Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2021 Supreme(Del) 287

IN THE HIGH COURT OF DELHI AT NEW DELHI
C. HARI SHANKAR, J.
Raaj Unocal Lubricants Limited – Plaintiff
Versus
Apple Energy Pvt. Ltd. and Another – Defendants
I.A. Nos. 3133, 4316 of 2021, C.S. (COMM) No. 100 of 2021
Decided On : 25-05-2021

Advocates:
Advocate Appeared:
For the Plaintiffs : Mr. Akhil Sibal, Mr. Kapil Wadhwa, Ms. Deepika Pokharia, Ms. Deepshri.
For the Defendants : Mr. Neeraj Kishan Kaul, Mr. Raj Shekhar Rao, Ms. Shwetasree Majumder, Ms. Diva Arora, Mr. Aditya Verma, Ms. Vasundhara Majithia.

Point of Law: Texas Proceeding - Intellectual property rights - Anti-suit injunction allowed - Texas proceedings not being oppressive or vexatious to present proceedings being prosecuted by plaintiff before this Court, this Court would not be justified in restraining defendants from seeking protection against infringement (as they perceive) of “76” mark, over which they claim exclusive rights in US, before US Court, which alone could rule thereon.

Headnote:
Code of Civil Procedure, 1908 - XXXIX Rule 4 - Section 13 - Interim injunction granted - Infringement of trademarks - When foreign judgment not conclusive - Whether continuance of Texas proceedings, initiated by defendants, is oppressive or vexatious to present proceedings pending before me, initiated by plaintiff, as would justify grant of anti-suit injunction, restraining defendants from continuing to prosecute Texas proceedings, in interests of justice - Grant of ad interim anti-suit injunction, as contained in order may briefly be capitulated thus - Plaintiff contended that it had been established in technical collaboration with Union Oil Company of California (UNOCAL), which was a petroleum explorer and lubricants manufacturer based in US, and had, vide License Agreement been granted license by UNOCAL to use technical information and know-how of UNOCAL, as well as its trademark, for blending, packaging and marketing of UNOCAL products in India.
Finding of the Court:
It is important to recognise, at outset, limitations on Court, while granting anti-suit injunctions. There is no gainsaying plain fact that anti-suit injunctions interfere with exercise of jurisdiction by Court in another sovereign territory to which jurisdiction of injuncting Court does not extend. Courts in India cannot grant injunctions to protect their citizens from orders passed by Courts in other sovereign territories - A bare reading of complaint filed before Texas Court reveals that defendants have, in said proceedings, essentially sought an injunction, against plaintiff reflecting the “76” mark - over which defendants claim superior trademark rights in US - on its www.unicalglobal.com webpage or social media pages, so as to be accessible to customers in the US. Mr. Kaul, learned Senior Counsel appearing for defendants has also reiterated this position, before this Court in present proceedings. Needless to say, defendants would remain bound by this statement, both in this Court as well as before Texas Court.
Result: Anti Suit injunction allowed.

JUDGMENT :

C. HARI SHANKAR, J.

1. By order dated 8th March, 2021 in IA No. 3133/2021, I had granted ad-interim relief to the plaintiff, by restraining the defendant from (i) selling, manufacturing, advertising, promoting or otherwise using the marks “76” or any other mark deceptively similar to Plaintiff’s trademarks “UNOCAL” or “76” with respect to goods falling under Class IV of the Schedule to the Trade Marks Rules, 2017 and (ii) continuing to proceed with Civil Action No. 4:21-CV-279, titled Philips 66 Company vs. Raaj Unocal Lubricants Ltd. pending before the United States District Court at the Southern District of Texas (“the Texas Court” in short).

2. The defendants have filed a response to IA No. 3133/2021 and have also filed IA No. 4316/2021 under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (“CPC”) seeking vacation of the ad-interim injunction order dated 8th March 2021.

3. At the request of learned Senior Counsel for the parties, I heard them, at length, in the first instance, on the aspect of continuance/vacation of the ad-interim anti-suit injunction order passed by me on 8th March, 2021. This judgment disposes of the said prayer.

4. Arguments were advanced, on the aspect of anti-suit injunction, by Mr. Akhil Sibal and Mr. Neeraj Kishan Kaul, learned Senior Counsel for the plaintiff and the defendants respectively. Written submissions have also been filed by said learned Senior Counsel.

A Brief Factual Background

5. The reason for grant of ad-interim anti-suit injunction, as contained in the order dated 8th March 2021, may briefly be capitulated thus. The plaintiff contended that it had been established in technical collaboration with the Union Oil Company of California (UNOCAL), which was a petroleum explorer and lubricants manufacturer based in the US, and had, vide License Agreement dated 25th September, 1990, been granted license by UNOCAL to use the technical information and know-how of UNOCAL, as well as its trademark, for blending, packaging and marketing of UNOCAL products in India. This, contends the plaintiff, was followed by a Memorandum of Understanding (MOU) dated 3rd June, 1991, between UNOCAL and the plaintiff, whereunder intellectual property rights in respect of the trademarks “UNOCAL” and “UNOCAL 76” and “76” were vested in the plaintiff, against consideration. The MOU further provided for subsequent issuance, by UNOCAL, of a letter in favour of the plaintiff, vesting, in the plaintiff, exclusively, rights to ownership of the said trademarks, for the purpose of manufacturing and marketing in India. My attention had been invited to the following clause, contained in the MOU, to this effect:

“Union oil is hereby agreeable to issue a letter in favour of RULL [Raaj Unocal Lubricants Ltd.] with immediate effect by virtue of which the rights to ownership of the trademarks “Unocal” or “76” and “Unocal 76” for manufacturing and marketing in India will be vested solely and exclusively with M/s Raaj Unocal Lubricants Ltd. and that Union oil shall not stake claim on the same directly or indirectly and/or through its subsidiaries in perpetuity and shall not launch or enter into any such agreement by virtue of which it indirectly or directly, through its subsidiaries, collaborators, distributors, joint venture partners, international offices etc. commences and/or engages into any competing activity of importing blending, contract manufacturing, sale and marketing of similar products under the same or similar brand names.

It is further agreed that the said transfer of rights shall be executed without any royalty or one-time payments as initially suggested and proposed by Union oil and that Union oil finds merit in the arguments put forth by RULL.

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It is further agreed that the transfer of rights of the trademarks to RULL are not for a limited time period, neither for the duration of the agreement signed and executed between both parties but it is valid and (enforceable) in perpetuity and is irrevoca