Castrol Ltd. and Anr. Vs. A.K. Mehta and Anr.
1997 (17) PTC 408 Del (DB)
Appellant No. 1 was a Company incorporated under the law of England. Appellant No. 2, Castrol India Ltd. was a Company incorporated under the Indian Companies Act, 1956 It carries on business at a large and extensive scale in high grade automotive and industrial lubricants, greases, brake fluids, wood-preservatives, metal cleaning compounds etc. It also trades in anti-freezing compounds, hydraulic fluids etc.
Appellant No. 1 was registered proprietor of the trade mark Castrol and logo of Castrol.
Respondents were using container with the mark Bestrol. The Appellants filed a suit and obtained an ex-parte injunction. However, the said injunction was vacated by the Single Judge. Hence the present appeal.
The reasoning of the learned single judge towards vacating the injunction was two fold.
1. Respondents had been using mark Bestrol for more than 10 years and so the suit suffered from delay and latches;
2. Appellants had themselves permitted the user of the trade mark Castrol by third party in the year 1993 and thus the Appellants cannot have grievance if the same trade mark is used by the defendant.
In support of it’s plea of use, the Respondents submitted sales figures and advertisements. The Division Bench observed that the said sales figures are not necessarily related to lubricants and the Respondents have not brought on record any material to hold the figure of sales being referable to lubricants only. The advertisement was a single piece and thus was not taken into consideration.
Held: On Delay
“From the evidence adduced by the defendants a plea of concurrent user cannot at all be spelled out. Hence the suit filed by the plaintiffs cannot be said to be suffering from delay and laches.”
It was further held “….neither a case of delay or laches is made out nor the plea of delay and laches should be entertained in the interest of general public….”
Held: On Permitted Use by third party
The Court observed “A leave or license given to the defendants in that suit, in lieu of the compromise cannot be termed as a license to the defendants herein to use Bestrol.”
Other Issues raised:
The Respondents contended that use by Appellant No. 1 cannot be taken advantage of by Appellant No. 1 as Appellant No. 2 is not a ‘registered user’ within the meaning of Sections 48 and 49 of the Trade & Merchandise Marks Act, 1958.
The Court held “Section 48 is not mandatory but permissive in its operation as the use of the word ‘may’ in its test shows. If an ‘user’ wants himself to be registered, the provisions of Sections 48 and 49 are attracted. However, such registration is not compulsory. The object behind Sections 48 and 49 is to prevent trafficking in trade marks which is not the case here. User by Appellant No. 2 in India has been established which will ensure to the benefit of Appellant No. 1 in accordance with Sub-section (2) of Section 48 of the Act and the two Appellants have been joined as co-plaintiffs. The Appellants are entitled to relief in either case-whether a case of infringement is made out or a case of passing off is made out.”
On Similarity of Marks:
The use of the word Bestrol is deceptively similar with the word Castrol and hence cannot be allowed.
The Appeal was allowed.