IA 3133/2021 & IA 4316/2021 in CS(COMM) 100/2021

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IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 30^th April, 2021

Pronounced on: 25^th May, 2021

I.A. 3133/2021 & I.A. 4316/2021 in

+

CS(COMM) 100/2021

RAAJ UNOCAL LUBRICANTS LIMITED

..... Plaintiff

Through

Mr. Akhil Sibal, Sr. Adv.

instructed

by

Mr.

Kapil

Wadhwa,

Ms.Deepika Pokharia. & Ms. Deepshri,

Advs.

versus

APPLE ENERGY PVT LTD & ANR.

..... Defendants

Through

Mr. Neeraj Kishan Kaul and

Mr. Raj Shekhar Rao, Sr. Advs. with Ms.

Shwetasree Majumder, Ms. Diva Arora, Mr.

Aditya Verma, Ms. Vasundhara Majithia,

Advs.

CORAM:

HON'BLE MR. JUSTICE C.HARI SHANKAR

J U D G E M E N T

%

(video conferencing)

1.

By order dated 8^th 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.

2021:DHC:1687

IA 3133/2021 & IA 4316/2021 in CS(COMM) 100/2021

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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 8^th 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 8^th 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 8^th 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

2021:DHC:1687

IA 3133/2021 & IA 4316/2021 in CS(COMM) 100/2021

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manufacturer based in the US, and had, vide License Agreement dated

25^th 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 3^rd 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