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2023 DIGILAW 4820 (DEL)

Motul v. Chawla Packaging Private Limited

2023-08-14

C.HARI SHANKAR

body2023
JUDGMENT (Oral) 1. The plaintiff MOTUL, earlier known as the Swan & Finch Company, is a public limited company incorporated in France. Prior to being renamed MOTUL. The plaintiff commenced operations in India through a Technology License Agreement with Atlantic Lubricants and Speciality Pvt. Ltd. (ALSL) in 2003. The plaintiff is the proprietor of the following registered trademarks: S. NO. TRADEMARK REG. NO. DATE CLASS OF GOODS 1. MOTUL (Word) 584871 16.11.1992 1 2. MOTUL (Word) 584872 16.11.1992 4 3. [IMG] (Device) 602601 26.07.1993 1 4. [IMG] (Device) 602602 26.07.1993 4 5. MOTUL 3000 (WORD) 619006 08.02.1994 4 6. MOTUL 300 V 618997 08.02.2004 4 7. MOTUL DSM (WORD) 619009 08.02.1994 4 8. MOTUL HP4D (WORD) 619008 08.02.1994 4 9. MOTUL 300 V 4T 618998 08.02.1994 4 10. MOTUL 6100 643325 18.10.1994 4 11. MOTUL SCOOTER 2T 643329 18.10.1994 4 12. [IMG] (Device) 677835 24.08.1995 4 13. MOTUL MOTORSPORT (WORD) 693301 30.01.1996 4 14. MOTUL MOTORSPORT (WORD) 693302 30.01.1996 4 15. MOTUL TECH (WORD) 1949323 12.04.2010 1 and 4 16. [IMG] (Device) 1949324 12.04.2010 1 and 4 17. [IMG] (Device) IRDI-3248441 31.08.2015 1 and 4 18. [IMG] (Device) IRDI-3265417 31.08.2015 1 and 4 19. [IMG] (Device) IRDI-3238171 31.08.2015 1 and 4 20. [IMG] (Device) IRDI-3361667 11.04.2016 1 4 and 41 21. [IMG] (Device) IRDI-3538774 14.12.2016 1 22. [IMG] (Device) IRDI-3537799 14.12.2016 1 and 4 23. MOTUL 3100 (Word) 3442379 26.12.2016 1 and 4 24. MOTUL 4000 (WORD) 3442306 26.12.2016 1 and 4 25. MOTUL 800 3442364 26.12.2016 1 and 4 26. [IMG] (Device) IRDI-3574762 06.03.2017 1 and 4 27. [IMG] (Device) IRDI-4052226 14.12.2018 9, 25 and 28 28. [IMG] (Device) IRDI-4230688 26.12.2018 38 and 41 29. [IMG] (Device) 4125941 23.03.2019 1, 16 and 35 2. All these registrations are stated to be valid and subsisting as on date. 3. The plaintiff sells motor lubricants under the [IMG] brand, in the following distinctive packing: [IMG] 4. The plaintiff also claims copyright in the above packing, on the ground that it constitutes an original "artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957. The plaintiff also claims to be the supplier to reputed original equipment manufacturers such as Honda HRC, Suzuki, Aprilia, MV Agusta, Nissan Nismo, Toyota and Subaru. 5. The plaintiff also claims copyright in the above packing, on the ground that it constitutes an original "artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957. The plaintiff also claims to be the supplier to reputed original equipment manufacturers such as Honda HRC, Suzuki, Aprilia, MV Agusta, Nissan Nismo, Toyota and Subaru. 5. By sales of the MOTUL branded CNG POWER PLUS engine oil itself alone, the plaintiff has earned upwards of Rs.415 crores, thereby vouchsafing its credibility and reputation in the market. 6. As originally instituted, this suit impleaded Defendant 1 as the sole defendant. It was alleged that the plaintiff had come across pouches which were identical to the pouches of the plaintiff's product, manufactured by Defendant 1. Though the pack, at the lower right corner, stated that the packing material was manufactured by the Defendant 1, there are prominent recitals on the packs, reading "Manufactured by: Standard Greases & Specialities Pvt. Ltd. Regd. Officer at: 101, Ketan Apartment, 233, R.B. Mehta Marg, Ghatkopar, (East), Mumbai 400 077, Maharashtra, INDIA. Marketed by: Atlantic Lubricants & Specialities Pvt. Ltd. 301 Ketan Apartment, 233, R.B. Mehta Marg, Ghatkopar, (East), Mumbai 400 077, Maharashtra, INDIA". 7. During the course of the present proceedings, Defendant 1 stated that he had manufactured the pouches bearing the impugned mark consequent on orders being placed by Defendant 2. Defendant 2 was, thereafter, impleaded in the present proceedings. 8. The right of both defendants to file their respective written statement was closed by the learned Joint Registrar (Judicial) vide order dated 1 August 2022. Defendant 2, however, challenged the said decision by way of Chamber Appeal O.A. 74/2022, which was allowed by this Court vide order dated 13 December 2022. Subsequently, the written statement of Defendant 2 was taken on record. 9. Defendant 2, in its written statement, adopted a stand that it had placed orders on Defendant 1 consequent to orders having been placed on Defendant 2 by S.V. Trading Company, who had refused to take delivery of the packs manufactured by Defendant 1. The plaintiff specifically avers that S.V. Trading Company was not found existing at the address provided by Defendant 2 and that the GST No. of S.V. Trading Company as provided by Defendant 2 was also found to have been cancelled. 10. This is a clear case of counterfeiting. The plaintiff specifically avers that S.V. Trading Company was not found existing at the address provided by Defendant 2 and that the GST No. of S.V. Trading Company as provided by Defendant 2 was also found to have been cancelled. 10. This is a clear case of counterfeiting. The pouches manufactured by Defendant 1 are clearly imitation pouches of the plaintiff, using the plaintiff's registered trademark and going to the extent of incorporating the address of Standards Greases and Speciality Pvt. Ltd. and Atlantic Lubricants & Speciality Pvt. Ltd as the manufacturer and the marketer of the said product. It is, therefore, a wholesale case of counterfeiting and sale of duplicate products representing them to be the product of the plaintiff. 11. Mr. Arun Kumar, learned Counsel for Defendant 1 submits that Defendant 1 has discontinued production of the allegedly infringing packs on 22 February 2021. Defendant 2, who is present in person, also submits that he has not placed any further orders on anyone, for manufacture of the said packs. He submits that the present case arose out of an order placed by him on SV Trading Company and that he was unaware of the fact that the packs were imitative of the trade dress of the plaintiff or that the MOTUL brand was registered in the plaintiff's favour. 12. The facts of the present case clearly make out a case of trademark infringement, copyright infringement and a transparent attempt to pass off impugned products as the products of the plaintiff. The plaintiff is, therefore, clearly entitled to a decree in its favour against the defendant. 13. Mr. Khan, learned counsel for the plaintiff, submits that Defendant 1 has, in its affidavit, admitted having placed an order on Defendant 2 for manufacturing 1,60,000 packs of the impugned product, whereas Defendant 2, in its affidavit, asserts that the order placed by S.V. Trading Company on Defendant 2 was of 1,90,000 packs. 14. In these circumstances, Mr. Khan submits that the defendants should not be allowed to get away lightly and that the Court may, apart from awarding costs at actuals, also award punitive damages. 15. There is substance in the contention. 16. 14. In these circumstances, Mr. Khan submits that the defendants should not be allowed to get away lightly and that the Court may, apart from awarding costs at actuals, also award punitive damages. 15. There is substance in the contention. 16. As such, the present suit stands decreed in the following terms: (i) There shall be a decree of permanent injunction, restraining the defendants, as well as all others acting on their behalf, from using any of the registered trademarks of the plaintiff enumerated hereinabove, any other mark which is deceptively similar to the afore-extracted marks as well as any design/artwork for their container, which would be imitative of the design/artwork of the plaintiff's container. (ii) The plaintiff shall also be entitled to costs at actuals, which would be equally borne by Defendants 1 and 2. For this purpose, let the matter be placed before the concerned Taxation Officer on 18 September 2023 before whom the plaintiff shall submit a bill of costs to indicate the costs suffered by it in this litigation. The costs as assessed by the Taxation Officer shall be paid equally by Defendants 1 and 2. (iii) The plaintiff shall also be entitled to punitive damages to the tune of Rs.5 lakh which shall also be paid half and half by Defendants 1 and 2. 17. Compliance with the aforesaid order by Defendants 1 and 2 be ensured within a period of six (6) weeks from today. An affidavit in that regard be placed on record. 18. The suit stands decreed in the aforesaid terms. 19. Let a decree sheet be drawn up by the Registry accordingly.