In the above case the judgement was decreed in favour of Castrol Limited and permanent injunction was granted to the Iqbal singh Chawla i.e. the defendant from using the mark “ACTIV” or “ACTIVE”.  However when we talk about Trade dress, it is combinationation of different elements of packaging of goods that is used for its promotion. It is basically the complete packaging of a product that is visually appealing to the eyes of the buyer.

Background

The plaintiff owns the registered Trademark of “CASTROL ACTIV”. They claimed to have adopted the mark in the year 1999. The registration details of the plaintiff’s trademark according to Trademark Registry are:-

Plaintiff also claimed their copyright and trade dress under section 2(c) of the Copyrights Act, 1957 over the packaging of the product.

In December, 2010 the plaintiff discovered that Mahendra Oil Company i.e. the Defendant was selling the 4T oil under the trademark “LUMAX ACTIVE”. They were allegedly imitating the get up, layout and features of the packaging of the plaintiffs by adopting red, white, and green color’s on the label in an identical manner and also the shape and configuration of the bottle.

The plaintiff claimed that defendants are infringing and passing off the marks of the plaintiff and therefore filed an infringement suit before Delhi High Court for permanent injunction by restraining the defendant from selling, marketing, and for doing any type of commercial exploitation against the plaintiff. They further claimed that defendant’s mark “LUMAX ACTIVE” is deceptively similar to the mark of plaintiff “ACTIV”.

Issues

There were eight issues that were raised by the Delhi High Court, out which important issues were-

  1. Whether the Defendant had committed an act of passing off and/or infringement?
  2. Whether the plaintiffs are entitled to damages?

Plaintiff’s Product Defendant’s Product

Plaintiff’s Contentions

  1. The plaintiff claimed the ownership of the alleged trademark and trade dress of the product.
  2. He further claimed over the proprietary rights as he is the prior user of the product.
  3. It brought the witnesses to support its claim. The witness proved that-
  • The registration of the trademarks “CASTROL” and “ACTIV” are in favour of the plaintiff.
  • The plaintiff has been using the trademark “CATROL” and “ACTIV” for several years.
  • The product of the plaintiff is packed in a particular plastic container. The container is having a unique trade dress with a distinctive design, layout and colour combination and shape and configuration.
  • The artistic feature of the get up, layout, and colour combination of the product has been extensively devised and depicted in color in various print media and its features are exclusively associated with the plaintiff’s and no one else.
  1. It was further contended that defendants have deliberately adopted the mark which is deceptively similar to the plaintiff’s mark.
  2. It was further alleged that the defendant’s such act would cause confusion among the consumers.

Defendant’s Contention

Ddebant claimed that “ACTIV” word is a common dictionary word and no one can claim its exclusive rights over it. The plaintiff’s trademark has always been used in conjunction with the trademark “CASTROL”. They further claimed that they honestly and bonafidely claimed their mark “LUMAX ACTIVE” which is completely different from the mark of the plaintiff. 

Court’s Decision

The court opined that the two impugned marks are different, however when trademark along with trade dress is compared then the dishonest intention of the defendant is clearly visible.

Therefore the court held that the plaintiff were granted permanent injunction by restraining the defendant persons from using the Trademark which is registered under the name of plaintiff in any manner and further stated that  “the defendants are restrained by way of a permanent injunction from using the mark ACTIV and / or ACTIVE in the identical trade dress, colour scheme, packaging, design, layout, shape, and configuration as that of the plaintiff’s. However the injunction would not affect the right of the defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration.

Damages were also provided of Rs. 2 Lakhs to the Plaintiff.

The experienced Team of BIAT Legal LLP helps your Trademark to be protected and from infringement.

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