Castrol Limited Vs. Kapil & Anr.

Brief Facts

Castrol Limited filed a suit seeking a permanent injunction against the defendants for manufacturing, selling, and advertising engine oils, coolants, and lubricants using marks and packaging deceptively similar to those of the plaintiff. The plaintiff is the registered proprietor of marks such as "ACTIV" and "ACTIBOND" and has a distinctive trade dress associated with its products. The defendants were found to be using infringing marks like "ACTIVE" and "ACTIBOND" along with similar packaging to mislead consumers. An ex-parte ad-interim injunction was granted on July 2, 2024, restraining the defendants from using the infringing marks. Despite the lapse of the statutory period, the defendants failed to file written statements, leading the court to proceed under Order VIII Rule 10 of the CPC.

Issues

Whether the defendants' use of marks and trade dress similar to the plaintiff's constitutes trademark infringement and passing off.

Submissions of the Parties

The plaintiff argued that it has been using its registered marks and trade dress for decades and has acquired immense goodwill and reputation worldwide, including in India. The defendants were engaged in manufacturing and selling lubricants under deceptively similar marks and packaging, leading to consumer confusion. The plaintiff submitted that an investigation revealed that the infringing products were being openly advertised and sold via online platforms such as Facebook and IndiaMart, and that a local commissioner appointed by the court had found substantial quantities of counterfeit goods at the defendants' premises. The plaintiff contended that the defendants' actions constituted deliberate trademark infringement and sought a permanent injunction along with damages.

The defendants, through their counsel, denied liability but failed to file a written statement within the statutory period. They contended that no local commission was executed at the premises of Defendant No. 2 and that no infringing goods were found there. However, the plaintiff countered this claim by presenting documentary evidence, including GST registrations, IndiaMart listings, and Facebook posts, linking Defendant No. 2 to the infringing activities.

Reasoning and Analysis of the Judge

The court noted that the plaintiff had produced extensive evidence establishing its ownership of the marks and trade dress. A comparative analysis of the plaintiff’s and defendants’ products revealed striking similarities, particularly in trade dress, which included a silver-grey container with a red cap, a trapezium-shaped label, and a green and white color scheme. The court observed that the defendants had made only minor modifications, such as adding an extra letter to the plaintiff’s "ACTIV" mark to create "ACTIVE."

Applying the test of deceptive similarity from Parle Products v. J.P. & Co., the court held that an ordinary consumer with imperfect recollection could easily mistake the defendants' products for those of the plaintiff. It also referred to National Insurance v. Virat Travels, where copying a distinctive mark with minor changes was deemed to constitute trademark infringement.

The court found that the defendants had failed to file written statements, leaving the plaintiff’s claims unrebutted. Citing Sandisk LLC v. Laxmi Mobiles, it held that in such circumstances, a summary judgment was justified. The evidence from the local commissioner’s report, which detailed the seizure of infringing products and the operation of a manufacturing unit producing counterfeit goods, further supported the plaintiff’s case.

Decision of the Judge

The court decreed the suit in favor of the plaintiff, granting a permanent injunction restraining the defendants from using the infringing marks and trade dress. It awarded damages of Rs. 10,00,000 each against Defendant Nos. 1 and 2, payable within six months in two installments. The plaintiff was also granted liberty to visit Defendant No. 1’s premises to destroy the infringing goods.

Case Details

Case Title: Castrol Limited Vs. Kapil & Anr.

Date of Order: 18.02.2025

Case No.: CS(COMM) 532/2024

Neutral Citation: 2025:DHC:1207

Court: High Court of Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna