Madras High Court
Castrol Limited vs Mohammed on 10 March, 2016
Author: M.Sathyanarayanan
Bench: M.Sathyanarayanan
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 10-3-2016 CORAM THE HONOURABLE MR.JUSTICE M.SATHYANARAYANAN CIVIL SUIT No.76 of 2014 and O.A.Nos.98 and 99 of 2014 1.Castrol Limited Wakefield House Pipers Way, Swindon, Wiltshire, SN3 1RE, United Kingdom rep. By Constituted Attorney Murlidhar Balasubramanian 2.Castrol India Limited 781-785 Rayala Towers, V Floor Anna Salai, Chennai 600 002 rep. By Constituted Attorney Murlidhar Balasubramanian .. Plaintiffs vs 1.Mohammed trading as Astrol Petro Products No.28, Sri Venkata Subramani Nagar Kundrathur Road, Thirumudiwakkam Chennai 600 069 2.M/s.Ajantha Auto Spares Old No.285, New No.191, Kilpauk Garden Road Kilpauk, Chennai 600 010. .. Defendants Civil Suit filed under Order IV Rule 1 of Original Side Rules and Order VII Rule 1 of Code of Civil Procedure read with Sections 27, 28, 29, 134 and 135 of the Trade Marks Act, 1999, praying for a judgment and decree granting perpetual injunction restraining the defendants by themselves, their proprietor/partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, dealers, retailers, distributors, stockists, representatives or any of them from infringing the plaintiffs' well known trademark CASTROL registered under nos.1494, 260626, 909193 and 1240239 in various classes by use of the mark ASTROL or any marks structurally, phonetically, visually identical and/or deceptively similar thereto in any manner whatsoever; perpetual injunction restraining the defendants by themselves, their proprietor/partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, dealers, retailers, distributors, stockists, representatives or any of them from in any manner passing off or enabling others to pass off their business and/or products as and for plaintiffs' business and/or products by use of the mark ASTROL, which is deceptively similar to the plaintiffs' prior adopted and well known trademark CASTROL and/or use the deceptively similar mark as domain name and/or in any other manner whatsoever; ordering the defendants to surrender to the plaintiffs for destruction all goods, containers, cartons, labels, dyes blocks, screen prints, cylinders, bottle caps, other materials, catalogues, product brochures, POP materials, handouts, pamphlets and other stationery materials bearing the offending mark ASTROL and/or any other variants deceptively similar to the plaintiff's registered trademark; and directing the defendants to pay to the plaintiffs as compensatory and punitive damages, a sum of Rs.10,00,000/- for their acts of infringement of trademark and passing off and for a preliminary decree in favour of the plaintiffs directing the defendants to surrender account of profits made by use of the deceptively similar trademark ASTROL and a final decree be passed in favour of the plaintiffss for the amount of profits thus found to have been made by the defendants after the latter have rendered accounts and for costs. For Plaintiffs : Mrs.S.Subashiny For Respondents : D1 set ex-parte 29.6.2015 D2 No appearance JUDGMENT
The plaintiffs would aver in the plaint, as follows:-
(a) The first plaintiff is an internationally renowned lubricant company having extensive operations in United Kingdom and several countries all over the world, including India, and is essentially engaged in the business of manufacturing, processing and marketing of high grade lubricating oil products, anti-freezing compounds, hydraulic fluids, brake fluids, de-watering fluids, metal working and cutting oil and chemical materials. The second plaintiff, an Indian subsidiary of the first plaintiff, came to be established in the year 1979, with an object of processing and marketing high grade automotive and industrial lubricants and other specialty products and has employed chemical engineers and highly qualified technical personnel to manufacture lubricants and oils of high quality and the products are marketed under the trademark CASTROL with a distinctive colour combination of red, green and white and enjoy a great reputation and goodwill all over India and the trademark CASTROL forms the essential feature of the plaintiffs' corporate name and it is also the house mark of the plaintiffs.
(b) The first plaintiff is also the registered Proprietor in India, of several trademarks and logos having a distinctive colour combination of green, red and white. The following are relevant:-
(a) Trademark CASTROL registered under No.1494 in Class 4 as of 29.06.1942, in respect of oils for heating, lighting and lubricating.
(b) Trademark CASTROL logo registered under No.260626 in Class 4 as of 17.11.1969, in respect of Industrial Oils and Greases, (other than edible oils, fats and essential oils) hydraulic fluids being oils, lubricants, fuels and illuminants.
(c) Trademark (CASTROL) logo registered under No.909193 in Class 4 dated 10.03.2000 in respect of Industrial Oils and Greases, lubricants, lubricating oil and greases, fuels, non-chemical additives for fuels, lubricants and greases, dust absorbing, wetting and binding compositions, illuminants.
(d) Trademark (CASTROL) logo registered under No.1240239 in Classes 37 and 42 dated 29.09.2003, in respect of servicing, lubrication, maintenance and repair services for vehicles, engines and machinery, monitoring and inspection services relating to the aforesaid, anti-rust treatment for vehicles, tyre fitting and puncture repair, motor vehicle wash services, service station services and analysis, testing and monitoring of oils, coolants, greases and lubricants, monitoring of fuel and lubricant levels in machines and in vehicles, advisory etc..
(c) The above registrations have been duly renewed and are in force. The trade and public, at a glimpse, would easily identify the containers with label having distinctive colour scheme, get-up and layout along with the unique and distinctive trademark CASTROL only with the plaintiffs' products and thus, they have the exclusive right to use the said mark and on account of their reputation and goodwill acquired, they have got a huge turnover, which is as follows:-
Year Approximate Turnover (in Rs.) 2009 26,852,300.00 2010 31,387,300.00 2011 34,392,300.00 2012 36,053,800.00 They also spent huge sum of money for advertisement of their products.
(d) The plaintiffs recently became aware of the defendants being involved in the business of manufacture and marketing of substandard oils and lubricants under a deceptively similar mark ASTROL and enquiries made by them, revealed that the first defendant is engaged in the manufacture, sale, distribution and supply of oils and lubricants under the brand name ASTROL, all over India and the second defendant is involved in retail sale of the said spurious and substandard product under the impugned trademark in Chennai and the mark ASTROL used by the defendants, are structurally, visually and phonetically similar to the plaintiffs' registered trademark CASTROL and the said adoption has been made deliberately with a view to misrepresent and pass off the goods as and for the plaintiffs' well known CASTROL lubricant. The defendants had also slavishly imitated the plaintiffs' well known and registered trademark CASTROL and are using the impugned trademark ASTROL in respect of their business, and on their goods and by using the similar trademark, the defendants want to ride piggy back on the tremendous reputation and goodwill of the said mark CASTROL.
(e) The act of the defendants bristles with fraudulent intent to deceive the customers and induce them to purchase their substandard products in the place of the plaintiffs' internationally well reputed products under the mark CASTROL, and on account of the same, an ordinary purchaser with imperfect recollection, cannot make out any difference between the plaintiffs' and defendants' products under identical trademarks and would be deceived to purchase the defendants' products presuming that they are manufactured by the plaintiffs. The defendants are also manufacturing and selling substandard spurious lubricants and oils, which not only causes loss and damage to the vehicle, but also would lead to accidents thereby endangering human life. On account of the said infringement, the reputation and goodwill gained by the plaintiffs for a period of time, would also definitely bound to suffer and hence, they came forward to file the present suit.
2.The learned Counsel appearing for the plaintiffs, would submit that the plaintiffs are having the benefit of interim orders pending disposal of the suit, and a memo has been filed stating that the matter in issue, has been settled between the plaintiff and the second defendant and recording the said memo, the suit as against the second defendant, was dismissed as settled out of Court, by this Court vide order dated 29.6.2015. The Court having found, though the first defendant was served with summons, they did not enter appearance, set them ex-parte and thereafter, the matter was listed before the learned Additional Master No.II for recording evidence.
3.P.W.1, the Constituted Power of Attorney Agent of the plaintiffs, has filed his proof affidavit in lieu of the chief-examination, and marked Exs.P1 to P9 and M.O.1.
4.The learned Counsel appearing for the plaintiffs, has drawn the attention of this Court to the pleadings and oral and documentary evidences and would contend that the plaintiffs are able to substantiate and probablise that they are one of the reputed manufacturers of high grade lubricating oil products and allied products and they have developed goodwill and reputation over a period of years and the first defendant by using the deceptively similar trademark ASTROL, intends to destroy their reputation and goodwill also for a period of years, and through oral and documentary evidences, the plaintiffs had probablised their case and prays for decreeing of the suit as against the first defendant, with costs.
5.Though the name of the learned Counsel appearing for the second defendant, appears in the cause list, there is no representation on it's behalf.
6.This Court has considered the submissions of the learned Counsel appearing for the plaintiffs, and also perused the pleadings and oral and documentary evidences.
7.The following issues are framed for adjudication:-
(i) Whether the plaintiffs are the registered trademark holders of the logo CASTROL?
(ii) Whether the first defendant has adopted a deceptively similar trademark ASTROL and thereby, infringed the trademark of the plaintiffs?
(iii) Whether the plaintiffs are entitled to a judgment and decree as prayed for?
(iv) To what other reliefs, the plaintiffs are entitled to?
8.ISSUE No.(i):- Ex.P1 is the Power of Attorney and Ex.P2 is the Board Resolution authorising P.W.1 to depose on behalf of the plaintiffs. Exs.P3, P4 and P5 are the certified copies of the trademark registration numbers, which evidence the fact that the first plaintiff is the owner of the copyright in the artistic work CASTROL label with the distinctive colour scheme of green and white with red as stated above. Therefore, in the light of the above evidence, issue No.(i) is answered in affirmative and in favour of the plaintiffs.
9.ISSUE No.(ii):-
9(i) A perusal of Ex.P8 series as well as M.O.1 would disclose that the products of the first defendant bearing the mark ASTROL, is phonetically similar and it is also to be pointed out at this juncture, the first defendant is also marketing lubricants and other allied products.
9(ii) The original invoice of the sale of the first defendant's products is also evidenced under Ex.P9. As rightly contended by the learned Counsel appearing for the plaintiffs, any person of normal intelligence with average prudence, is likely to be misled with regard to the similar trademark ASTROL used by the first defendant, as that of CASTROL, which is the registered trademark of the plaintiffs. The above said exhibits would also substantiate the case of the plaintiffs. Therefore, this Court is of the view that the trademark used by the first defendant for it's products, viz. ASTROL, is deceptively and phonetically similar to that of the plaintiffs' registered trademark CASTROL. Issue No.(ii) is answered accordingly.
10.ISSUE No.(iii) and (iv):- The plaintiffs have marked Exs.P6 and P7 certificates issued by the Chartered Accountant, to show their sales turnover as well as sales promotional expenditure. It is the specific case of the plaintiffs that on account of the deceptive practice and fraudulent act adopted by the first defendant, their sales value as well as their reputation are likely to go down. In the light of the oral and documentary evidences, this Court is of the view that the plaintiffs are entitled to a judgment and decree as prayed for.
11.In the result, the suit is decreed as prayed for, as against the first defendant, with costs. The first defendant by itself, their proprietor/partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, dealers, retailers, distributors, stockists, representatives or any of them are restrained by way of perpetual injunction, from infringing the plaintiffs' well known trademark CASTROL registered under nos.1494, 260626, 909193 and 1240239 in various classes by use of the mark ASTROL or any marks structurally, phonetically, visually identical and/or deceptively similar thereto in any manner whatsoever. The first defendant by itself, their proprietor/partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, dealers, retailers, distributors, stockists, representatives or any of them are further restrained by way of perpetual injunction, from in any manner passing off or enabling others to pass off their business and/or products as and for plaintiffs' business and/or products by use of the mark ASTROL, which is deceptively similar to the plaintiffs' prior adopted and well known trademark CASTROL and/or use the deceptively similar mark as domain name and/or in any other manner whatsoever. The first defendant is directed to surrender to the plaintiffs for destruction all goods, containers, cartons, labels, dyes blocks, screen prints, cylinders, bottle caps, other materials, catalogues, product brochures, POP materials, handouts, pamphlets and other stationery materials bearing the offending mark ASTROL and/or any other variants deceptively similar to the plaintiff's registered trademark. The first defendant is also directed to pay to the plaintiffs as compensatory and punitive damages, a sum of Rs.10,00,000/- for their acts of infringement of trademark and passing off. There shall be a preliminary decree in favour of the plaintiffs, directing the first defendant to surrender account of profits made by use of the deceptively similar trademark ASTROL. Consequently, connected original applications are closed.
10-03-2016 Index: yes/no PLAINTIFFS' SIDE WITNESSES AND EXHIBITS:-
P.W.1 Muralidhar Balasubramanian Ex.P1 23.10.2000 Power of attorney granted by the first plaintiff Ex.P2 13.2.2012 Board resolution issued by the second plaintiff Ex.P3 25.9.1995 Copy of registration No.1494 Ex.P4 17.11.1969 Certified copy of trademark CASTROL logo under No.260626 in class 4 Ex.P5 29.9.2003 Registration certificate for trademark CASTROL logo under No.1240239 in classes 37 and 42 Ex.P6 15.1.2014 Copy of chartered accountant certificate proving sales figures of the plaintiffs' CASTROL products Ex.P7 15.1.2014 Copy of chartered accountant certificate proving sales promotional expenses incurred by the plaintiffs' CASTROL products Ex.P8 Scanned images of defendants' ASTROL product container Ex.P9 24.7.2013 Invoice proving sale of defendants' ASTROL product MATERIAL OBJECT:-
M.O.1 Two containers of the defendant bearing
the mark ASTROL
10-3-2016
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M.SATHYANARAYANAN, J.
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C.S.No.76 of 2014
Dt : 10-03-2016