Delhi HC grants Permanent injunction against firm for violation of copyright

* 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