Shell Brands International AG and Anr. Vs. Gagan Chanana and Ors.
2010 (44) PTC 193 (Del)
Plaintiffs claimed to be owners of the ‘SHELL’ brand and several trademarks for petroleum based products. Defendants were engaged in marketing auto cables and machinery.
Plaintiffs became aware in Feb. 2002 that the Defendants had applied for registration of mark ‘SHELL’. They opposed the same. Plaintiffs did not pursue the opposition and became aware in 2007 that the Defendants were marketing goods under the mark ‘SHELL’.
Defendants can’t be permitted to dilute the well-known and distinctive quality of the Plaintiffs’ mark under the pretext of marketing dissimilar goods.
Plaintiffs have concealed that the Defendants are registered owners of the ‘SHELL’ word mark and the Plaintiffs had sought rectification of Defendants’ registered mark.
Word ‘SHELL’ as used by the Plaintiffs is in conjunction with a seashell device and to such extent alone, can the Plaintiffs claim exclusivity in relation to ‘SHELL’.
Plaintiffs had applied for rectification of Defendants’ mark. This fact has been suppressed by the Plaintiffs.
There are no averments in the suit that the Defendants are also holder of a registered trademark with effect from 1996. When the contesting parties are owners of registered trademarks, the action for an aggrieved party would be a claim for passing-off. The said party has a duty to inform the Court that the Defendant is also registered proprietor.
The Defendants’ use is only of the word.
Defendants do not use the mark in relation to petroleum or oil products. Plaintiffs do not produce automotive parts or market them.
Plaintiffs have not urged that the channels of trade in respect of the two goods are common.
Even if the suit was only for passing-off, the record shows Plaintiffs’ awareness of the Defendants since 2002.
The Plaintiffs’ claim for temporary injunction has to fail.