect.
"Till the next date of hearing, the respondents are restrained from manufacturing, filling, selling, marketing, offering for sell 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 ACTIV, or any other Trade Mark which is deceptively similar with the plaintiffs Trade Mark ACTIV amounting to infringement of the plaintiffs registered Trade Mark. "
12. The above order continues to be in operation. The Ld. Division Bench on 14th December 2022, specifically directed as under:
"...The interim arrangement made by this Court vide order dated 11th April, 2018 shall continue till the disposal of the suit..."
13. Issue notice in the contempt application. Let a reply be filed within two weeks. Rejoinder thereto be filed within two weeks thereafter."
9. The parties have now reported that the disputes between the parties have been resolved. They have handed across an application under Order XXIII Rule 3 CPC setting out the terms of settlement. The said application is in two original forms, one set is signed by the Plaintiffs with coloured CS(COMM) 127/2023 Page 4 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 images and the copy of the application signed by the Defendant in original has black and white images. There is no dispute as to the terms.
10. Accordingly, both the applications are taken on record. Terms of the settlement are contained in paragraph 3(a) to 3(q) and paragraphs 4 to 6 as set out in the settlement application. The said terms are extracted below for sake of ready reference:
"3. That during the pendency of the present proceedings, the plaintiffs and the defendant have arrived at a settlement on the following terms and conditions:
a). That the defendant agrees, admits and confirms that the plaintiff no. 1 is the registered proprietor of the trademark "ACTIV" and he further acknowledges the said trademark/wordmark of the plaintiff no. 1 registered under TM No.838183 in Class 4 for the mark "ACTIV".
b). That the defendant further agrees, admits and confirms that the plaintiff no. 1 is the registered proprietor of the trademark "ACTIV X-TRA" and he further acknowledges the said trademark of the plaintiff no. 1 registered under TM No.1404370 in Class 4 for the mark "ACTIV X-TRA".
c) Further, the defendant acknowledges, admits and confirms the copyrights of the plaintiffs in the following unique and original artistic works/packaging/labels of the plaintiffs having unique individual features, design, layout, getup and colour scheme including overall get-up/shape and design of the bottle and the defendant admits that the plaintiffs are the owners of the copyright in the said packaging and said bottle within the meaning of section 2(c) of the Copyright Act, 1957:
CS(COMM) 127/2023 Page 5 of 14This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 Plaintiffs' Earlier Packaging Plaintiffs' New Packaging
d). That the defendant undertakes before this Hon'ble Court that he shall immediately stop using the trademark/word "ACTIVE" or any other similar trademark/wordmark which is similar to plaintiffs' "ACTIV", in respect of his goods and products including Lubricants, Industrial Oils /Engine Oil, 4T Oil/Motorcycle Lubricants for 2-wheelers, and/or any other allied and cognate goods and he shall not manufacture, sell, offer for sale, advertise, directly or indirectly in present or in future, his goods and products bearing the trademark/word "ACTIVE" or any other similar trademark/wordmark which is similar to plaintiffs' "ACTIV".
e). That the defendant further undertakes before CS(COMM) 127/2023 Page 6 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 this Hon'ble Court that he shall not manufacture, sell, offer for sale, advertise, directly or indirectly, in present or in future his goods and products including Lubricants, Industrial Oils /Engine Oil, 4T Oil/Motorcycle Lubricants for 2-wheelers and/or any other allied and cognate goods in his following packaging against which the plaintiffs' are aggrieved and/or any other packaging which is similar to packaging as that of the plaintiffs as represented in para no. 3(c):
Defendant's Earlier Infringing Packaging Defendant's New Infringing Packaging
f). Apart from the above, the defendant further CS(COMM) 127/2023 Page 7 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 undertakes before this Hon'ble Court that he shall also not use any individual features or elements of the packaging of the plaintiffs including but not limited to individual features/elements as shown below separately, directly or indirectly, in present or in future, and the defendant shall not represent them upon the packaging of his goods and products or in his promotional material, which the defendant was using until now and the plaintiffs complained of the same being misused by him in their legal notice dated 28.03.2023, however, pursuant to this agreement the defendant shall not use the same again:
Individual features/elements of Plaintiffs' packaging
g). That the defendant also undertakes before this Hon'ble Court that he shall not use/infringe or copy in future any other brand/trademark of the plaintiffs such as Castrol, Half Flash Device (TM No. 1368008), Device Dynadrive Protector Series (TM No. 1538309) etc. in any manner whatsoever.
h). That the defendant further undertakes before this Hon'ble Court that he has already recalled all his goods and products from the market bearing trademark "ACTIVE" and his old/earlier infringing packaging as depicted in para no. 3 (e) above including all infringing promotional CS(COMM) 127/2023 Page 8 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:28 material, boxes/cartons, and any other material which exhibits or otherwise bears the said trademark and packaging in pursuance of orders of this Hon'ble Court dated 24.01.2011, 29.11.2011 and decree passed on 03.01.2018 and the order of the Commercial Appellate Division in RFA (OS) 17/2018 dated 11.04.2018 and the same has already been destroyed by the defendant.
i) Further, the defendant undertakes before this Hon'ble Court that he shall be recalling all his products and goods/bottles/labels/ stickers/promotional material etc. from the market which are not in consonance with the terms and conditions of the present compromise including all products bearing new infringing packaging of the defendants as shown in para no. 3 (e) above, within 15 days from the date of passing of decree in accordance with the terms of the present application and the defendant further undertakes that he shall also destroy all such empty bottles/ containers/packaging material / labels / stickers / promotional material/ boxes/cartons etc. applied on such recalled goods and products and furnish proof thereof to the plaintiffs immediately within 15 days from the date of passing of decree by this Hon'ble Court in terms of the present application.
j) That the defendant further undertakes before this Hon'ble Court that pursuant to steps taken in accordance with para no. 3 (h) and (i) as stated above, there shall be no goods/products left or remaining in the market of the defendant, which are infringing upon plaintiffs' rights in any manner whatsoever.
k). That the defendant undertakes that as a consequence of his acknowledgement of the plaintiffs' trademarks as stated above he shall not, in present or in future, file any CS(COMM) 127/2023 Page 9 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29 rectification/cancellation petition against the trademarks/brands of the plaintiffs containing "ACTIV" on any ground whatsoever before any competent authority of law and shall further never oppose any future trademarks applied by the plaintiffs containing "ACTIV"
l). That the defendant further undertakes that he shall not file any trademark application in future for any trademark/label containing the word "ACTIVE" or any other word similar to plaintiffs' registered trademark/wordmark "ACTIV" or any label/device mark containing any individual elements/features of the packaging of the plaintiffs as illustrated above in para no. 3(f) or any label/device mark similar to old and new packaging of the plaintiffs as illustrated above in para no. 3(c).
m) That the defendant Sh. Shiv Balak Goswami undertakes that he shall withdraw his following Trademark Applications containing "ACTIVE" within 15 days of the passing of the decree in terms of the present application between the parties:
Tm Application No. Trademark "4T Opposed by the 1832739 in Class 4 Active" plaintiffs vide opposition no.
828968 Tm Application No. Trademark/Device Awaiting reply to 5906984 in Class 4 "Active MOC examination report lubricants oil and grease"
Any other Tm Application applied in respect of goods and products including Lubricants, Industrial Oils /Engine Oil, 4T Oil/Motorcycle Lubricants for 2-wheelers, and/or any other allied and cognate goods containing the word "ACTIVE"CS(COMM) 127/2023 Page 10 of 14
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29
n) That the defendant further undertakes to amend his trademark application no. 4386053 by removing the word "Active" from Super Laimax 4T device, which has been opposed by the plaintiffs vide opposition no. 1209884 and in this respect the defendant shall be taking all required and necessary steps by filing suitable application/request/letter etc. for amendment of the device before the concerned Trademarks Registry. Subject to the allowing of the same by the Ld. Registrar, the plaintiffs shall not press their opposition no. 1209884 against the defendant's trademark application no. 4386053. The amended / revised Device of the defendant without the word "ACTIVE" is depicted below:
o). The defendant further undertakes that in the event of there being any breach of the present undertaking and terms of settlement by him, he shall be liable jointly and severally for payment of damages, arising out of such breach, to the Plaintiffs. Recovery of such amounts from the Defendant shall be without prejudice to the Plaintiffs' rights to execute the decree or institute any other legal action to prevent unauthorised use of their trademarks/labels.CS(COMM) 127/2023 Page 11 of 14
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29
p). In the event there is a fresh instance of infringement, plaintiffs shall have right to institute legal proceedings for seeking injunctive relief and any other relief initiating contempt action against the defendant for wilful violation of the decree.
q). That in view of the undertakings, terms and conditions accepted by the defendant as stated above, the plaintiffs submit that they have no other claim(s) pending against the defendant and all their claim(s) are now satisfied, hence, the present suit may kindly be decreed in terms of the present compromise.
4. That the parties have entered into this compromise/settlement out of their own free will and volition and the parties undertake to be bound by the terms of the same unconditionally in letter and spirit.
5. That the contents of the present application have been read over to the parties in vernacular and only after reading, hearing and understanding the same, the parties have appended their signatures hereto below signifying their assent to the present application. Affidavits in support of the present application sworn by the parties are attached herewith.
6. That the aforesaid undertaking given by the defendant shall be binding henceforth on all the businesses promoted/started/initiated by him or businesses of which he is a part or has been a part in the past, present or future irrespective of the fact that such businesses may be in the form of proprietorship, partnership firm, LLP, company etc. and the present compromise shall also be binding upon all his successors, legal heirs, nominees, representatives, assigns, directors, promoters, partners, affiliates, franchisees, agents, distributors, successors-in- interest, predecessors-in-interest etc. or any other CS(COMM) 127/2023 Page 12 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29 person acting for or on his behalf."
11. The application is signed by the Plaintiffs as also the Defendant and their respective counsels. Mr. Ajay Rao, authorized signatory of the Plaintiff is present in Court.
12. The Court has perused the settlement. The Defendant has acknowledged the right of the Plaintiffs in the mark 'ACTIV' bearing no. 838183 in class 4 and has also undertaken to stop using the mark 'ACTIVE' or any other mark deceptively similar to the Plaintiffs' mark 'ACTIV' in respect of lubricants, industrial oils/engine oils, 4T Oil/Motorcycle lubricants and other allied and cognate goods.
13. The terms of settlement are lawful and there is no impediment in recording the same. Accordingly, it is directed that the parties and anyone else acting on their behalf shall be bound by the terms of the settlement extracted above as contained in the settlement application. The suit is decreed in terms of the settlement application paragraphs 3 (a) to 3(q) as also the prayer clause 31(a), (b) & (c) of the plaint. Insofar as the mark 'LUMAX' is concerned, the Plaintiffs have no objection if the Defendant uses this mark. The decree sheet be drawn against the Defendant No.2.
14. Defendant No.2 was getting products manufactured from the Defendant No.1- Iqbal Singh Chawla, who has not entered appearance in this matter. Counsel currently appearing for the Defendant No.2, though earlier representing Defendant No.1, submits that he no longer represents Defendant No.1.
15. Considering that Defendant No.1 was a party from whom the Defendant No.2 was sourcing cans and bottles, the present settlement shall be binding upon Defendant No.1 as far as it relates to cause of action raised CS(COMM) 127/2023 Page 13 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29 in the present suit. If the Plaintiffs come across any fresh cause of action against the Defendant No.1, the Plaintiffs are free to avail of its remedy in accordance with law.
16. The steps which are to be taken by the Defendant No.2 in terms of paragraphs 3(m) & 3(n) of the settlement application, is to withdraw the trademark application for the mark 'ACTIVE' as also to amend his application bearing no. 4386053 by removing the word 'ACTIVE' from `Super Laimax 4T Device'. The said withdrawal/modification letters/forms shall be filed by the Defendant within a period of four weeks before the Registrar of Trademarks.
17. The Registrar of Trademarks shall give effect to the settlement and carry out the necessary changes in the Register of trademark. Online status shall also be modified in accordance with the settlement recorded above. The suit is decreed in the above terms. Decree sheet be drawn accordingly. All pending applications are also disposed of.
18. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- [email protected] for compliance of this order.
PRATHIBA M. SINGH, J.
DECEMBER 21, 2023/dk/ks CS(COMM) 127/2023 Page 14 of 14 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:37:29