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High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE A. RAMAMURTHI
Castrol Limited and Another - Appellant
Versus
O. Murali Dhar Reddy and Others - Respondents
C.S. No. 670 of 1998 Original Application Nos. 521 and 522 of 1998
Decided On : 19 July 2000
Trademark Infringement - Interim Injunction - Copyright Act - Section 40
Fact of the Case:
The applicants sought an interim injunction to restrain the respondents from passing off their products as the applicants' products by using similar containers and infringing the applicants' copyright in the artistic work of the containers.
Finding of the Court:
The court found that the respondents' containers were almost identical to the applicants' containers, leading to a possibility of confusion among purchasers. The court concluded that the respondents had infringed the copyright of the applicants' artistic work and had passed off their goods as that of the applicants.
Issues: The main issue was whether the applicants had a prima facie case and if the balance of convenience was in their favor.
Ratio Decidendi: The court held that the respondents' change in the logo and color scheme, either prior to or after the filing of the suit, did not negate the prima facie case of infringement and passing off. The court also emphasized the potential for the respondents to revert to the original color scheme and get up after the case, leading to multiplicity of proceedings.
Final Decision: The court granted the interim injunction in favor of the applicants, restraining the respondents from infringing the copyright of the applicants' artistic work.
A. RAMAMURTHI, J.
1. These applications are filed by the applicants under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 and 2 of Civil Procedure Code, to grant interim injunction restraining the respondents and their men from in any manner passing off or enabling others to pass off the respondents' greases and other products as and for the applicants' greases and other goods by use of the NOBLE containers having a colour scheme of red, green and white or any container which is similar to applicants' CASTROL containers and also interim injunction restraining the respondents and their men from in any manner infringing the applicants' copyright in the artistic work CASTROL containers with colour scheme of red, green and white by use of NOBLE containers having an identical colour scheme.
2. The case in brief for disposal of these applications is as follows :
The first applicant is carrying on business of manufacturing and marketing of high grade lubricating oil products, anti-freezing compounds, hydraulic fluids, brake fluids, de-watering fluids etc., in United Kingdom and several other countries all over the world including India. The first applicant, who commenced its business activity in India in 1919 in a different name, which was changed into CASTROL LIMITED in 1960. It operated with its head office at Bombay and four regional offices in Bombay, Calcutta, Delhi and Chennai. The second applicant was established on 31.5.1979 with an object of processing and marketing high grade automotive and industrial lubricants and other speciality products. The 2nd applicant has established factories with modern machineries to manufacture various lubricants and oils conforming to the International Standard prescribed by the 1st applicant. The 2nd applicant and its predecessors-in-title have been carrying on business on a wide and extensive scale all over India. The first applicant is the registered proprietor in India of several trade marks especially trade mark CASTROL and a series of marks having CASTROL as the prefix. The trade mark CASTROL registered under No. 1494 in Class 4 as of 29th June, 1942. All the registrations are Part 'A' registrations, more than 7 years old.
3. The first applicant entered into a Registered User Agreement dated 26.8.1985 with Indrol Lubricants and Specialities Limited in respect of registration No. 309996 and 38 others. Indrol Lubricants and Specialities Limited have merged with the 2nd applicant. The scheme of amalgamation has been approved by Bombay High Court. The 2nd applicant has been recorded as registered user of the said trade mark upto 5.8.1995 and the variation application for recordal of the registered user for a period of 7 years upto 5.8.2002 has been filed and is pending with the Registrar of Trade Mark, Bombay. The 2nd applicant has been recorded as registered user of the registration till 16.11.2000 by virtue of the user agreement dated 26.8.1985.
4. The applicants are selling automobile oils and lubricants in containers/cartons having distinctive colour scheme, get up and lay out. They have the distinctive features of colour combination of red, green and white and Castrol Logo in a green roundel with a white strip having the word CASTROL in stylised script in red, the whole Logo enshrined in a white square and distinctive get up and lay out. The first applicant is the proprietor of the artistic work Castrol Logo with distinctive colour scheme and get up. The first applicant is also the proprietor of package with distinctive colour scheme and get up. Under Section 40 of the Copyright Act, the first applicant's artistic work with distinctive colour scheme, get up and lay out have automatic protection in India. In any event, the artistic work has been continuously published in India since 1968 till date.
5. The total turnover of the business carried on by the 1st applicant in United Kingdom and other countries excluding the 2nd applicant is given separately. Similar
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