Madras High Court
Castrol Limited vs M/S.Spaze International on 23 January, 2019
Author: M.Sundar
Bench: M.Sundar
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 23.01.2019
CORAM
THE HON'BLE MR.JUSTICE M.SUNDAR
C.S.No.835 of 2018
and
O.A.Nos.1133 to 1135
1.Castrol Limited
Technology Centre
Whitchurch Hill
Pangbourn, Reading
United Kingdom RG8 7QR
Rep. by its Constituted Attorney
Mr.Murlidhar Balasubramanian.
2.Castrol India Limited
781-785, Rayala Towers
V floor, Anna Salai
Chennai 600 002
India rep by its Authorized Signatory
Mr.Murlidhar Balasubramanian. .. Plaintiffs
Vs.
M/s.Spaze International
No.2/166, Thuraiyur Main Road
Peramangalam
Near Pulivalam Junction
Trichy District. - 621 006. .. Defendant
This Civil Suit is preferred, under Order VII Rule – 1 of Civil Procedure
Code, 1908 and Order IV Rule 1 of O.S Rules, 1956 Read with Sections 27,
28, 29, 134 and 135 of the Trade Marks Act, 1999 and Sections 51, 54, 55
and 62 of the Copy Right Act, 1957 and Section 7 of The Commercial Courts,
Commercial Division and Commercial Appellate Division of High Courts Act,
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No 4 of 2016; Praying for
a) A permanent injunction restraining the defendant, himself, its
proprietor/directors/partners as the case may be, successors-in-business,
servants, agents, distributors, dealers, stockists, shop keepers, wholesalers,
retailers, representatives, assigns and all other persons claiming through or
under them from infringing the registered trademark CASTROL of the
plaintiffs by manufacturing, selling and/or distributing oils in barrels under
an identical mark CASTROL or any other similar or identical mark and in any
other manner whatsoever;
b) a permanent injunction restraining the defendant, himself, its
proprietor/directors/partners as the case may be, successors-in-business,
servants, agents, distributors, dealers, stockists, shop keepers, wholesalers,
retailers, representatives, assigns and all other persons claiming through or
under them from manufacturing, selling, offering for sale and/or
distributing oils which would amount to passing off their goods as and for
the goods of the plaintiffs or as being in some way connected with the
plaintiffs by using the identical mark CASTROL or any other similar or
identical mark and artistic work and in any other manner whatsoever;
c) a permanent injunction restraining the defendant, himself, its
proprietor/directors/partners as the case may be, successors-in-business,
servants, agents, distributors, dealers, stockists, shop keepers, wholesalers,
retailers, representatives, assigns and all other persons claiming through or
under them from manufacturing, selling, offering for sale and/or
distributing oils from committing acts of copyright infringement by coying
the plaintiff's copyright in the CASTROL logo by use of identical CASTROL
logo, colour scheme, get up and placement of features or any other label
similar or identical thereto and in any other manner whatsoever;
d) the defendant be ordered to surrender to the plaintiffs for
destruction all goods viz., barrels, blocks, dyes, prints, labels, cartons,
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screen prints, cylinders and other materials and goods containing the
trademark CASTROL or any other mark similar to plaintiff's registered
trademark/logo CASTROL;
e) the defendant be ordered to pay to the plaintiffs a sum of
Rs.10,00,000/- as damages for committing acts of infringement of
trademark, infringement of copyright and passing off;
f) a preliminary decree be passed in favour of the plaintiffs directing
the defendant to render true and faithful account of profits earned by them
by use of trademark CASTROL for oils, which is identical to the plaintiff's
registered trademarks CASTROL and a final decree be passed in favour of
the plaintiffs for the amount of profits thus found to have been made by the
defendant after the latter has rendered accounts;
g) for entire costs of the suit; and
h) for such further and other reliefs as this Hon'ble Court may deem
fit and proper in the circumstances of the case and thus render justice.
For Plaintiffs : Mr.Arun C Mohan
For Defendant : Mr.A.Mohamed Ismail
JUDGMENT
There are two plaintiffs and a sole defendant in this suit.
2. Mr.Arun C Mohan, learned counsel on record for two plaintiffs and Mr.A.Mohamed Ismail, learned counsel on record for sole defendant are before this Commercial Division.
3. Defendant has been described as 'Spaze International'. Learned http://www.judis.nic.in 4 counsel for defendant, on instructions, submits that one Mr.C.Venkatesan, son of Mr.V.Chidambaram, aged about 39 years and residing at 2/26, Middle Street, Venadathanur Post, Thuraiyur Taluk, Trichy District is carrying on business in the name and style 'Spaze International' as a sole Proprietor. This is recorded.
4. Counsel for defendant has filed an affidavit dated 22.01.2019 sworn to by the aforesaid C.Venakatesan, which reads as follows:
'I, C. Venkatesan son of V.Chidambaram, Hindu aged about 39 years residing at 2/26, Middle Street, Venadathanur Post, Thuraiyur Taluk, Trichy District, now temporarily come down to Chennai do hereby solemnly affirm and state as follows;
1. I am the proprietor of the defendant firm and as such I am well acquainted with the facts and circumstances of the case.
2. I submit that the present suit in C.S.No.835 of 2018 has been filed by the plaintiffs, alleging that the defendant firm is selling lubricants my misusing the trademark of CASTROL and thereby the defendant firm had infringed the rights of the plaintiffs and that the defendant had unjust enrichment at the cost of the plaintiffs' trademark and brand.
3. I submit that, I deny such allegations in the plaint and submit that the defendant firm had never used the name, logo, mark or whatsoever of the plaintiffs to market or sell its products in the past and will also not use the name, logo mark whatsoever of the plaintiffs in its business in the future. I understand that the plaintiffs' such apprehension is because of http://www.judis.nic.in 5 the presence of few old barrels as shown the photographs attached to the plaint. In this regard I submit that the defendant firm is trading in used oil and also further refines the used oil for manufacture of lubricants like grease, which is done under due license from the appropriate authorities. In the said process rarely the used oil suppliers such as automobile workshops, send the used oil in such barrels. The defendant firm had in fact, instructed its suppliers to ensure that they do not send the used oil in such barrels. Such few barrels which come to the premises of the defendant are ensured that do not go out of the premises with the logo as it is sold as scrap. Hence there is no question of the defendant infringing the copyright or trademark of the plaintiffs.
4. I submit that the defendant's business is predominantly whole sale of used oils and it also manufactures lubricating oil and grease by refining to a small extent. Due up to date returns are filed to the statutory authorities to their satisfaction for business done.
I pray this Hon'ble Court to take this affidavit on record for appropriate orders.'
5. Both learned counsel make common submissions in unison that with regard to sub-paragraphs (a), (b) and (c) of paragraph 29 of the plaint, which is the prayer paragraph, defendant has no real chance of successfully defending the claim and plaintiffs are entitled to a decree.
6. In the light of the aforesaid affidavit, drawing my attention to Order XIII-A of amended 'The Code of Civil Procedure, 1908' ('CPC' for http://www.judis.nic.in 6 brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity), both learned counsel submit that a summary judgment by way of a decree in terms of sub-paragraphs (a), (b) and (c) of prayer paragraph (to be noted, prayer paragraph is paragraph No.29 of the plaint) can be passed.
7. Before I proceed further, it is necessary to extract the entire prayer paragraph in the plaint, i.e., paragraph 29. I do so and the same reads as follows:
'29. The plaintiffs therefore pray that this Hon'ble Court may be pleased to grant a judgment and decree on the following terms:
a) A permanent injunction restraining the defendant, himself, its proprietor/directors/partners as the case may be, successors-in-business, servants, agents, distributors, dealers, stockists, shop keepers, wholesalers, retailers, representatives, assigns and all other persons claiming through or under them from infringing the registered trademark CASTROL of the plaintiffs by manufacturing, selling and/or distributing oils in barrels under an identical mark CASTROL or any other similar or identical mark and in any other manner whatsoever;
b) a permanent injunction restraining the defendant, himself, its proprietor/directors/partners as the case may be, successors-in-business, servants, agents, distributors, dealers, stockists, shop keepers, wholesalers, retailers, representatives, assigns and all other persons claiming through or under them from manufacturing, selling, offering for sale and/or distributing oils which would amount to http://www.judis.nic.in 7 passing off their goods as and for the goods of the plaintiffs or as being in some way connected with the plaintiffs by using the identical mark CASTROL or any other similar or identical mark and artistic work and in any other manner whatsoever;
c) a permanent injunction restraining the defendant, himself, its proprietor/directors/partners as the case may be, successors-in-business, servants, agents, distributors, dealers, stockists, shop keepers, wholesalers, retailers, representatives, assigns and all other persons claiming through or under them from manufacturing, selling, offering for sale and/or distributing oils from committing acts of copyright infringement by coying the plaintiffs' copyright in the CASTROL logo by use of identical CASTROL logo, colour scheme, get up and placement of features or any other label similar or identical thereto and in any other manner whatsoever;
d) the defendant be ordered to surrender to the plaintiffs for destruction all goods viz., barrels, blocks, dyes, prints, labels, cartons, screen prints, cylinders and other materials and goods containing the trademark CASTROL or any other mark similar to plaintiffs' registered trademark/logo CASTROL;
e) the defendant be ordered to pay to the plaintiffs a sum of Rs.10,00,000/- as damages for committing acts of infringement of trademark, infringement of copyright and passing off;
f) a preliminary decree be passed in favour of the plaintiffs directing the defendant to render true and faithful account of profits earned by them by use of trademark CASTROL for oils, which is identical to the plaintiffs' registered trademarks CASTROL and a final decree be passed http://www.judis.nic.in 8 in favour of the plaintiffs for the amount of profits thus found to have been made by the defendant after the latter has rendered accounts;
g) for entire costs of the suit; and
h) for such further and other reliefs as this Hon'ble Court may deem fit and proper in the circumstances of the case and thus render justice.'
8. A perusal of the prayer paragraph reveals that there are as many as 8 limbs of prayer, which have been adumbrated in sub-paragraphs (a) to
(h) of prayer paragraph 29 of the plaint. As mentioned above, in the light of the narrative supra, there shall be a decree in terms of sub-paragraphs
(a), (b) and (c) or in other words in terms of first three limbs of the prayer paragraph.
9. With regard to sub-paragraph (d) of prayer paragraph, which is the 4th limb of the prayer, Mr.Mohamed Ismail, learned counsel on record for sole defendant, on instructions, submits that no offending material either in terms of barrels, blocks, dyes, prints, labels, cartons, screen prints, cylinders or any other material qua the trademark CASTROL or a mark/logo similar to the same are available with the defendant now. As a matter of abundant caution, both counsel agree that plaintiffs' duly authorized representative along with a counsel from plaintiffs counsel's office will be permitted to visit the defendant's premises in the presence of counsel for http://www.judis.nic.in 9 defendant to ascertain this position. This exercise will be completed within a fortnight's from today i.e., by 06.02.2019. This answers sub-paragraph (d) of the prayer paragraph.
10. With regard to sub-paragraphs (e), (f), (g) and (h) of prayer paragraph, learned counsel for plaintiffs, on instructions, submits that in the light of the fair stand taken by learned counsel for defendant, plaintiffs are not pressing and giving up prayers vide these four limbs in this suit.
11. A perusal of Rule 3 of Order XIII-A of amended CPC as amended by said Act reveals that the grounds on which a summary Judgment can be passed by this Court i.e., summary Judgment before recording oral evidence are set out therein. The grounds are such that a summary Judgment can be passed when a party to the lis has no real prospect of succeeding on the claim or defending the claim and when there is no other reason which prevents the Courts from passing such a decree.
12. Therefore, a decree is passed exercising the aforesaid powers. There shall be an injunction decree in terms of sub-paragraphs (a), (b) and
(c) of prayer paragraph. With regard to sub-paragraph (d), the decree will be on the above terms. Sub-paragraphs (e) to (h) of prayer paragraph stand given up. Therefore, the parties are left to bear their respective costs. http://www.judis.nic.in 10
13. The cause list shows that vakalat of Mr.Mohamed Ismail has not been filed. However, as learned counsel pointed out that vakalat has been filed vide D.No.2519, dated 21.01.2019, this Commercial Division called for the same from the Registry and the same has been placed before me. This Commercial Division is informed that the vakalatnama is in order. This is recorded and the vakalat of sole defendant is directed to be taken on file.
14. Suit is decreed on above terms. Consequently, all connected miscellaneous petitions are closed. There shall be no order as to costs.
23.01.2019 Speaking Order/Non-Speaking Order Index : Yes/No vsm http://www.judis.nic.in 11 M.SUNDAR, J.
vsm C.S.No.835 of 2018 and O.A.Nos.1133 to 1135 23.01.2019 http://www.judis.nic.in