The Delhi High Court granted permanent injunction to US-based automobile lubricant brand ‘VALVOLINE’ in a trademark infringement suit.

The Bench of Justice Manmeet Pritam Singh Arora observed, “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/trade dress/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 endeavour.”


Advocate Krisna Gambhir represented the Plaintiff, while Advocate Durgesh Singh represented the Defendant.

Case Brief

A Suit was filed by the Plaintiff seeking permanent injunction against the Defendants restraining them from infringing Plaintiff’s registered trademark/ passing off, and copyright.

The Plaintiffs had entered into a joint venture to sell premium lubricants by the name of Valvoline. Valvoline was established in 1866 as the world’s first lubricant brand. It was submitted by the Plaintiffs that the word mark ‘VALVOLINE’ has been registered in Class 4 as far back in the year 1942 with a user claim dating back to 1895.

The Plaintiffs contended that the Defendants were selling the products using the mark ‘VIVOLINE’ in respect of the identical products, i.e., engine oils. It was also contended that the Defendants are unlawfully using impugned marks similar to their registered trademark, VALVOLINE and its formatives.

Court’s Observation

The High Court noted that in 2024, an ad-interim injunction was granted by the Delhi High Court in favour of the Plaintiffs. The Defendants were also directed to remove all references to the marks ‘VIVOLINE’ and the offending packaging/trade-dress/overall get up of the products from any and all e-commerce platforms/social networking sites including but not limited to indiamart.com and all other online trade portals etc.

The Bench also took note of the fact that the Defendants had not appeared or filed Written Statement.

The High Court emphasised that the Plaintiffs had placed documents on record which evidence that Plaintiffs adopted VALVOLINE word mark internationally in 1866 and was granted international registration in 1873.

While drawing a comparison between the Plaintiffs and Defendants’ competing trademarks and products, the Court was of the opinion that the Defendants have replicated the trade dress and overall representations of Plaintiffs’ goods in respect of identical goods, and the Defendants’ impugned marks were deceptively, visually, and phonetically similar to those of the Plaintiffs’, which was bound to contribute to confusion in the marketplace.

“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”, the Court said.

Further, the Court was of the view that the suit was capable of being decreed in terms of Order VIII Rule 10 of CPC. Thus, the High Court granted the relief of permanent injunction in favour of the Plaintiffs.

Cause Title: VGP IPCO LLC & Anr. V. Suresh Kumar Trading as Om Shiv Lubricants & Ors.

Appearance:

Plaintiffs: Advocates Krisna Gambhir and C.A. Brijesh

Defendants: Advocate Durgesh Singh for Defendant No. 3

Click here to read/download Order


Delhi High CourtJustice Manmeet Pritam Singh Arora

Pridhi Chopra

    Pridhi Chopra was earlier practicing as an Advocate in Delhi. She pursued B.A. (H) English from Gargi College, University of Delhi, and subsequently pursued a degree in Law.