IMPORTANT POINT
The court affirmed that summary judgment can be granted when a defendant lacks a real prospect of successfully defending against claims of trademark infringement.

JUDGMENT :

MINI PUSHKARNA, J

I.A. 8999/2024

1. The present application has been filed under Order XIII-A Rules 3 & 6(1)(a) read with Section 151 of the Civil Procedure Code, 1908 (“CPC”).

2. Present suit has been filed by the plaintiffs seeking permanent injunction restraining the defendant from dealing in engine oil, coolants and lubricants and/or similar goods, bearing the defendant's Marks and Packaging, BPL, BPL GOLD, and the Oil in Action Device Mark , and/or the piratical container(s) and marks or packaging or designs that are nearly identical/similar to the plaintiffs’ Marks and Packaging.

3. The plaintiffs seek a summary judgment against the defendant, on the ground that the defendant has no prospect of defending the plaintiffs’ claims and in view of the various admissions by the defendant with respect to his use of the defendant’s Marks and Packaging, which are nearly identical/deceptively similar to the plaintiffs’ Marks and Packaging and plaintiffs’ Container Design.

4. Learned counsel appearing for the plaintiffs submits that, the defendant has made various admissions, including, his written statement and his reply to Order XXXIX Rules 1 and 2, with respect to his use of the defendant’s marks and packaging, which are nearly identical/deceptively similar to the plaintiff’s marks and Packaging, as well as plaintiff no.2’s Container Design.

5. The case, as canvassed by the plaintiffs, is as follows:

5.1 The plaintiff no. 1, i.e., BP P.L.C., and plaintiff no. 2, i.e., Castrol Ltd. (“plaintiffs”), are companies organised and existing under the laws of England and are both group companies in the BP group of companies. The plaintiff no. 1 is the ultimate parent company of the BP group of companies and is a direct parent company of the plaintiff no. 2.

5.2 The plaintiffs are the proprietors of various valid and subsisting registrations for the plaintiffs’ marks in India. The plaintiff no. 2 is also the owner of Registration no. 219180 for the plaintiff no. 2’s Container Design in Locarno Class 09-03. The said Registration no. 219180 dated 16th October, 2008, claims novelty in the shape and configuration of the container and is valid and subsisting.

5.3 The details of some of the applications/registrations filed by/owned by the plaintiffs, are as follows:

5.4 A table showing the years, in which the plaintiffs first used each of the plaintiffs’ marks in India, is reproduced as under:

5.5 Plaintiffs have sold engine oils and lubricants, on a worldwide basis, in containers, each of which have a distinctive shape. The labels affixed to the plaintiffs’ containers feature a distinctive layout and get-up. The plaintiffs’ Marks and Packaging used by the plaintiffs on and in relation to their products, are all original artistic works and are entitled to copyright protection across world, including India.

5.6 The defendant is the sole proprietor of and trades as M/s Shivay Enterprises, with address at 133/430, Block-O, Sabji Mandi, Kidvai Nagar, Kanpur, Uttar Pradesh – 208011, and is engaged in the business of manufacturing, marketing, and sale of engine oils, transmission oils, machine oils, greases, and other forms of lubricants. The defendant uses the defendant's Marks, the defendant’s Packaging and/or the defendant’s piratical Container Design, as depicted in Para 12A, 12B and 12C of the plaint, on and in relation to the said goods.

5.7 The defendant filed Trademark Application no. 5891422 for “BPL GOLD” on 13th April, 2023, covering “packing of 2T oil used for 2 and 3-wheeler motor engines” in Class 4, on a proposed-to-be-used basis. However, after the filing of the present suit, the defendant submitted a Letter of Withdrawal dated 07th October, 2023 to the Trade Marks Registry but, the Registry has not yet acted on it, and the application status remains “Objected”.

5.8 The plaintiffs became aware in June 2023 of the defendant’s business of selling engine oil in containers resembling the plaintiffs’ Marks, Packaging, and Container Design. A