The judgment established the importance of distinctiveness, packaging and labeling differences, and the use of similar marks by other companies in determining trademark infringement and passing off.

1. By this application under Order XXXIX Rule 1 and 2 CPC the Plaintiff seeks ad-interim injunction in favour of the Plaintiff and against the Defendant in relation to the trademark ‘4T PREMIUM’or any other mark identically or deceptively similar to the Plaintiff’s mark ‘4T PREMIUM’amounting to infringement of the Plaintiff’s registered trademark under No. 1261544 or leading to passing off the goods or business of the Defendant as that of the Plaintiff.

2. Learned counsel for the Plaintiff contends that the Plaintiff is a 50-50 joint venture of Valvoline International Incorporation, USA and Cummins India Limited, the two 500 Fortune Company, that is, Ashland Inc. and Cummins. Inc. The Plaintiff is India’s fastest growing lubricant marketer and producer of quality branded automotive/industrial products. The Plaintiff’s products include automotive lubricants, transmission fluids, gear oil, hydraulic lubricants, automotive filters, specialty products, greases and cooling system products. The Plaintiff’s products are available in more than 15,000 retail counters across India. The products of the Plaintiff are imported under various famous trademarks one of which is ‘4T PREMIUM’ which has been used extensively, continuously and uninterruptedly by the Plaintiff since the year 2003 in India. The Plaintiff has been manufacturing and selling multi-grade engine oils under the trade name ‘4T PREMIUM’under the strict quality control and supervision. The products of the Plaintiff under the trademark ‘4T PREMIUM’improve engine life and provide maximum power, besides giving special protection to air cooled engines of four stroke motorcycles and are thus recommended for use in four stroke model Hero Honda, Bajaj, TVS, Yamaha, Suzuki, Honda, Kinetic Engineering, LML and all other makes. The Plaintiff is the proprietor of the trademark ‘4T PREMIUM’in Class-4 for engine oils vide registration No. 1261544 dated 16th January, 2004.

3. Learned counsel for the Plaintiff states that the plaintiff does not claim any exclusive right in the use of mark “4T” which indicates four stroke engine oil as number of other companies are marketing the same however, the Plaintiff is aggrieved by the Defendants use of the trademark ‘4T PREMIUM’which is likely to lead to the confusion and deception amongst the members of the public. The Defendant is neither registered proprietor nor has filed any trademark application for registration of the trademark ‘4T PREMIUM’. The Defendant has adopted the Plaintiff’s trademark ‘4T PREMIUM’ with mala fide intention, hence the Defendant is liable to be injuncted from using the trademark ‘4T PREMIUM’. Though number of companies is using “4T” but none is using ‘4T PREMIUM’ and only one other company Veedol is using the same to which also the Plaintiff has given a notice. Reliance is placed on Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980; Sunder Nagar Association vs. Welfare Club (regd.) and another, 1995 PTC 270; Ishi Khosla vs. Anil Aggarwal and another, 2007 (34) PTC 370 Delhi.

4. Learned counsel for the Defendant on the other hand contends that the Plaintiff cannot claim exclusive right either in the word “4T” or “4T PREMIUM” because the word “4T” denotes four stroke engine and the word PREMIUM is a laudatory word descriptive of the goods and no-one can claim the right to use the word exclusively. The Defendant uses its trademark ‘AGIP’with ‘4T PREMIUM’. The packing of the Defendant is totally different from the Plaintiff and thus there can neither be any infringement nor passing of the Defendant’s goods as that of the Plaintiff. The Defendant has never used the mark ‘4T PREMIUM’ separately and hasalways used the same with its trade name ‘AGIP’. The Defendant has already filed an application for cancellation of the Plaintiff’s trademark before the Intellectual Property Appellate Board as the same could not have been registered in the first instanceitself. Reliance is p