Isabella Mariam

The High Court of Delhi Single Bench of Justice Tejas Karia directed that the defendants are restrained from issuing any groundless threats of legal proceedings pertaining to Trade Mark and/or Copyright infringement proceedings against the plaintiff, its Indian subsidiary, and authorized distributors, in relation to the use of specified marks. The court further directed that till the next date of hearing, such threats must not be issued by the defendants or any person acting on their behalf. The court granted liberty for reply and rejoinder within specified timelines and listed the matter for further hearing.

The matter was placed before the High Court of Delhi on 19 August 2025. The plaintiff initiated proceedings seeking injunction under Section 142 of the Trade Marks Act, 1999, and Section 60 of the Copyright Act, 1957. The grievance raised was that the defendants had issued threats of legal proceedings concerning the plaintiff’s use of certain marks. The plaintiff sought judicial protection against these threats, submitting that they were groundless.

Also Read: Supreme Court | Conviction Under Section 138 NI Act Unsustainable Once Parties Enter Into Voluntary Settlement | Section 147 Declares Offence Compoundable at Any Stage

The plaintiff is engaged in the business of engine oils, lubricants, coolants, greases, and related products. It markets and sells goods under various registered trade marks, including the mark CASTROL. According to submissions, the plaintiff has been operating in India for decades and has acquired goodwill in its marks and packaging, which are claimed to constitute protectable trade dress under Section 2(1)(m) of the Trade Marks Act.

The marks in dispute include the plaintiff’s use of the terms ‘3X’, ‘3X PROTECTION’, ‘3XCLEAN’, and ‘3 IN 1 FORMULA’. These were collectively referred to as the 3X Marks. The plaintiff submitted that these marks form part of its packaging and are distinctive. The grievance arose from the defendants’ actions, who had raised objections to the plaintiff’s use of the 3X Marks.

The defendants were stated to be asserting rights over marks referred to as the 3P Marks. They claimed trade mark registrations in Class 4 and also asserted copyright protection over the artistic work contained in the 3P Marks, bearing Registration No. A-149587/2023.

According to the plaintiff, the defendants’ actions escalated on 6 August 2025, when they issued a public notice in a newspaper, Deshdoot, declaring that the use of the 3X Marks would constitute infringement of their rights. The notice warned that civil and criminal proceedings would be taken against anyone found using the said marks. The plaintiff contended that this amounted to issuing groundless threats.

Further, on 9 August 2025, Defendant No. 1, along with associates and local police officers, visited the premises of one of the plaintiff’s authorized distributors in Nashik district, Maharashtra. A seizure of goods bearing the plaintiff’s original marks was effected at the premises of Shivay Agencies, an authorized distributor. An FIR was registered under Sections 63, 64, and 65 of the Copyright Act and Section 318(3) of the Bhartiya Nyaya Sanhita. The plaintiff’s Indian subsidiary and its distributor were named as accused.

The plaintiff submitted that the seized goods were original products lawfully marketed. It was argued that the seizure was wrongful and in collusion with the defendants. The FIR allegedly described products bearing the plaintiff’s 3X Marks, and these were seized under the assertion of copyright infringement.

Additionally, media coverage followed, both in newspapers and on electronic platforms, including a YouTube news report on the channel Maharashtra Bulletin. The plaintiff contended that such publicity was misleading, tarnished its reputation, and caused prejudice to its business.

The plaintiff asserted that the defendants’ allegations of infringement were unsustainable, as the only commonality between the marks was the numeral “3.” It argued that exclusive rights cannot be claimed over the number “3,” and a comparison of the rival marks revealed them to be dissimilar.

The plaintiff therefore sought protection from the court, stating that the threats and actions of the defendants were unjustified and amounted to groundless threats of legal proceedings.

Justice Tejas Karia recorded the factual and legal aspects arising from the plaintiff’s submissions and the materials placed on record.

The court noted: “Prima facie, the use of the 3X Marks by the Plaintiff does not amount to infringement of Defendants’ 3P Marks. The 3X Mark as being used by the Plaintiff and the 3P Marks as being used by the Defendants, are wholly dissimilar.”

The court further observed: “The Defendants’ allegation of Copyright infringement stems only from the common numeral ‘3’ between the rival Marks. The use of the number 3 cannot, by itself, constitute the basis for Copyright Infringement. The Defendants cannot assert exclusive rights over the number 3.”

It was recorded: “A comparison of the Plaintiff’s 3X PROTECTION Mark and the Defendants’ 3P Mark also exemplifies that the rival marks are completely dissimilar.”

Justice Karia took note of the events of 9 August 2025 and the subsequent FIR. The order stated: “Defendants have already had a seizure effected by the Nashik police at the premises of the Plaintiff’s authorized distributor, and considering that the Defendants have also had published a notice in newspapers threatening persons from using the 3X Marks, which are used by the Plaintiff, the Plaintiff has a real threat of facing a groundless infringement proceedings initiated by the Defendants regarding the Plaintiff’s use of the 3X marks.”

On the question of balance of convenience, the court recorded: “The Plaintiff has made out a prima facie case in its favour that the threats issued by the Defendants are unjustifiable, and in case the Defendants are not restrained from issuing further groundless threats, irreparable loss would be caused to the Plaintiff. Since there is a real risk of substantial reputational and business loss being occasioned to the Plaintiff on the basis of such groundless threats, the balance convenience also lies in favour of the Plaintiff and against the Defendant.”

The court thus acknowledged that the plaintiff faced real and immediate harm unless interim protection was granted.

Also Read: Delhi High Court | Rights Under RPwD Act Not Confined to Benchmark Disabilities | ONGC Must Consider Candidate With 17% Hearing Impairment for Appointment

The High Court issued clear interim directives in the matter. Justice Tejas Karia ordered: “Accordingly, till the next date of hearing, the Defendants their proprietors, partners, directors, principal officers, associates, affiliates, licensees, distributors, dealers, stockists, retailers, servants, agents, and all others acting on their behalf are restrained from issuing any groundless threats of legal proceedings pertaining to Trade Mark and / or Copyright infringement proceedings against the Plaintiff, the Plaintiff’s Indian subsidiary, Castrol India Limited and/or its authorized distributors, in relation to use of the Marks 3X’, ‘3X PROTECTION’, ‘3XCLEAN’, 3 IN 1 FORMULA, and/or any other 3X-formative Marks, as purportedly amounting to infringement of the Defendants’ Marks.”

The order further directed that replies be filed within four weeks, with rejoinders within two weeks thereafter. Compliance with Order XXXIX Rule 3 of the Code of Civil Procedure was mandated within two weeks. The matter was listed for 9 December 2025 for further consideration.

Advocates Representing the Parties

For the Petitioners: Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Jaskaran Singh, and Mr. Arpit Singhal, Advocates.

Case Title: Castrol Limited v. Sanjay Sonavane and Another
Case Number: CS(COMM) 855/2025
Bench: Justice Tejas Karia