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Judgment
MINI PUSHKARNA, J (ORAL)
The present suit has been filed for permanent and mandatory injunction restraining infringement of trademark, copyright infringement, passing off, acts of unfair competition, seeking damages/rendition of accounts, delivery up, etc.
The plaintiff in the present case has raised grievance with regard to the marks of the defendants, i.e., ‘CRISTROL’, ‘CARTOL’, ‘CARSOL’ and ‘CARTOMAX’.
Perusal of the order dated 09th February, 2024 shows that a statement made on behalf of the defendants was recorded that the defendants have abandoned the aforesaid mark and are not using the same any further.
Thus, the only issue that remains in the present case was in relation to the use of the mark ‘COASTAL’ in its word form as well as the device
form, i.e., and .
The comparison showing the products of the plaintiff and the defendants, as given in the plaint, is as follows:
| of the Plaintiff's CASTROL Device, including, a green sphere followed by the word CRISTROL in Italics and in the colour red, with minor insignificant changes, such as addition of the words Dev Lubricants in a small font. Clearly, such additions offer no help to distinguish the rival marks. | |||
| 2. | CARTOL Cartol Lubricant CARSOL Carsol Lubricant | CASTROL Castrol | The Defendants have merely removed the letter S and switched positions of the letters T and R in the Plaintiff's CASTROL mark to arrive at their mark CARTOL. Similarly, the Defendants have removed the letter T and switched positions of the letters S and R to arrive at the Defendants CARSOL mark. Moreover, the Defendants have also copied the overall red and green colour combination of the Plaintiff's CASTROL Device. |
| 3. | Coastal Coastal | Castrol Castrol | The Defendants have copied the overall colour combination and structural scheme of the Plaintiff's CASTROL Device, including, a green sphere above, followed by the word COASTAL and in the colour |
| Castrol | red, with minor insignificant changes. Clearly, such additions offer no help to distinguish the rival marks. | ||
| 4. | Coastal POWERED | POWER1 CASTROL POWER 1 Castrol | The Defendants have merely removed the number 1 from the Plaintiff's POWER1 mark to arrive at the Defendants' COASTAL POWERED mark. Clearly, the rival marks (COASTAL POWERED v. CASTROL POWER1) are visually and phonetically similar. Moreover, as noted above, the COASTAL Device mark is also deceptively similar and/or imitates the Plaintiff's CASTROL Device mark. |
| 5. | CRB POWER | CRB POWER1/CASTROL POWER1 | The Defendants have very conveniently combined parts the Plaintiff's POWER1 and CRB marks to arrive at the Defendants' GRB POWER Device mark. In fact, seven (7) out of eight (8) letters forming part of the Defendants' GRB POWER mark have been taken out from the Plaintiff's POWER1 and CRB marks and the different letter G is also phonetically |
This Court notes the statement of learned counsel for the plaintiff, as recorded in the order dated 05th April, 2024, wherein, it had been recorded the plaintiff does not have any objection to the defendants using the
mark/device, i.e., , and
.
Today, learned counsel for the plaintiff reiterates the submissions as recorded in the order dated 05th April, 2024. He further submits that the plaintiff has no objection to the use of the mark ‘COASTAL’ by the defendants. However, he submits that the defendants shall not be allowed to use the device marks and .
Learned counsel for the defendants submits that the defendants shall use only the mark ‘COASTAL’ and not the device mark and .
Learned counsel for the defendants submits that the defendants shall
also not use the device mark .
Learned counsel for the plaintiff submits that if that be the case, then the suit can be decreed in favour of the plaintiff, however, with costs.
Accordingly, the following directions are issued:
I. A decree of permanent injunction is issued in favour of the plaintiff and against the defendants, thereby, restraining the defendants, their directors and any other individuals, officers, managers, employees, agents, dealers, licensees, companies, retailers, or any other persons/entities that are related or affiliated to the defendants, individually or collectively, as the case may be, and all others, acting for and on behalf of the defendants, from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the Internet or otherwise, engine oil, coolants, gear oils and lubricants and/or similar/related/allied/cognate goods, bearing the defendants’ Marks and Packaging, CRISTROL,
and/or the
and marks or packaging that are nearly identical/similar to the plaintiff’s Marks and Packaging, that may amount to trademark infringement of plaintiff’s registered mark and packaging.
II. All the packaging, labels, promotional or advertising material, brochures or any other material that bear the defendant’s mark or defendant’s packaging or any other marks that are nearly identical or deceptively similar to the plaintiff’s marks or plaintiff’s packaging, shall be destroyed by the defendants at their own cost in the presence of the authorized representative of the plaintiff.
III. Defendant no.2 shall withdraw the trademark Application Nos. 6216488, 6159777, 5589802, 5594436 and 5391757 for the ‘COASTAL’ Device Mark.
IV. Defendant no.2 shall withdraw its opposition Application being Application No. 1272286 filed by him with the Registrar of Trademarks.
V. In view of the fact that the defendants were found to be carrying infringing activities, a cost of ₹3,00,000/ - shall be paid by defendant no.4 to the plaintiff, within a period of eight weeks from today.
VI. In view of the fact that the word mark ‘CASTROL’ has been declared as a well-known mark, liberty is granted to the plaintiff to approach the Registrar of Trademarks to declare the plaintiff’s ‘CASTROL’
and ACTIV Device marks, i.e., and
to be well known marks. As and when such an application is filed by the plaintiff, the Registrar of Trademarks shall consider and dispose of the same expeditiously.
VII. This Court records the undertaking of learned counsel for the plaintiff that as and when there is an application for quashing of FIR filed on behalf of the defendant no.2, the plaintiff shall cooperate in getting the same quashed and give its no objection. Needless to state that the said undertaking of the plaintiff is being recorded in view of the fact that the defendants have undertaken to not do any activity, which shall infringe plaintiff’s registered trademarks/copyrights.
VIII. Further, in view of the fact that the present matter has been settled at a nascent stage, the Registry is directed to issue a certificate of refund of full court fees in favour of the plaintiff, in the name of plaintiff’s counsel, i.e., Sujata Chaudhri IP Attorneys.
In view of the directions passed against defendant no.4, a copy of the Aadhaar Card of defendant no.4 with Unique ID 765607549295, is taken on record.
Let decree sheet be drawn up in the terms of the aforesaid directions.
Accordingly, the suit, along with the pending applications, stands disposed of.