Judgment : 1. By this application under Order XXXIX Rule 1 and 2 CPC the Plaintiff seeks ad-interim injunction in favour of the Plaintiff and against the Defendant in relation to the trademark ‘4T PREMIUM’or any other mark identically or deceptively similar to the Plaintiff’s mark ‘4T PREMIUM’amounting to infringement of the Plaintiff’s registered trademark under No. 1261544 or leading to passing off the goods or business of the Defendant as that of the Plaintiff. 2. Learned counsel for the Plaintiff contends that the Plaintiff is a 50-50 joint venture of Valvoline International Incorporation, USA and Cummins India Limited, the two 500 Fortune Company, that is, Ashland Inc. and Cummins. Inc. The Plaintiff is India’s fastest growing lubricant marketer and producer of quality branded automotive/industrial products. The Plaintiff’s products include automotive lubricants, transmission fluids, gear oil, hydraulic lubricants, automotive filters, specialty products, greases and cooling system products. The Plaintiff’s products are available in more than 15,000 retail counters across India. The products of the Plaintiff are imported under various famous trademarks one of which is ‘4T PREMIUM’ which has been used extensively, continuously and uninterruptedly by the Plaintiff since the year 2003 in India. The Plaintiff has been manufacturing and selling multi-grade engine oils under the trade name ‘4T PREMIUM’under the strict quality control and supervision. The products of the Plaintiff under the trademark ‘4T PREMIUM’improve engine life and provide maximum power, besides giving special protection to air cooled engines of four stroke motorcycles and are thus recommended for use in four stroke model Hero Honda, Bajaj, TVS, Yamaha, Suzuki, Honda, Kinetic Engineering, LML and all other makes. The Plaintiff is the proprietor of the trademark ‘4T PREMIUM’in Class-4 for engine oils vide registration No. 1261544 dated 16th January, 2004. 3. Learned counsel for the Plaintiff states that the plaintiff does not claim any exclusive right in the use of mark “4T” which indicates four stroke engine oil as number of other companies are marketing the same however, the Plaintiff is aggrieved by the Defendants use of the trademark ‘4T PREMIUM’which is likely to lead to the confusion and deception amongst the members of the public. The Defendant is neither registered proprietor nor has filed any trademark application for registration of the trademark ‘4T PREMIUM’. The Defendant is neither registered proprietor nor has filed any trademark application for registration of the trademark ‘4T PREMIUM’. The Defendant has adopted the Plaintiff’s trademark ‘4T PREMIUM’ with mala fide intention, hence the Defendant is liable to be injuncted from using the trademark ‘4T PREMIUM’. Though number of companies is using “4T” but none is using ‘4T PREMIUM’ and only one other company Veedol is using the same to which also the Plaintiff has given a notice. Reliance is placed on Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 ; Sunder Nagar Association vs. Welfare Club (regd.) and another, 1995 PTC 270; Ishi Khosla vs. Anil Aggarwal and another, 2007 (34) PTC 370 Delhi. 4. Learned counsel for the Defendant on the other hand contends that the Plaintiff cannot claim exclusive right either in the word “4T” or “4T PREMIUM” because the word “4T” denotes four stroke engine and the word PREMIUM is a laudatory word descriptive of the goods and no-one can claim the right to use the word exclusively. The Defendant uses its trademark ‘AGIP’with ‘4T PREMIUM’. The packing of the Defendant is totally different from the Plaintiff and thus there can neither be any infringement nor passing of the Defendant’s goods as that of the Plaintiff. The Defendant has never used the mark ‘4T PREMIUM’ separately and hasalways used the same with its trade name ‘AGIP’. The Defendant has already filed an application for cancellation of the Plaintiff’s trademark before the Intellectual Property Appellate Board as the same could not have been registered in the first instanceitself. Reliance is placed on Puma Stationer P. Ltd. and another vs. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Delhi); Nestle India Limited vs. Mood Hospitality Private Limited, 2010 (42) PTC 514 Delhi; J.R. Kapoor vs. Micronix India, 1994 (14) PTC 260 SC; The Gillette Company and others vs. A.K. Stationery and others, 2001 (21) PTC 513 (Delhi); Rich Products Corporation and another vs. Indo Nippon Food Ltd., 2010 42 PTC 660 (Delhi) and Marico Limited vs. Agro Tech Foods Limited, 174 (2010) DLT 279. 5. I have heard learned counsel for the parties. 6. The present suit was filed on 18th October, 2011 when summons in the suit and notice in the present application was issued. 5. I have heard learned counsel for the parties. 6. The present suit was filed on 18th October, 2011 when summons in the suit and notice in the present application was issued. The present application is pending since then and no ad-interim ex-parte injunction was granted to the Plaintiff till date. In the meantime pleadings and admission/denial of the suit are complete and thus issues have been framed however, since the Defendant has already filed an application before the Intellectual Property Appellate Board for cancellation of the Plaintiffs trademark the present suit is directed to be stayed under Section 124 of the Trademark Act. Since the stay of the proceedings in the suit is not a bar in deciding the application under Order XXXIX Rule 1 and 2 CPC this Court has proceeded to hear the application. 7. The case of the Plaintiff is that the Plaintiff is using the trademark ‘4T PREMIUM’ exclusively, continuously and uninterruptedly since the year 2003 in India. The advertising, publicity and sales promotion expenses of the Plaintiff for the period from 1996-2010 are approximately Rs. 11,92,645,334/-. The claim of the Plaintiff is that due to the extensive advertising and promotional activities undertaken by it the goods of the Plaintiff under the trademark ‘4T PREMIUM’ have become extremely popular amongst the consumers at large. The sales figures of the engine oil under the trademark ‘4T PREMIUM’ are as follows: 8. It is the claim of the Plaintiff that the trademark ‘4T PREMIUM’ has come to be identified with that of the Plaintiff. It has lost its primary meaning and has acquired a secondary significance as distinctive trademark used in the course of the trade indicating a source, an indicator and symbol of highest standard of quality. The Plaintiff applied for and obtained registration of the trademark ‘4T PREMIUM’ in India in Class-4 for engine oils vide registration No. 1261544 on 16th January, 2004 claiming its user since 30th September, 2003. It is the admitted case of the Plaintiff that it has no objection to the use of mark “4T” simplicitor which the other players in the market are using such as CASTROL POWER, RS GPS 4T, SERVO 4T ZOOM, REPSOL 4T RIDER, RELIABLE 4T, HIZOL HONDA 4-T PLUS. It is the admitted case of the Plaintiff that it has no objection to the use of mark “4T” simplicitor which the other players in the market are using such as CASTROL POWER, RS GPS 4T, SERVO 4T ZOOM, REPSOL 4T RIDER, RELIABLE 4T, HIZOL HONDA 4-T PLUS. The claim of the plaintiff is to the use of the mark ‘4T PREMIUM’ because the Plaintiff’s mark has acquired distinctive significance and is now associated with the product of the Plaintiff. According to the Plaintiff, the Defendant dishonestly and with malafide intention is using the trademark of the Plaintiff, infringing its trademark and passing of its goods as that of the Plaintiff. The case of the Defendant is that the Plaintiff cannot claim any exclusive right to use the word 4T as the same indicates ‘four stroke engine oil’ and the word premium is a totally descriptive of the goods, is laudatory in nature and has no trademark significance attached to it. There are other companies which are using 4T premium with their lubricants with the name of their company or Extra Premium etc. The use of word PREMIUM in the oil products is common and global. The Trademark of the Plaintiff has been wrongly registered and the Defendant has filed an application challenging the same. The labels of the Plaintiff’s products and the Defendant’s products are entirely different. The colour prints of the same are also totally different. There is no resemblance between the VALVOLINE 4T PREMIUM of the Plaintiff and AGIP 4T PREMIUM of the Defendant. The Defendant has also given his consolidated sales figure. According to the Defendant it launched its product AGIP 4T PREMIUM in the year 2007 as AGIP 4T RED and AGIP SUPER 4T. In August, 2008 the Defendant marketed and upgraded its products by introducing AGIP 4T RED, AGIP 4T PLUS, AGIP 4T PREMIUM and AGIP 4T ECO. It further upgraded its products in the year 2011. The use of words RED, PLUS, PREMIUM, ECO and FURY are totally descriptive, common to trade and have no trademark significance. 9. A perusal of the product of the Plaintiff shows that it uses the name of its company before 4T PREMIUM, that is, VALVOLINE 4T PREMIUM and not simplicitor ‘4T PREMIUM’. Similarly the Defendant has though used the word 4T PREMIUM however, the container also depicts its logo and the company name AGIP. 9. A perusal of the product of the Plaintiff shows that it uses the name of its company before 4T PREMIUM, that is, VALVOLINE 4T PREMIUM and not simplicitor ‘4T PREMIUM’. Similarly the Defendant has though used the word 4T PREMIUM however, the container also depicts its logo and the company name AGIP. Packaging and colouring etc. of the two products are totally different. 10 In Marico Ltd. (Supra) while dealing with the trademark ‘LOW ABSORB’ the Division bench of this Court held that in light of ratio laid down in case of Cadila Healthcare Ltd. v. Gujrat Co-operative Milk Marketing Federation Ltd. and Ors.2009 (8) AD (Delhi) 350, the Appellant can have no exclusive ownership rights on the Trade Mark LOW ABSORB. It was further held that it is unable to hold that the appellant's trademark "Sugar Free" is a coined word; at best it is a combination of two popular English words. This Court upheld the order of the learned Single Judge refusing the injunction on the point that besides the word LOW ABSORB TECHNOLOGY’ the prominent trademark of the Defendant ‘SUNDROP’ also appeared on the package. The colour scheme of the respective packages was also different. Similarly this court in Nestle India Ltd. (supra) refused to set aside the interim injunction granted on the ground that the expression ‘YO’ cannot be equated with ‘YO! China’. ‘YO!’ by itself is not a trademark. Similarly in The Gillette Company and others (supra) this Court held that the real question to be answered is that whether there would be confusion and deception in the minds of the consumers. It held that it was difficult to agree with the submissions of the Plaintiff therein that the use of trademark ‘EKCO FLEXGRIP’ by the Defendant would create confusion with the Plaintiff’s trademark ‘LUXOR PAPER MATE FLEXGRIP’. It was held that if the complete trademarks adopted by the two parties are compared, the same are totally different and confusion seems to be unlikely. In Rich Products Corporation and another (supra) this Court held that despite the word ‘Whip Topping’ being a common word, the combinations were totally different in ‘RICH’S WHIP TOPPING’ and ‘BELLS WHIP TOPPING. It was held: 36. In Rich Products Corporation and another (supra) this Court held that despite the word ‘Whip Topping’ being a common word, the combinations were totally different in ‘RICH’S WHIP TOPPING’ and ‘BELLS WHIP TOPPING. It was held: 36. Since lengthy submissions were made by both sides with respect to whether or not "WHIP TOPPING" is a generic and/or a descriptive expression, it may be necessary to briefly touch upon this aspect of the matter. The word 'generic' ordinarily would mean that which has character of or belongs to a genus or class (see New Shorter Oxford English Dictionary, Edition 1993 at page 1074); whereas the word 'descriptive' would mean that which seeks to describe, characterized by description, consist of or concern with description or observable things or qualities (see New Shorter Oxford English Dictionary, Edition 1993 at page 644). Whether a word or expression is 'generic' or 'descriptive' or both is dependent on the facts and circumstances arising in a particular case. It is quite possible that a word or expression which is 'generic', i.e., which refers to a genus or a class is also descriptive as the word by itself characterize the qualities of the product. The line dividing the two in certain cases may get blurred. The word 'whip' by itself means, in the context of the present case, a light fluffy desert made with whipped cream or beaten eggs (see New Shorter Oxford English Dictionary, Edition 1993at page 3670), while the word 'topping' means a top layer or garnish put on food (see New Shorter Oxford English Dictionary, Edition 1993 at page 3342). Similarly, the word 'cream' means part of liquid that gathers at the top; froth etc. or a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both 'generic' as well as 'descriptive' of the product. The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both 'generic' as well as 'descriptive' of the product. The submission of Mr Gupta that the words 'WHIP TOPPING’ is distinctive because it relates to a non-dairy product is not substantiated by any evidence on record which would demonstrate that the words "WHIP TOPPING" are associated only with a cream which is not dairy based. 37. It is not disputed by the learned Counsel for the defendant, as it cannot be, that descriptive words and expression can be registered. Even if they are not registered they can be protected, provided it has attained secondary distinctive meaning by its extensive use and publicity. In other words use is a question of degree. What one needs to ask oneself is whether the descriptive mark has become the trade mark. The defendant can ward off a challenge in respect of a mark in which the plaintiff claims proprietorship rights and seeks to enforce his rights whether on the basis of the registration or otherwise; on the ground that the trade mark is a descriptive word or consists of words which are descriptive of the character and quality of the product as long as the use is bonafide or that the descriptive word is well known or used extensively by third parties. 38. The plaintiff, in order to demonstrate that "WHIP TOPPING" has attained secondary distinctive meaning, has relied upon the affidavits of PW1 to PW4. The plaintiffs' witnesses attempted to prove the extensive promotion of its trade mark "RICH'S WHIP TOPPING" through indices such as the world wide turnover of its product, which included the sales in India, the amount spent on promotional material and the extensive publicity received over the years in newspapers and journals both in India and abroad. I have already observed hereinabove the use of the mark by itself does not translate into distinctiveness. The distinctiveness should be of an order which displaces the "primary descriptive meaning" of the word. The evidence placed before me falls well short of this standard. I have already observed hereinabove the use of the mark by itself does not translate into distinctiveness. The distinctiveness should be of an order which displaces the "primary descriptive meaning" of the word. The evidence placed before me falls well short of this standard. Assuming that one were to accept the evidence produced as an indicator of the fact that words "WHIP TOPPING", which is part of the plaintiffs' trade mark "RICH'S WHIP TOPPING", has attained secondary distinctive meaning, the very fact in at least in two jurisdictions i.e., the USA and the New Zealand the plaintiffs' mark "RICH'S WHIP TOPPING" has been registered with limitation. While the U.S. registration excludes use of the word 'Topping'; the New Zealand company office has excluded the use of the words "WHIP TOPPING". Even in India the plaintiffs have of their own accord disclaimed their right to the letter 'S' and the word 'Topping'. In these circumstances, I am not persuaded to hold that the use of the words "WHIP TOPPING" by the defendant in its trade mark "BELLS WHIP TOPPING" would infringe either the statutory rights vested in the plaintiffs' registered trade mark "RICH'S WHIP TOPPING", or even constitute violation of any common law rights that the plaintiffs would have in its mark "RICH'S WHIP TOPPING" for the reasons given herein below. In the context of what is said by me above, there is therefore also no necessity for me to deal with the submission that the defence of "character" and "quality" referred to in Section 35 of the Trade Marks Act are used in the adjectible sense, though I have doubts about the tenability of this argument. The example most commonly used, which comes to my mind, is that of a 'soap'. Can 'soap' be used by itself as a mark? The answer in my opinion is clearly in the negative since it describes the product; however, it nevertheless is a noun. 11. In Kaviraj Pandit Durga Dutt Sharma (surpa) relied upon by learned counsel for the Plaintiff the Hon’ble Supreme Court held that an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. It was further held that where the similarity between the Plaintiff’s and Defendant’s mark is too close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff’s rights are violated. It was held that if two marks are identical, no further question arises and the infringement is made out. When the two marks are not identical, the Plaintiff would have to establish that the mark used by the Defendant so nearly resembles the Plaintiff’s registered trademark as is likely to deceive a false conclusion in relation to the goods in respect of which it is registered. 12. In Cadila Healthcare Ltd. v. Gujrat Co-operative Milk Marketing Federation Ltd. and Ors. 2009 (VIII) AD 350 it was held: 8. In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense in the following passage: 54. It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products. I have no hesitation in stating, albeit without prejudice to the rights and interests of the plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression 'Sugar Free' as its trade mark, the plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the wide spread use of such trade mark by fellow competitors. Simply because the plaintiff claims to be using the expression 'Sugar Free' as a trade mark much prior to the launch of the defendant's product Pro Biotic Frozen Dessert in the market does not give this Court a good ground for imposing a blanket injunction on the defendant from using the expression 'Sugar Free', especially when the defendant intends to use this expression only in its descriptive sense and not as a trade mark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages. We fully agree with and reaffirm the said finding. 9. We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark. Once a common phrase in the English language which directly describes the product is adopted by a business enterprise, such adoption naturally entails the risk that others in the field would also be entitled to use such phrases provided no attempt is made to ride on the band wagon of the appellant's indubitably market leading product 'Sugar Free'. In this connection, merely because the attributes of 'sugar free' can be described by other phrases cannot detract from the common usage of the phrase 'Sugar Free' as denoting products which do not contain sugar and any trader which adopts such mark in the market place, does so with the clear knowledge of the possibility of other traders also using the said mark. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Act. The said Sections read as follows: - 9. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Act. The said Sections read as follows: - 9. Absolute grounds for refusal of registration.-(1) The trade marks- (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. (2) A mark shall not be registered as a trade mark if- (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950). (3) A mark shall not be registered as a trade mark if it consists exclusively of- (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. 30. Limits on effect of registered trade mark.-(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where- (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; (b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend; (c) the use by a person of a trade mark- (i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or (ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark; (d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be; (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of- (a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or (b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent. (4) Sub-section (3) shall not apply where there exists a legitimate reason for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market. 35. Saving for use of name, address or description of goods or services.-Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. Thus, it is clear that the mark or indication which serves to designate the quality of the goods of the appellant, which indeed the phrase 'Sugar Free' does, would be an absolute ground for refusal of registration of a mark unless it has acquired a distinctive character. The expression can at best be said distinctive qua the artificial sweetener of the appellant and mere starting of the marketing of the drink 'sugar free D'lite' cannot give the appellant the right to claim distinctiveness in the expression 'Sugar Free' in relation to all the food products. 13. In the present case as noted above the Defendant is using the word “AGIP” and its logo along with “4T PREMIUM” and not simplicitor “4T PREMIUM”. Further even the Plaintiff is using the word “VALVOLINE” with “4T PREMIUM” and not “4T PREMIUM”. In view of the aforesaid discussion, I find no reason to grant interim injunction in favour of the Plaintiff and against the Defendant. Application is accordingly dismissed.