Isabella Mariam

The High Court of Delhi Single Bench of Justice Manmeet Pritam Singh Arora decreed a permanent injunction restraining the use of marks deceptively similar to ‘VALVOLINE.’ The Court held that the plaint, duly verified and supported by affidavit, along with unrebutted averments and documentary evidence, rendered the trial unnecessary. The Court directed that the defendants be restrained from using the impugned marks and packaging and ordered the trademark registry to process the withdrawal application concerning the impugned mark expeditiously.

The dispute concerned the infringement of registered trademarks, passing off, and copyright violations relating to the globally recognized brand ‘VALVOLINE.’ The plaintiffs, comprising a Delaware corporation functioning as an IP holding company for Valvoline International Inc. and an Indian joint venture company with Cummins India Ltd., asserted longstanding trademark rights. The ‘VALVOLINE’ mark was first registered in India in 1942, with user claim dating back to 1895. The device mark was registered in 1994. The plaintiffs claimed substantial sales figures, including an Indian turnover of INR 2150.25 crores in FY 2022-23.

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The plaintiffs alleged that in August 2024, they discovered that the defendants were manufacturing and selling engine oils under marks including ‘VIVOLINE’ and other deceptively similar signs. The defendants were also accused of copying the trade dress and packaging layout. Defendant No. 1 was alleged to be the manufacturer, Defendant No. 2 a wholesaler, and Defendants Nos. 3 and 4 retailers and distributors. The impugned goods were sold offline and through online platforms such as IndiaMart and Facebook.

It was further submitted that Defendant No. 1 had earlier filed a trademark application for one of the impugned device marks in 2018, which was opposed by the plaintiffs. The said defendant later filed a withdrawal application in December 2024, still pending before the Trademark Registry. The plaintiffs filed the present suit in September 2024 alleging infringement and passing off. Summons were issued, and Defendants Nos. 2 and 3 appeared in October 2024. Both submitted that they had no objection to an injunction order. An ad-interim injunction was granted in October 2024.

No written statement was filed by any defendant within the statutory period. By March 2025, the right to file written statements was closed. Defendant Nos. 1, 2, and 4 were proceeded ex parte, while Defendant No. 3, a reseller, indicated willingness to suffer an injunction.

The plaintiffs relied on their registrations, documentary evidence of sales and goodwill, and a precedent from January 2024 where a coordinate Bench restrained use of a similar mark ‘WALWOSHINE.’

Justice Arora observed that the defendants failed to file any written statements despite being served. Referring to Order VIII Rule 10 CPC, the Court stated: “Where any party from whom a written statement is required under rule 1 or rule 9 fails to present the same within the time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgment against him, or make such order in relation to the suit as it thinks fit and on the pronouncement of such judgment a decree shall be drawn up.”

The Court cited Satya Infrastructure Ltd. & Ors. v. Satya Infra & Estates Pvt. Ltd., where it was recorded: “I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction.”

The Court recorded that the plaintiffs had adopted the ‘VALVOLINE’ mark internationally in 1866, with registrations dating back to 1873. In India, the earliest registration dates to 1942. The plaintiffs were also registered proprietors of the device mark since 1994. Evidence of global presence in more than 150 countries and significant turnover in India was noted.

The Court examined a comparison chart of the marks, trade dress, and packaging of both parties. It stated: “The aforesaid comparison table clearly indicates that the Defendants have replicated the trade dress and overall representations of Plaintiffs’ goods in respect of identical goods, and the Defendants’ impugned marks are deceptively, visually, and phonetically similar to those of the Plaintiffs’, which is bound to contribute to confusion in the marketplace.”

It further observed: “This Court finds merit in the submission of the Plaintiffs that given the volume of sales of the Plaintiffs in India, Defendants would have been aware about the Plaintiffs’ mark for identical products. Thus, this Court finds that the adoption of the impugned marks by Defendants, which is deceptively similar to that of the Plaintiffs’ mark, is not an honest adoption.”

The Court recorded that the defendants’ conduct constituted unfair competition: “The unrebutted averments made in the plaint and the documents on record show that the Defendants are engaging in unfair competition by manufacturing and marketing their products using mark/tradedress/packaging/get-up/layout/artwork that infringes upon the Plaintiffs’ trademarks registrations. The Defendants, knowingly or unknowingly, aim to mislead consumers into believing their products are associated with the Plaintiffs, thus violating the trademark rights that the Plaintiffs have cultivated over years of business and marketing endeavours.”

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Justice Arora held: “Given the fact that the plaint has been duly verified and is supported by the affidavit of the plaintiff and in view of the aforesaid, this Court is of the view that this suit does not merit trial, and the suit is capable of being decreed in terms of Order VIII Rule 10 of CPC.” The Court decreed a permanent injunction in terms of prayer clause 40A (i), (ii), and (iii) of the plaint. The interim order of October 2024 was merged into the decree.

Further, the Court directed: “The trademark registry is directed to process Defendant no.1’s withdrawal application dated 06.12.2024 expeditiously and preferably within a period of four (4) weeks, in accordance with law. The plaintiff is granted liberty to place this direction before the trademark registry.” The relief at prayer clause 40B was decreed in these terms.

The Court ordered that the decree sheet be drawn up and all pending applications and future dates be cancelled.

Advocates Representing the Parties

For the Plaintiffs: Mr. Krisna Gambhir, Advocate and Mr. C.A. Brijesh, Advocate

For the Defendants: Mr. Durgesh Singh, Advocate

Case Title: VGP IPCO LLC & Anr. v. Mr. Suresh Kumar trading as Om Shiv Lubricants & Ors.

Case Number: CS(COMM) 821/2024

Bench: Justice Manmeet Pritam Singh Arora