Delhi High Court: In a suit filed by Castrol Ltd. (‘the plaintiff’) seeking permanent injunction against the defendants from manufacturing, selling, advertising and exporting any products, i.e. engine oils, coolants, gear oils lubricants bearing the marks, ACTIV, 
Thus, the Court decreed the suit in the plaintiff’s favour and stated that the cost and damages of Rs. 10,00,000 each, should be paid by Defendants 1 and 2 to the plaintiff. The Court stated that the said amount should be paid by the defendants to the plaintiff within a period of six months.
Background
The plaintiff company was founded in the year 1899 in United Kingdom, the plaintiff company had its presence in more than 160 countries and was a world leader in the field of lubricants, oils, coolants, grease and related goods and services. The plaintiff used the marks, ACTIV, 
The plaintiff was the proprietor of various registrations/applications in favour of the aforesaid marks and trade dress, with statutory registration in the mark, ‘ACTIV’ dating back to the year 1999. Owing to the distinctive get-up and layout, the plaintiff’s packaging constituted protectable trade dress under Section 2(1)(m) of the Trade Marks Act, 1999.
The plaintiff’s marks were known and reputed world-wide, with trade mark registrations in multiple jurisdictions. Furthermore, one or more of plaintiff’s marks had acquired the status of well-known marks under Article 6bis of the Paris Convention.
Further, as per the plaintiff’s knowledge, Defendants 1 and 2 were individuals collusively engaged in manufacturing, marketing and selling engine oils and lubricants under infringing marks, “ACTIVE”, “ACTIBOND”, 
The plaintiff stated that the defendants were rank infringers who were using the infringing marks and packaging openly to mislead unwary customers and to capitalise upon plaintiff’s goodwill and reputation by selling/offering for sale engine oils and lubricants bearing confusingly and deceptively similar marks and packaging. Being aggrieved by the infringing activities of defendants and dilution of its brand identity, the plaintiff had filed the present suit, seeking permanent injunction, damages, delivery-up and declaration of its mark, as well-known mark.
Comparison:
Analysis, Law, and Decision
The Court after careful perusal of the GST registration numbers, listings on IndiaMart, various Facebook pages, profiles and posts associated with Defendant 2, and invoice dated 15-05-2024, which had been issued by Defendant 1 for infringing products, stated that these clearly brings forth the involvement of Defendants 1 and 2 in the manufacturing, marketing and selling of engine oils, coolants and lubricant products under the infringing packaging bearing the infringing marks.
Upon careful comparison of the plaintiff’s trade dress and that of the defendants, the Court stated that it became apparent that the overall colour scheme, get-up and layout of the defendants’ impugned packaging was nearly identical to that of the plaintiff’s trade dress. The defendants had evidently used nearly identical/deceptively similar two tone green and white background for the label on their packaging. Further, the layout of the defendants’ label was another deliberate attempt on part of the defendants to mislead and confuse the consumers as to the true identity and association of its goods.
The Court further noted that even on a broad comparison of the rival marks of the plaintiff and the defendants, it was apparent that the defendants had merely added the letter ‘E’ to the plaintiff’s ‘ACTIV’ mark to arrive at the impugned ‘ACTIVE’ mark, with identical font and stylization. Moreover, the defendants had copied the plaintiff’s ‘ACTIBOND’ sword mark in its entirety and were using it to package their infringing products.
Therefore, the Court stated that Defendants 1 and 2 had infringed plaintiff’s trade marks, and trade dress/packaging. Therefore, a decree by way of a summary judgment was warranted in the plaintiff’s favour.
Thus, the Court decreed the suit in the plaintiff’s favour and stated that the cost and damages of Rs. 10,00,000 each, should be paid by Defendants 1 and 2 to the plaintiff. The Court stated that the said amount should be paid by the defendants to the plaintiff within a period of six months. The aforesaid amount should be paid in two instalments by the defendants each, i.e., the first instalment of Rs. 5,00,000/- within three months, and the second instalment within a period of three months, thereafter.
The Court granted the plaintiff and/or its representative, liberty to visit the premises of Defendant 1 to destroy the goods bearing the mark/packaging of the plaintiff. For this purpose, the plaintiff and/or its representative should contact the counsel appearing for Defendant 1, and fix a mutual convenient time, which should be done within a period of four weeks from today.
[Castrol Ltd. v. Kapil, CS(COMM) 532 of 2024, decided on 18-02-2025]
Advocates who appeared in this case :
For the Plaintiff: Urfee Roomi, Jaskaran Singh and Vanshika Bansal, Advocates
For the Defendants: Kartik Jain, Advocate; Deep Chand and Susheela Prajapat, Advocates.
Buy Trade Marks Act, 1999 HERE
