J U D G E M E N T

% (video conferencing)

1. By order dated 8th March, 2021 in IA 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 or any other mark deceptively similar to Plaintiff’s trademarks “UNOCAL”, or 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 v. 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 3133/2021 and have also filed IA 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 judgement 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”, “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”, “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 irrevocable in nature.

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