Judgment:
R.C. Lahoti, J.
(1) The plaintiffs have come up in appeal feeling aggrieved by the impugned order dated 22.7.96 whereby the learned Single Judge has dismissed the plaintiff's application seeking the grant of ad interim injunction protecting their trade mark.
(2) The plaintiff No. 1 Castrol LTD. is a Company incorporated under the law of England having its registered office in U.K. It is carrying on business at large and extensive scale in manufacturing, processing and marketing of high grade lubricating oil products in U.K. and several other countries all over the world. It also trades the anti-freezing compound, hydraulic fluids, brake fluid, de-watering fluids, metal working and cutting oil and Chemical cleaning materials.
(3) Plaintiff No. 2 Castrol India Ltd. is a Company incorporated under the Indian Companies Act, 1956 and having its registered office at Bombay and regional office at New Delhi. It carries on business at a large and extensive scale in high grade automotive and industrial lubricants, greases, brake fluids, wood-preservatives, metal cleaning compounds etc. It also trades in anti-freezing compounds, hydraulic fluids etc.
(4) Plaintiff No. 1 has a number of subsidiary and/or associates Companies. Plaintiff No. 1 commenced its activities in India in the year 1919 in respect of goods referred to hereinabove. It is the registered proprietor in India of various trade marks including trade mark Castrol registered under No. 1494 in class 4 as of 29th June, 1942 in respect of oils for heating, lighting and lubricating. It is also registered proprietor of the trade mark Castrol and logo of Castrol under the Nos. 2263, 260626,285343,289629, 373756,373757,373758 and 373759.
(5) The turnover of appellant No. 2 for 1994 was Rs. 546,46,39,000.00, the details whereof have been filed with the plaint, one of the Castrol Ball Bearing Grease container that have been extensively used in India comprises a unique colour combination of white, red and green. The said container has a while peripheral strip on the top portion going all around the container with the mark Castrol written in the red colour lettering. Just beneath the said strip is a small sized red strip going around the container. Immediately thereafter, green colour strip going around the container with the word Ball Bearing Grease Ap 3 are written. The lower portion of the container has got white, red and green small strips going around the container in between the distinctive logo. The word Castrol appears in an oblique script across the horizontal member of the said white portion. Its logo suggests the stylish stenciled letter 'C'.
(6) The plaintiffs gathered knowledge of the respondents activities who were using container with the mark Castrol which is the same or similar with Castrol Ball Bearing Grease Ap 3. The respondents were using similar/ deceptively similar colour scheme, get up, lay out and colour combination on the container Castrol AP3 Grease. The respondents had copied the trade mark, colour combination as well as the logo of Castrol and also appropriated the mark Ap 3 of the appellants. The containers used by the respondents was almost identical in all respects having the logo of Castrol similar colour combination, get up, size and all essential features as those of the appellant's container. The appellants thereforee filed a suit for permanent injunction restraining infringement of trade mark, copyrights, passing off, also for damages and delivery up etc. against the respondents. After hearing on the application under Order 39 Rules I and 2 the Court issued an ex parte ad interim injunction restraining the respondents from using the trade mark Bfstrol, as well as container like Annexure-D which contains similar colour combination, get up, layout as well as logo of Castrol and mark AP3. After the service of the injunction order the respondents filed their written statement and reply to the injunction application.
(7) Along with the said pleadings an application under Order 39 Rule 4, Civil Procedure Code was also filed by the defendant/respondents denying the rights of the appellants and mainly contesting the suit on the ground that the respondents have been using the trade mark Castrol since 1979 and the said trade mark has been allowed to the third party i.e. M/s. Truechem Industry in Suit No. 1717/91 in view of the compromise application being I.A. No. 2219/93 under Order 23 Rule 3 read with Section 151, Civil Procedure Code in that suit. The appellants filed their reply to the respondents application under Order 39 Rule 4, Civil Procedure Code denying the knowledge of the user of the respondents since 1979 as well as dealt with other defense raised by the respondents specially allowing the use of trade mark Castrol in Suit No. 1717/91.
(8) After hearing the injunction application and the application is No. 12746/95 as well as is 7120/96 under Order 39 Rule 4, Civil Procedure Code the Trial Court by order dated 22nd July, 1996 dismissed the application of the appellants.
(9) A perusal of the impugned order shows that two vital considerations have prevailed with the learned Single Judge refusing the grant of ad interim injunction in favor of the plaintiff-appellants. The learned Single Judge has held, firstly, that the defendant has been using mark Castrol for more than 10 years and so the suit of the plaintiffs suffered from delay and laches; secondly, that the plaintiffs have themselves permitted the user of the trade mark Castrol by third party in the year 1993 and thereforee now the plaintiffs cannot have grievance if the same trade mark is used by the defendant.
(10) So far as the aspect of delay and laches is concerned it needs a short and summary disposal.
(11) According to the plaintiffs, vide para 26 of the plaint, the impugned goods of the defendants came to the notice of the plaintiffs in October, 1995. According to the defendants they have been using the trade mark Castrol since 1979. This plea is sought to be substantiated by the sales figures produced by them before the Trial Court relatable to the year 1988-89 onwards. It is also the case of the respondents that they have been dealing in rubber goods and lubricating materials.
(12) The sales tax certificate granted to the respondents is for resale of rubber parts and lubricants. The figures of sales have been shown as under : Year Sales
(13) However, the above said figures of sales are not necessarily relatable to lubricants.. They also include the sales of rubber goods. The defendants have not brought on record any material to hold the figure of sales being referable to lubricants only.
(14) The defendants claim to have advertised Castrol wheel bearing grease in the year 1981-82 in a magazine called Business EXPLORER. It is a singular advertisement-for once only. The magazine was produced in original for perusal of the Court. It is pertinent to note that the advertisement is not to be found printed any where in the magazine. It is printed on a flap meant for being used a book-mark in the magazine. The possibility of this flap having been added subsequently to the magazine cannot be ruled out. However, the fact remains that it is a singular piece of advertisement.
(15) From the evidence adduced by the defendants a plea of concurrent user cannot at all be spelled out. Hence the suit filed by the plaintiffs cannot be said to be suffering from delay and laches. Acquiescence is out of question. As held by the Supreme Court in M/s.Power Control Appliance and Ors. v. Sumeet Machines Pvt. Ltd., : [1994]1SCR708 , to make out a case of acquiescence it is necessary to establish that the plaintiff stood by knowingly and allowed the defendant to proceed and to expend money in ignorance of the fact that he had rights and means to assert such rights. Such is not the case here.
(16) The learned Counsel for the appellants has further relied on three decisions of Delhi High Court.
(17) In Dainler Benz Aktiegesellshaft v. Hybo Hindustan, : AIR1994Delhi239 it has been held :
'THE Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide'.
16.2.In Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., Mr 1990 Del 19 : 38 (1984) Dlt 54. B.N. Kirpal.J. (as his Lordship then was) has approved the following statement of law from the Law of Unfair Trade Competition and Trade Marks by Harry D. Nims :
'WHERE in fringement is deliberate and willful and the defendant acts fraudulently with knowledge that he is violating plaintiff's rights, essential elements of estoppel are lacking and in such a case the protection of plaintiff's rights by injunctive relief never is properly denied. 'The doctrine of estoppel can only invoked to promote fair dealings.' 16.3.In Swaran Singh v. Usha Industries (India), : AIR1986Delhi343 , a Division Bench has held that normally delay in seeking relief might not non-suit the proprietor of the registered trade mark.
(18) Photographs of the plaintiffs' trade mark and presentation as also of the defendants' trade mark and presentation have been filed on record. The original containers were also produced for perusal of the Court at the time of hearing. We are satisfied that the defendants have tried to imitate as perfectly as they can, the presentation, colour scheme, getup,layoutandcolourcombination of the plaintiffs.
THE word Castrol has a deceptive phonetic similarity with the word CASTROL. It is bound to deceive the general public and any purchaser is likely to fall prey to the imitation in purchasing the goods of the defendant mistaking them to be of the plaintiffs.
(19) We are, thereforee, satisfied that neither a case of delay or laches is made out nor the plea of delay and laches should be entertained in the interest of general public.
(20) The second question which arises is what will be the effect of 1993 compromise on the case of the plaintiffs herein. It appears that Suit No. 1717/91 was filed by the plaintiff herein against M/s. Truechem Industries and others seeking protection of their trade mark Castrol against infringement and passing of by the defendants using the trade mark Castrol. The action was compromised on 22.7.93 by the parties having filed an application under Order 23 Rule 3, CPC.
(21) Since this compromise cover a majors part of the controversy we would like to reproduce the contents of the compromise application as under Application Under Order 23 Rule 3 Read With Section 151 Of C.P.C.
RESPECTFULLYSHOWETH: 1. That plaintiff has filed the aforesaid suit inter alias praying for permanent injunction restraining infringement of copyright, passing off rendition of accounts of profits, delivery up, etc, and the same is pending disposal before this Hon'ble Court.
2.That the parties have arrived at a settlement on the following terms and conditions:
(A)THEdefendant admits that the plaintiff No. 1is the proprietor of Castrol Crimson Container with its distinctive get up, lay out and other features which constitute an original artistic work within the meaning of Section 2(c) of the Copy right Act, 1957 and is entitled to be exclusive right to reproduce the said artistic features in any material form:
(B)The defendant submits plaintiff No. 2 to be the proprietor of Indrol Green Container and the Indrol Device in respect of its unique get up layout the features which constitute and original artistic work within the meaning of Section 2(c) of the copyright Act and is entitled to the exclusive right to reproduce the said artistic features of such container and device in any material form.
(C)The defendant under takes not to manufacture,sell,offerforsale,advertise, directly or indirectly deal in brake and clutch fluids or any other cognate of allied goods, packed in tin container that are a substantial reproduction in the matter of get up, lay out and artistic features of the plaintiff's Castrol Crimson Container (as described in Para 21 of the plflint) or Indrol Green container (as described in para 23 of the plaint) and which would amount to infringement of copyright in the said containers or parts of the said containers.
(D)However, it is expressly understood and agreed that the plaintiffs do not claim any right to the defendant's trade mark Castrol and that the defendant may use its trademark Castrol on its tin containers provided the same is not in any way identical or deceptively similar or otherwise to that being used by the plaintiff and is only as per Annexure A to the application. Defendant is at liberty to use its Trade mark Castrol anywhere any way the same is not in any way identical or deceptively similar to Castrol or Indrol COMPANIES.
(E)The defendant undertakes not to manufacture, sell offer for sale advertise, directly or indirectly deal in brake and clutch fluids or any other cognate or allied goods in the said impugned Castrol tin containers. The defendant further undertakes not to use the colour combination, get up, lay out and artistic features of Castrol Crimson Container (as described in part 21 of the plaint) or of the Indrol Green Container (AS Described In Paragraph 23 Of The PLAINT) on its Castrol containers,
(F)The defendant undertakes that they have already destroyed impugned tin containers and connected material of the same and no material is left with them of the same.
3.In view of the aforesaid solemn undertakings of the defendant the plaintiffs forego their claims for costs, rendition of accounts and damages as prayed for in the plaint.
IN the circumstances it is respectfully prayed that this Hon'ble Court be pleased to pass an order.
(I)Recording compromise between the parties and by virtue of compromise pass
(II)Decree in terms of paragraph 37(a) and (b) and (e) of the plaint be passed in favor of the plaintiff and against the defendant, and
(III)Such other and further order which in the circumstances, this Hon'ble Court deems fit be also passed.'
(UNDERLINING by us) A perusal of the compromise application shows that the defendant therein have in so many words acknowledged and admitted the ownership of the plaintiff in Castrol and Indrol containers with trade marks, words, logo, get up, lay out and features. They have also suffered a decree in the terms prayed for by the plaintiff being passed against them. However, vide sub-para (d) of para 2 a limited concession was made in favor of defendants therein.
(22) For three reasons, we are of the opinion that the above said compromise does not come in the way of the plaintiffs being granted an injunction against the defendant herein.
21.1.Firstly, the plaintiffs have submitted that they have been tricked into entering the compromise and they have moved an appropriate application before the Court for recalling the compromise.
21.2.Secondly, the compromise is all in favor of the plaintiffs and strongly supports their claim as canvassed in this suit also. A limited and guarded concession was given there under to the defendants to use the trade mark Castrol on their tin container provided that the same was not in any manner identical to or deceptively similar with that of the plaintiffs. A leave or license given to the defendants in that suit, in lieu of the compromise cannot be termed as a license to the defendants herein to use Castrol. In any case, the above said compromise does nowhere using the word Castrol as trade mark in a manner identical or deceptively similar with that of the plaintiff's CASTROL.
21.3.Thirdly, as stated in para 2(e) of the compromise petition the defendants there have expressly undertaken not to deal in any manner in products consisting of brake and clutch fluids or any other cognate or allied goods in Castrol containers. Such use of colour combination, get up, lay out and artistic features as was earlier being made by the defendants was given up. The defendants also destroyed their impugned containers.
(23) We are, thereforee, unhesitatingly of the opinion that the claim of the plaintiffs was not liable to be defeated either on the ground of delay or laches or on the ground of compromise.
(24) It was submitted by the learned Counsel for the defendant-respondent that the trade mark Castrol is the ownership of plaintiff No. 1 but it does not have any use in India while the plaintiff No. 2 claims to have used that trade mark in India but it is not registered proprietor thereof. The use by plaintiff No. 1 cannot be taken advantage of by plaintiff No. 1 as plaintiff No. 2 is not a 'registered user' within the meaning of Sections 48 and 49 of the Trade & Merchandise Marks Act, 1958. He further submitted that the registered mark is only CASTROL; get up design and colour scheme are not part of registration. The argument though attractive is devoid of merit. Both the plaintiffs have joined in filing the suit. Firstly, it is the case of both the plaintiffs vide paras 4 and 5 of the plaint that plaintiff No. 1 being situated in Uk has been operating in India through its head office in Bombay and has regional offices in Bombay, Calcutta, Delhi and Madras. Since 31.5.79 the plaintiff No. 2 has been set up by plaintiff No. 1 with the object of processing and marketing high grade automotive and industrial lubricants and speciality pro ducts, also with the object of taking over the entire operations of the Indian brand of plaintiff No. 1 in India. The question of attracting the applicability of Sections 48 and 49 of the Act does not, thereforee, arise. Section 48 is not mandatory but permissive in its operation as the use of the word 'may' in its test shows. If an 'user' wants himself to be registered, the provisions of Sections 48 and 49 are attracted. However, such registration is not compulsory. The object behind Sections 48 and 49 is to prevent trafficking in trade marks which is not the case here. It is not the plea of the defendants in their written statement that by permitting user by plaintiff No. 2 of its registered trade mark plaintiff No. 1 is trafficking in trade mark. Moreover, user by plaintiff No. 2 in India has been established which will ensure to the benefit of plaintiff No. 1 in accordance with Sub-section (2) of Section 48 of the Act and the two plaintiffs have been joined as co-plaintiffs. The plaintiffs are entitled to relief in either case-whether a case of infringement is made out or a case of passing off is made out.
(25) It was lastly urged that the word Castrol per se is not deceptively similar with the word CASTROL. The learned Counsel for the defendant submitted that the defendants were prepared to give an undertaking that they will change the colour scheme and get up of their containers and would not also use the logo and confine themselves to using to word Castrol only. The learned Counsel submitted that in view of the undertaking there might not be an occasion for passing of any order of interim injunction.
(26) This plea has also to be rejected. Plaintiffs have brought on record orders made from time to time in a long series of litigation which they have been fighting for the purpose of protecting their trade mark and where they have invariably succeeded. The use of the following words has been restrained by series of judicial pronouncements as being identical and deceptively similar with the plaintiff's CASTROL:
(27) In our opinion the use of the word Castrol is deceptively similar with the word Castrol and hence cannot be allowed. In view of this finding, the offer made by the learned Counsel for the defendant-respondent cannot be accepted.
(28) For the foregoing reasons the appeal is allowed with costs. The impugned order dated 22.7.96 is set aside. The application seeking the grant of ad interim injunction filed by the plaintiffs is allowed. The defendant is restrained from using the trade mark Castrol is respect of lubricants and greases etc., or any other trade mark which may be identical or deceptively similar with the trade mark CASTROL.