Case Name: Petrofer Chemie H.R. Fischer GMBH & Co. KG. v. United Petrofer Limited,
Case Number: INTERIM APPLICATION NO. 2143 OF 2021 IN COMMERCIAL IP SUIT NO. 275 OF 202
Court: HIGH COURT OF JUDICATURE AT BOMBAY
Date: Thursday, Sixth Day of November Two Thousand Twenty-Five
Quorum: Honorable Justice Arif S. Doctor
FACTS
The first plaintiff Petrofer Chemie H.R. Fischer GMBH & Co. KG is a company incorporated under the laws of Germany and was established in or about 1948. The company had registered the trademark “PETROFER” in India in classes 1,2,3 & 4 of marketing and selling lubricants, greases, hydraulic fluids and other processing processing compounds and chemicals. The second plaintiff, Hardcastle Petrofer, was granted license in 2005 to use the mark in India. The defendant was incorporated in 2016 as Unified Petrofer Ltd. and used the mark in its trade name and website unitedpetrofer.com. The plaintiff sought permanent injunction against the defendant to use the name “PETROFER” name, website and in relation to any product.
The plaintiffs argued that the defendant’s corporate name and website infringed their registered trademark and deceived consumers into believing that is an association between the two entities. A prior order from the Regional Director, MCA Ahmedabad, in 18th September 2019 had already directed the defendant to change its name within six months, but the company failed to comply with the directions and continued to operate its business. Since, the defendant failed to comply with the order of 18th September 2019, the Registrar of Companies on or about filed a complaint under Section 16(3) of the Companies Act, 2013, against the defendants and its directors before the Chief Metropolitan Magistrate, Ahmedabad, which is pending.
On 22nd July 2021, the first plaintiff applied to the second plaintiff as the registered user of the trademark “PETROFER”. The suit was filed on 25th August 2021. The application was allowed on 18th January 2022, officially recording the second plaintiff as the registered user. Thus, Hardcastle had been using the mark as an exclusive licensee since 2005 and as a registered user since 2022. Meanwhile the defendant’s rectification applications were dismissed on 28th January 2025, for want of prosecution by the Registrar of Trademarks, Mumbai.
ISSUES
- Whether the use of the word “PETROFER” constituted an infringement under the Trademark’s Act, 1999.
- Whether the defendant’s adoption of the name “United Petrofer Ltd.” amounted to dishonest adoption or was it bona fide
- Whether the defendants were of the same or similar description as those of the plaintiff’s
- Whether the plaintiff were disentitled on relief of grounds on acquiescence of delay.
LEGAL PROVISIONS
- Trademark’s Act 1999- Sections 2(1)(m), 29(1), 29(2), 29(4), 29(5).
- Companies Act, 2013- Sections 16(1)(b)
ARGUMENTS
Plaintiffs
Dr. Tulzapurkar, Learned Senior Counsel appearing on behalf of the Plaintiffs, argued that “PETROFER” was a distinctive and exclusive mark used by the company since 1948 and was registered in India since 1997. The defendant’s corporate name, made significant impact since the consumers had an impact of association between the two companies. The defendant’s products were also identical to the plaintiff’s goods. The plaintiff’s reliance upon the decision of this Court in the case of Neon Laboratories Ltd. v. Themis Medicare Ltd. 2014 4 SCC online Bom 1087 and of the decision of the Hon’ble Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. 1959 SCC OnLine SC 11. In support of his contention he placed reliance on the case Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. & Anr. 2001 SCC OnLine Bom 1176 held that were a defendant without making proper enquiries used a mark, the defendant did so “at its own risk and peril”. Dr. Tulzapurkar also stated that mere addition of a word, i.e, United before Petrofer, did not make any difference of mitigating confusion. To support the contention he placed reliance in the case of, Ruston & Hornsby Ltd. vs Zamindara Engineering Co. (1969) 2 SCC 727 from which he pointed out that the mere addition of a word before or after the mark/word that is similar or deceptively similar to a registered mark would still constitute infringement. Dr. Tulzapurkar then placed reliance upon the decision of the Hon’ble Supreme Court in the case of Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997) 4 SCC 201 to submit that it was well settled that the registered proprietor of a trade mark was entitled to the exclusive use of such trade mark in respect of the entire class of goods for which it is registered.
Defendants
Mr. Padwal, Learned Counsel appearing on behalf of the Defendant, contended that the alleged infringement was governed solely by the Section 29(5) of the Trade Marks Act would apply since what was alleged was infringement of the Plaintiffs registered trade mark by use in the Defendant’s trade/business name. The defendant’s additives and base oil, were distinct from the finished lubricant’s. The defendants were not using “United Petrofer” as a trade mark but only as a trade name and since they were only using “Petrofer” as a part of trade/business name, they were not required to conduct a search in the Trade Mark Registry or undertake any due diligence. He cited Cipla Ltd. v. Cipla Industries Pvt. Ltd. 2017 (69) PTC 425 Bom . to argue that trademark v. tradename falls under Section 29(5) only. Mr Padwal then submitted that for infringement to be established under Section 29(5) two essentials were needed to be satisfied, the first one is the registered trade mark must be used as, or as part of, the trade or business name of the person alleged to be infringing it. Second, the alleged infringer must be engaged in trade or business relating to the same goods or services for which the trade mark in question is registered. Mr. Padwal also placed reliance on the case International Foodstuffs Co. LLC v. Parle Products Pvt. Ltd. 2016 SCC OnLine Bom 2038 to submit that trade mark registration must be interpreted reasonably and pragmatically and not so broadly as to confer unjustified exclusivity over unrelated goods. He further claimed that plaintiffs has acquiesced since they purchased raw materials from the defendants in 2017-18 and were aware of their operations. The defendant argued bonafide adoption and claimed no likelihood of confusion.
Analysis
The court noted that Petrofer was an invented term, inherently distinctive and entitled to broad protection. The defendant’s incorporation of “Petrofer” in its corporate name and domain, despite prior registration by plaintiff involved dishonest adoption.
The court held that both the parties dealt with industrial lubricants, oils and chemical additives, within the same commercial category and hence satisfying the category of same or similar goods.
The court rejected the contention of the defendant of acquiescence, holding that mere procurement of minor raw materials did not amount to consent. The plaintiffs had acted promptly through the MCA complaint and subsequent suit. The defendant’s non compliance with the 2019 order to change its name reinforced its dishonest conduct.
Judgement
The Bombay High Court granted an injunction restraining United Petrofer Ltd. from using the word Petrofer in its name or trademark. The Court held that defendant’s adoption of the mark was not bonafide and violated Sections 29(1) and 29(5) of the Trade Mark’s Act, 1999. The Court also observed “the mere addition of the word “United” does not delete or mitigate the confusion and the essential feature “Petrofer” remains protected under the trademark law.
Accordingly, the defendant was directed to stop using the impugned mark, withdraw the domain “Unitedpetrofer.com” and comply with the MCA’s directives to change its name within the period of 3 months.
Conclusion
This judgement reaffirms that the registered proprietor’s rights extend beyond the literal mark of any deceptively similar corporate or domain name. The Court stated that invented marks like “Petrofer” enjoy highest degree of protection and that engaging in a similar mark amounts to dishonest intent. The Court by this judgement protected consumer integrity and trust.
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WRITTEN BY- SOUMITA CHAKRABORTY
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