* HIGH COURT OF DELHI : NEW DELHI
Judgment reserved on: March 04, 2011
Judgment pronounced on: March 21, 2011
+
C.S. (OS) No. 488/2005 & I.A. No. 2865/2005
% Castrol Limited & Others ... Plaintiffs
Through: Mr. Sushant Singh, Mr. V.K. Sinha
and Mr. P.C. Arya, Advocates
versus
Mr. Rajinder Kumar Gupta & Others ... Defendants
Through: Nemo
CORAM:
HON'BLE MR. JUSTICE SUNIL GAUR
1. Whether the Reporters of local
papers may be allowed to see the
judgment?
2. To be referred to Reporter or not? No.
3. Whether the judgment should be
reported in the Digest?
SUNIL GAUR, J.
1. Permanent injunction to restrain the Defendants from infringing
Plaintiff’s registered trademark CASTROL in the field of oils and lubricants
etc. and the violation of plaintiff’s copyright in the packaging material, etc.,
passing off, damages and delivery up, is claimed in this suit.
2. Plaintiff’s claims to be international manufacturer and merchants of
wide range of products in automotive sector and by virtue of long standing
use, publicity of the Plaintiff’s product under the aforesaid trademark, it is
said that the trademark CASTROL has acquired tremendous reputation in
India as well as in other parts of the world. During February, 2005,
C.S. (OS) No. 488/2005 Page 1
Plaintiffs came to know regarding the involvement of the Defendants in
counterfiet manufacturing of the oils, lubricants, greases, etc., and of its
being sold in the market in duplicate packaging material bearing identical
trademark CASTROL and FIR No.120/2005, under Section 63/68 of
Copyright Act and under Section 420/487/467 of IPC was got registered in
the concerned police station and on 15th February, 2005, the premises of
Defendant No. 1 and 4 were raided and in the raid conducted, the police
had recovered Defendant’s stock of infringing material bearing Plaintiff’s
trademark CASTROL. As per the Plaintiff, approximately two truckloads of
infringing material were seized by the police and in addition, CASTROL
branded duplicate containers/packaging material was also seized.
Defendant No.1 is said to be the owner/manufacturer of the counterfeited
oils, etc. and Defendant No. 2 to 4 are said to be assisting Defendant No.1
in the illegal activities.
3. It is the case of the Plaintiffs that they had not placed any order on
the Defendants to manufacture the infringing goods with Plaintiff’s
trademark and Defendants adoption and use of Plaintiff’s trademark is not
only with mala fide intention of passing off their counterfeit goods under
Plaintiff’s trademark but is clearly fraudulent. As per the Plaintiffs,
Defendants have illegally earned huge profits by selling the infringing
material, which has caused irreparable loss and injury to the Plaintiffs for
which damages of Rs.20 lacs have been claimed in this suit.
4. Since Defendants have not come forward to contest the Plaintiff’s
claim despite being served, therefore, they were proceeded ex-parte on
13th April 2005. Thereafter, the Plaintiffs had led ex-parte evidence by way
C.S. (OS) No. 488/2005 Page 2
of Affidavit of its constituted attorney, who had relied upon the Power of
Attorney, (Ex.PW-1/1), Registration Certificates (Ex.PW-1/2) and upon
photographs of sample products of the Plaintiffs, collectively marked as Ex.
PW-1/3. The copy of FIR No.120/2005 by the Plaintiffs regarding the
infringement alleged is placed on record as Ex.PW-1/4 and the photograph
taken during the police raid of Defendant’s premises is on record Ex. PW-
1/5.
5. At the hearing, Mr. Sushant Singh, learned counsel for the Plaintiff
had articulated his submissions and had meticulously referred to the
evidence and documents on record and had cited decisions reported in
‘Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia & Ors.’ 2004
(28) PTC 121 (SC); ‘Laxmikant V. Patel vs. Chetanbhat Shah’ AIR 2002
SC 275; ‘Time Incorporated vs. Lokesh Srivastava & Anr.’ 2005 (30) PTC 3
(Del); ‘Microsoft Corporation vs. Yogesh Papat & Anr.’ 2005 (30) PTC 245
(Del); ‘Intel Corporation vs. Dinkaran Nair & Ors.’ 2006 (33) PTC 345
Delhi and ‘Adidas-Salomon Agreement & Ors. Vs. Jagdish Grover’ 2005
(30) PTC 308 (Del).
6. Upon consideration of the submissions advanced and on perusal of
the unrebutted evidence on record of this case and the decisions cited, I
find that this suit has been validly instituted on the basis of Power of
Attorney (Ex.PW-1/1) and it is within limitation and jurisdiction of this Court.
It transpires from the evidence on record that Plaintiff’s trademark
CASTROL is dominant in the wide range of motor oil products in the
automobile sector and the subsisting trademarks held by the Plaintiff have
been spelt out in paragraph no: 7 of the evidence led by way of Affidavit of
C.S. (OS) No. 488/2005 Page 3
the Constituted Attorney of the Plaintiff.
7. On bare perusal of the photographs of Plaintiff’s sample products
(Ex.PW-1/3) and of the photographs of Defendant’s sample product
(Ex.PW-1/5), it becomes crystal clear that the goods label/containers/
packaging material bearing trademark CASTROL, as shown in the
photograph (Ex.PW-1/5) of the Defendants, is not only identical to the
Plaintiff’s trade mark but a crude attempt has been made by the
Defendants to counterfeit Plaintiff’s products in question, as the color
scheme, getup, label and logo, etc. of the infringing material is exactly the
same as that of the Plaintiff’s sample products as shown in the
photographs collectively marked as Ex.PW-1/3. Thus, it becomes
abundantly clear that the Defendants have not only infringed Plaintiff’s
trademark CASTROL but have also infringed Plaintiffs copyright in the
packaging material etc. for which the Defendants not only needs to be
injuncted but even the Plaintiffs becomes entitled to the exemplary
damages, because the infringing products of the Defendants are clearly
counterfeit and seeking rendition of accounts to Defendants, who are ex-
parte would be an exercise in futility.
8. Consequently, this suit is decreed with costs in terms of paragraph
no: 38 (a), (b) and (c) of the plaint. So far as the relief claimed in paragraph
no: 38(d) of the plaint is concerned, the same cannot be granted, as the
FIR No.120/2005 is stated to be still pending trial. However, in the light of
the afore referred unrebutted evidence on record, it is found that the
Plaintiffs are entitled to the punitive damages of Rupees Ten Lacs only,
with a view to discourage and dishearten the law breakers to indulge in
C.S. (OS) No. 488/2005 Page 4
such like violations with impunity. Plaintiffs shall be also entitled to interest
on the aforesaid amount at the rate of 9% per annum from the date of filing
of the suit till realization. Decree sheet be drawn forthwith.
9. This suit and pending application are accordingly disposed of.
Sunil Gaur, J.
March 21, 2011 pkb/rs C.S. (OS) No. 488/2005 Page 5