Delhi High Court
Ashland Licensing And Intellectual ... vs Dinesh Mahajan & Ors on 12 July, 2016
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* 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. CS(COMM) No.185/2016 Page 1 of 10 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 CS(COMM) No.185/2016 Page 2 of 10 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 CS(COMM) No.185/2016 Page 3 of 10 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". CS(COMM) No.185/2016 Page 4 of 10 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. CS(COMM) No.185/2016 Page 5 of 10 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 CS(COMM) No.185/2016 Page 6 of 10 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. CS(COMM) No.185/2016 Page 7 of 10 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 CS(COMM) No.185/2016 Page 8 of 10 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 CS(COMM) No.185/2016 Page 9 of 10 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.
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