(Prayer: Plaint filed under Order VII Rule 1 of C.P.C and Order IV Rule 1 of the Original Side Rules read with Sections 27, 28, 29, 105, 106, 107 of the Trade and Merchandise Marks Act, 1958 read with Sections 51, 55 and 62 of Copyright Act.
a) A perpetual order and injunction restraining the defendants by themselves, their partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, distributors, stockists, representatives or any of them from in any manner infringing the plaintiffs' registered Trade Marks CASTROL, CASTROL GTX, CASTROL CRB and CASTROL LOGO by use of Trade Marks identical or deceptively similar thereto;
b) Granting a perpetual order and injunction restraining the defendants by themselves, their partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, distributors, stockists, representatives or any of them from in any manner passing off or enabling others to pass off the defendants' lubricants, oils, and greases as and for the plaintiffs' lubricants, oils and greases by use of the Trade Marks CASTROL, CASTROL GTX, CASTROL CRB and CASTROL LOGO or any mark similar thereto or in any other manner whatsoever;
c) A permanent injunction restraining the defendants by themselves, or their partners, heirs, legal representatives, successors-in-business, assigns, servants, agents, distributors, stockists, representatives or any of them from in any manner infringing the plaintiffs' copyright in the Artistic Work CASTROL LOGO by reproduction of an identical logo or any logo which is a substantial reproduction of plaintiffs' CASTROL LOGO and from infringing the plaintiffs' copyright in the Artistic work CASTROL packaging with distinctive colour scheme, get-up and layout by copying the same or by making a substantial reproduction thereof or in anyother manner whatsoever.
d) The defendants be ordered to surrender to plaintiffs for destruction all goods, containers, cartons, labels, prints, blocks, dyes, plates, moulds and other material bearing the plaintiffs' registered Trade Marks CASTROL GTX, CASTROL, CASTROL CRB and CASTROL LOGO or any mark similar thereto;
e) The defendants be directed to pay to the plaintiffs as damages a sum of Rs.10,05,000/- in respect of acts of infringement of Trade Mark infringement of copyright and passing-off committed by the defendants.
f) A preliminary decree be passed in favour of the plaintiffs directing the defendants to render account of profits made by use of Trade Marks and Artistic Work CASTROL, CASTROL GTX, CASTROL CRB and CASTROL LOGO and containers and cartons and labels which are a slavish imitation of plaintiffs' Trade Mark and Artistic Work and a final decree be passed in favour of the plaintiffs' for the amount of profits thus to have been made by the defendants' after the latter have rendered accounts.
e) for costs of the suit;)
1. The above suit has been filed for infringement of trademark, infringement of copyright and passing off in respect of the trademarks and Artistic Work of the plaintiffs and for other consequential reliefs.
2. The first plaintiff is an internationally renowned company established in the year 1919 and carrying on business of manufacturing and marketing lubricating oil products, auto freezing compounds, hydraulic fluids, brake fluids etc in UK and several other countries including India. It has extensive operations in several countries all over the world.
3. The first plaintiff is the registered proprietor in India of several trademarks with CASTROL as prefix and these registrations have been duly renewed and are valid and subsisting as on date. The certified copies of the registration in class 4 are marked as Exs.P3 to P6 respectively. The first plaintiff is the proprietor of the artistic work CASTROL logo with distinctive colour scheme of green and white with red lettering. The plaintiffs are selling automobile oils and lubricants / containers and cartons having the distinctive colour, scheme, get up and layout.
4. It is stated by the learned counsel for the plaintiffs that the artistic work CASTROL logo, which is presently used, was created in the year 1992 by Sampson Tyrrell Limited on a contract for service. The said Samson Tyrrell Limited, by a deed of assignment dated 21.03.1996, had assigned all copyright in the said CASTROL logo to the first plaintiff, which is marked as Ex.P.7. Under Section 40 of the Copyright Act, the first plaintiff's artistic work, CASTROL logo and CASTROL packaging with distinctive colour scheme, get up and layout enjoy automatic protection in India. The trade and public identify the containers with the plaintiffs' products and no one else. The plaintiffs are the owners of the copyright in the CASTROL containers/cartons and only the plaintiffs have got the exclusive rights to use their distinctive colour scheme. It is also stated that the sales turnover of the plaintiffs runs into crores of rupees and the plaintiffs have also incurred considerable expenses towards promotion of the product. It is the further case of the plaintiff that the said colour scheme of red, green and white is not used by any other manufacturer of oils, greases and lubricants anywhere in the world. The plaintiffs have spent substantial sums of money in promoting the said colour scheme getup and lay out. Hence, the colour scheme of red, green and white is exclusively associated with the plaintiffs and it cannot be associated with anybody else. In support of the case, Ex.P.8 Photograph is filed by the plaintiffs.
5. The defendants were selling and distributing spurious grease, oils and lubricants used for automobiles in identical containers bearing trademarks CASTROL, CASTROL GTX, CASTROL CRB and CASTROL LOGO, which the plaintiffs became aware. The defendants are said to be using the used containers / cartons of the plaintiffs or packing them in containers /cartons identical to that of the plaintiffs either as a whole or by removing the top lid and replacing it with the another spurious lid. The photograph of the same is marked as Ex.P.9.
6. The learned counsel for the plaintiffs contends that the trade and public will believe that the defendants' products sold in identical containers/cartons with the same colour scheme, getup and layout as that of the plaintiffs belonged to the plaintiffs only. This would cause confusion and deception amongst the trade and consumers. Such act of the defendants in adopting clandestine method to pass off their products for the plaintiffs' superior products. The defendants are adopting the method of recycling the used oil, which is filled in the plaintiffs' used containers and sold to resellers and public at large. The spurious and substandard lubricants, oils and greases in cartons and containers sold by the defendants are identical to the plaintiffs containers/cartons. The plaintiffs also claimed to have tested the samples of the defendants products in a laboratory for quality control. The analysis carried out by the plaintiffs chemists confirmed that the products sold by the defendants were spurious and substandard as the said greases, lubricants and greases were refilled in the plaintiffs used tins. The usage of the defendants products sold in the identical cartons / containers of the plaintiffs would damage the vehicles and also hamper the performance of the vehicle.
7. Exs.P.10 and P.11 are marked, which are the cash memo and the quality control test report of the first defendant product. The cash memo and the quality control test report of the third defendant are annexed and marked as Exs.P.12 and P.13. Similarly, the cash memo and the quality control test report of the fourth defendant's product are marked as Exs.P14 and P.15. The cash memo and the quality control test report of the sixth defendant's product are marked as Exs.P.18 and P.19.
8. The only question that has to be decided is whether the defendants have adopted the name of the plaintiffs by using identical colour scheme, getup and layout for their products?
9. The suit was filed on 08.12.1999 and D1 and D7 were served on 06.01.2000. In respect of defendants 2 to 4 and 6, service was completed on 02.06.2006. D5 was given up on 30.10.2015. Despite service of summons on the defendants, there was no appearance for them either in person or through counsel. Hence, they were set ex-parte.
10. As mentioned above, the plaintiffs have produced documents Exs.P.1 to P.19 in support of their contentions and would submit that the defendants are using the identical colour scheme, get up and lay out for their products and are sold under the identical trademark "CASTROL". It is also stated that the defendants have made a substantial reproduction of plaintiffs' copyright in Castrol containers. An action for passing off will lie wherever the defendants use the plaintiffs Company to deceive and to divert the business from the plaintiffs or to occasion a confusion between the two businesses. If this is not made, then the plaintiffs may not be granted a decree as prayed for. When there is probability of confusion in business, an injunction will be granted, even though the adoption of the plaintiffs copyright in the Artistic Work is done by the defendants innocently. A reputation or goodwill in the business generally attaches with the trade name adopted by the Company. Such reputation or goodwill will be protected by the Court. Competitor like defendants copying the name is likely to cause injury to the business of the plaintiffs. The defendants have got no right to commence/to carry on business in such a way as to represent it to be the business of the plaintiffs or atleast impress that it is associated with the plaintiffs. Such usage by the defendants is likely to deceive and divert the business of the plaintiffs and likely to cause confusion in the mind of the public. Even if the defendants pleads innocence, it may be of no avail. The passing off action did not merely relate to goods but relates to name also. Thus, the plaintiffs have made out a strong and prima facie case for the grant of a decree for injunction and the balance of convenience is also in favour of the plaintiffs. The plaintiffs have also clearly established that they would be put to serious prejudice and irreparable loss, if not protected. The learned counsel for the plaintiffs is unable to say whether the defendants have suspended their operation after the receipt of the notice. Though the plaintiffs have asked for damages, there is no evidence with respect to the same. Therefore, it would be suffice, if the defendants are restrained from passing off the plaintiffs copyright for the future.
11. Accordingly, the suit is decreed as prayed for with respect to the reliefs A,B, C and D, With respect to reliefs, E and F, the suit is dismissed. No costs.