Delhi High Court: Plaintiff 1, Castrol Ltd. and Plaintiff 2, Castrol India Ltd. filed the present suit seeking permanent injunction restraining defendants from infringement of trade mark and copyright, passing off, piracy of design, rendition of accounts of profits, damages, delivery up, acts of unfair competition etc. Prathiba M. Singh, J.*, opined that there was counterfeiting of lubricants, greases and oils which were used in automobiles and any compromise in quality of such products could have adverse consequences on customers. The Court thus directed that a sum of Rs. 1 lakh was to be paid as cost by defendants to plaintiffs.
Background
Plaintiffs were manufacturing and selling lubricants, oil, grease, and other related products used in the automobile industry. Plaintiffs adopted the mark ‘CASTROL’ for various oils, greases, high grade lubricants and other related services in the automotive, industrial, and marine and aviation sectors. Apart from the mark ‘CASTROL’, plaintiffs also use various other marks including ‘CASTROL ACTIV’, ‘ACTIV’, ‘RADICOOL’, ‘GTX’, ‘MAGNATEC’, ‘CASTROL POWER’ and ‘EDGE’.
Plaintiffs submitted that in 2019 they learnt that defendants were infringing the registered trade marks of plaintiffs by selling identical products with brand name ‘VOLTRONIC’, used in conjunction with plaintiff’s trade marks ‘ACTIVE’, ‘RADICOOL’, ‘GTX’, ‘POWER 1’, ‘MAGNATEC’ and ‘EDGE’. Plaintiffs claimed that their products were sold in distinctive containers, which had also been copied by defendants. Plaintiffs sent a cease and desist notice to defendants on 04-07-2019 however, no response was received. Plaintiffs thereafter purchased defendants’ product and found that they were selling counterfeit products. Thus, plaintiffs filed the present suit.
Analysis, Law, and Decision
The Court vide order dated 16-01-2020 granted an ex-parte injunction restraining defendants and appointed a local commissioner, who visited defendants’ premises. However, there was no cooperation by defendants, and they completely denied having made any sales of the counterfeited products.
The Court opined that defendants were clearly engaging in manufacturing and sale of counterfeit products and the copying of so many marks, labels, packaging, and containers was a deliberate act on behalf of defendants to gain monetarily by selling counterfeit products. The Court also opined that there was counterfeiting of lubricants, greases and oils which were used in automobiles and any compromise in quality of such products could have adverse consequences on customers.
The Court set aside the order dated 16-01-2020 as defendants were willing to pay the costs. Thus, the Court directed that a sum of Rs. 1 lakh was to be paid as cost by defendants to plaintiffs.
[Castrol Ltd. v. Voltranic India Lubricants, 2023 SCC OnLine Del 7641, decided on 30-11-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiffs: Afzal B. Khan, Samik Mukherjee, Suhrita Majumdar, Sharad Besoy, Advocates
For the Defendants: Sanjeev Gupta, Pritama, Rahul Saini, Ravish Sharma, Advocates
