India: Castrol Wins Trademark Infringement Case

Last Updated: 22 January 2018
Article by Lucy Rana and Tulip De

Trade Dress is the complete packaging of a product that is visually appealing to the eyes of the buyer. It is the combination of different elements of the packaging of the goods that is used for its promotion. Applying this law, the Delhi High Court on January 3, 2017, in the case of M/S Castrol Limited & Anr. v. Iqbal Singh Chawla & Anr. decreed in favor of Castrol Limited and granted a permanent injunction restraining Iqbal Singh Chawla from using the mark ACTIV or ACTIVE.

Brief Background

  • M/S Castrol Limited (hereinafter referred as 'the Plaintiff') is the registered proprietor of the mark 'CASTROL' and 'ACTIV'. They claim to have adopted the mark ACTIV in 1999. The registration details of the Plaintiff's trademarks Ltd according to the TMR records are:


  • The Plaintiff also claims to own the trade dress and copyright under Section 2 (c) of the Copyright Act, 1957 in the packaging as it is an original artistic work.
  • In December 2010, the Plaintiff discovered that Mahendra Oil Company (hereinafter referred as Defendant no. 1) was selling 4T oil under the trademark 'LUMAX ACTIVE'. They were allegedly imitating the get up, layout and features of the packaging of the Plaintiffs by adopting red, white, and green color's on the label in an identical manner and also shape and configuration of the bottle.
  • The Plaintiff alleged that the Defendants are committing trademark infringement and passing off and thus filed a suit before the Delhi High Court seeking a decree thereby restraining the Defendants from selling, marketing, offering for sale any packaging/label/empty container used/re-cycled and reconditioned in respect of the industrial oil, engine oil, lubricants, grease under the trade mark 'LUMAX ACTIVE' or any other trade mark, which is deceptively similar with the Plaintiffs' trade mark 'ACTIV'

Issues

There were 8 issues framed by the Delhi High Court out of which the most important ones are:

  • Whether the Defendants have committed an act of passing off and/or infringed the registered trade mark 'ACTIV' of the Plaintiffs using the mark 'T4 ACTIV' and the impugned label?
  • Whether the Plaintiffs are entitled to damages and, if any, to what amount and from whom?

Infringing Goods


Plaintiff's Contentions

  • The Plaintiff claims that it owns the trademark and trade dress of the alleged product.
  • It claimed proprietary rights because of its prior user in the shape and overall getup of the container.
  • It brought a witness to support its claims. The witness proved that:

    • The registration of the trademarks 'CASTROL' and 'ACTIV' are in favor of the Plaintiff.
    • The Plaintiff has been using the trademark 'CASTROL' and 'ACTIV' for several years.
    • The product of the Plaintiff is packed in a particular plastic container. The container is having a unique trade dress with a distinctive design, layout, and shape and configuration.
    • The artistic features of the get up, layout and color combination of the product has been extensively devised and depicted in color in various print media and its features are exclusively associated with the Plaintiffs' and no one else.
  • It was further contended that the adoption of the said mark ACTIVE by the Defendants in respect of identical goods is not a matter of coincidence and the same is a deliberate attempt on behalf of the Defendants to encash upon the goodwill and reputation of the Plaintiff Company.
  • It was alleged that the Defendant is creating a misrepresentation in the course of the trade to the prospective customers, which is likely to lead to immense confusion and deception.

Defendants Contentions

  • However, the Defendants had filed the written statement, but none of them appeared at the hearing.
  • However, the submissions made in the written statement were:

    • 'ACTIVE' being a common dictionary word, the Plaintiff cannot claim MONOPOLY or exclusive right to the use of the said mark.
    • The Plaintiff's trademark ACTIV has always been used in conjunction with the trademark CASTROL.
    • They had honestly, bonafidely adopted the mark LUMAX ACTIVE, and use of the mark LUMAX ACTIVE does not in any manner amount to passing off the trademark CASTROL ACTIV.

Court's Decision

  • The Court was of the opinion that if the impugned trademarks are compared then there is no deceptive similarity. However, if the trademarks along with the trade dress are compared it is clear that the adoption of the trademark ACTIVE by the Defendant is clearly dishonest and to encash upon the goodwill and reputation of the Plaintiffs.
  • Therefore, the Court held that 'the Defendants are restrained by way of a permanent injunction from using the mark ACTIV and/or ACTIVE in the identical trade dress, color scheme, packaging, design, layout, shape and configuration as that of the Plaintiffs. However, the injunction would not affect the right of the Defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration'.
  • Also, a decree to the sum of INR 2,00,000 (USD 3152 approx.) was passed in favor of the Plaintiff and against the Defendant No. 1. The court held that 'Apart from a bald statement by the Plaintiff that it has suffered damage due to illegal action of the defendants and estimates the damages from the infringing acts of the defendants to the tune of Rs.20 lakhs, no evidence has been led by the plaintiff. In view of the fact that there is no evidence has been led by the plaintiff establishing the loss of Rs. 20,00,000/- the same cannot be awarded. However, defendant No. 1 in its additional affidavit dated 02.07.2012 has contended that it has made substantial sales during the period 2006 – 2009. Since the adoption of the mark in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration, has been held to be dishonest, it would be expedient to direct Defendant No. 1 to pay notional damages of Rs. 2,00,000/- in favour of the plaintiff.'

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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