Isabella Mariam

The High Court of Judicature at Bombay, Single Bench of Justice Arif S. Doctor, on November 6, 2025, granted interim relief in a trademark infringement and passing-off action concerning the mark ‘PETROFER’. The order came in favour of a German lubricant manufacturer and its Indian licensee, who sought protection of their registered mark against a Surat-based entity using the name ‘UNITED PETROFER’. The Court held that the defendant’s use of the disputed name, corporate identity, and domain was deceptively similar to the plaintiffs’ mark and likely to cause confusion in the market. Observing that the plaintiffs had established prior use and goodwill, the Bench directed the defendant to refrain from using ‘PETROFER’ or any mark resembling it for its goods or business.

The dispute concerned the plaintiffs’ claim of trademark infringement and passing off against the defendant company for using the term “PETROFER” as part of its corporate name, trademark, and domain name. The plaintiffs—comprising a German manufacturer of industrial lubricants and its Indian licensee—asserted exclusive statutory and common-law rights over the mark “PETROFER,” registered in India since 1997 across multiple classes. The second plaintiff, operating under a perpetual licence granted in 2005, alleged that the defendant’s adoption of the name “United Petrofer Limited” in 2016 was deceptively similar to their registered mark and likely to cause confusion in trade.

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Evidence placed on record included certificates of registration, promotional materials, sales and turnover data, and prior administrative findings, including an order by the Regional Director, MCA (2019), directing the defendant to change its corporate name under Section 16(1)(b) of the Companies Act, 2013. The plaintiffs also relied on the defendant’s inconsistent explanations for the word’s origin and its continued non-compliance with the government directive.

The defendant argued that its use was limited to its corporate name and did not constitute trademark infringement, that its goods differed from those of the plaintiffs, and that Section 29(5) of the Trade Marks Act exclusively applied. It also raised pleas of acquiescence and distinctiveness.

After evaluating pleadings, exhibits, and cited precedents, the Court examined whether the defendant’s continued use of “PETROFER” in its trade and domain name amounted to infringement under the Trade Marks Act and passing off under common law. The matter primarily turned on the identity of goods, the deceptive similarity of marks, and the dishonest adoption of a registered trademark within a corporate name.

Justice Arif S. Doctor observed that “the Plaintiffs have placed on record sufficient material to demonstrate that the mark ‘PETROFER’ is a registered trademark in their favour and that such registration remains valid and subsisting.” The Court stated that “the Defendant’s adoption of the mark ‘UNITED PETROFER’ for identical goods is prima facie deceptive and likely to cause confusion among the trade and public.”

Addressing the issue of infringement, the Bench recorded that “the infringement therefore arises from the use of the registered trade mark both as part of a trade or business name and in the course of trade in respect of the same goods.”

On the question of bona fides, the Court stated that “before adopting ‘PETROFER’ as part of its trade name, the Defendant was expected to exercise due diligence, including verifying the register of trademarks, to ensure that the mark was not already in use.” Noting the Defendant’s continued use of the mark despite official directions, the Bench observed that “the Defendant’s adoption was not bona fide and that a plea of acquiescence could not apply.”

The Court further held that “hence, prima facie, the Defendant's adoption of ‘PETROFER’ being dishonest, a plea of equity will not assist the Defendant.” It also recorded that “mere knowledge or inaction for a certain period does not defeat the right of a registered proprietor to protect its mark, particularly when the Defendant’s use itself is shown to be dishonest.”

Summing up, the Bench observed that “the Plaintiffs have made out a strong prima facie case for grant of interim injunction, the balance of convenience lies in their favour, and irreparable loss would be caused if the Defendant continues using the impugned mark.” The Court added that “the Defendant’s conduct of continuing to use the name ‘UNITED PETROFER’ despite the 2019 order requiring a change within six months, and without any stay to that order, reflects disregard for lawful authority.”

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The Court directed that “the Interim Application is allowed in terms of prayer clauses (a), (b) and (c) as extracted above.” It consequently restrained United Petrofer Limited from using the mark ‘PETROFER’ as part of its corporate name, trademark, or domain name, and from using any other name or mark deceptively similar to the Plaintiffs’ registered trademark.

After pronouncement, the Court further stated that “Mr. Padwal sought a stay of this Order. However, for the reasons recorded above, I find that no ground for grant of stay is made out. The Defendant has, despite the Order dated 18th September 2019 passed by the Regional Director, Ahmedabad, Ministry of Corporate Affairs which required the Defendant to change its name within six months, despite there being no stay to that order. This conduct of the Defendant, as noted above, speaks volumes. Such disregard for orders passed by a Competent Authority cannot be countenanced. Hence, the request for stay is rejected.”

Advocates Representing the Parties

For the Petitioners: Dr. Veerendra Tulzapurkar, Senior Advocate, with Mr. Ashutosh Kane, Ms. Amruta Thakur, Ms. Archita Gharat, instructed by W. S. Kane & Co.
For the Respondents: Mr. Amit Padwal with Ms. Afrin Dalal, Ms. Aafreen Bano, instructed by Mr. Bahraiz Irani.

Case Title: Petrofer Chemie H.R. Fischer GmbH & Co. KG & Anr. v. United Petrofer Ltd.
Neutral Citation: 2025: BHC-OS:20475
Case Number: Interim Application No. 2143 of 2021 in Commercial IP Suit No. 275 of 2021
Bench: Justice Arif S. Doctor