Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision : 01.02.2010
+ CS(OS) 639/2008
SHELL BRANDS INTERNATIONAL AG & ANR. ..... Plaintiffs
Through : Mr. Manav Kumar and Ms. Neha Kapoor, Advocates.
versus
MR. PRADEEP JAIN PROPRIETOR SHELL EXPORTS E+ B+..... Defendant
Through : Mr. Shridhar. Y. Chitale, Advocate.
CORAM:
MR. JUSTICE S. RAVINDRA BHAT
1. Whether the Reporters of local papers Yes.
may be allowed to see the judgment?
2. To be referred to Reporter or not? Yes.
3. Whether the judgment should be Yes.
reported in the Digest?
HON’BLE MR. JUSTICE S.RAVINDRA BHAT
%
1. The plaintiffs seek a decree for permanent injunction, alleging infringement and passing-
off, of their trademark “SHELL”; they also seek other reliefs, such as damages, direction for
delivery-up etc.
2. The first plaintiff is a company incorporated under the laws of Switzerland. The second
plaintiff is an incorporated company under the laws of England. They both claim to be members
of the SHELL group of companies, of which ROYAL DUTCH SHELL PLC, an English entity is
the holding-company. It is alleged that the group comprises of several subsidiary and joint
venture entities which produce, manufacture and market a wide range of petro-chemicals, energy
CS(OS) No.639/2008 Page 1
goods and services. The plaintiffs allege that the SHELL group of companies was established in
1907 and now constitute a diverse international group of energy and petro-chemical companies,
operating in over 140 countries, employing 1,19,000 people. It is also claimed that the group is
engaged world-wide and is best known for its retail service stations, exploring and producing oil
and gas on land and at sea. It is contended that the presence of the SHELL Group in India dates
back to about eighty years ago when they established an oil distribution company “BURMAH
SHELL” in 1928. Para 6 of the suit lists nine companies and concerns which are controlled by
the SHELL Group. It is submitted that the plaintiffs’ branded products are sold in Delhi. The
plaintiffs contend that the SHELL is a world-famous and globally respected trademark, trade
name, service mark and brand name.
3. The plaintiffs and their affiliates, says the suit, have obtained 3000 trademark
registrations world-wide, for SHELL related marks. It is submitted that the SHELL trademark
and the “seashell” device is registered in a number of classes with the earliest registrations – still
extant, dating back to 1942. It is submitted that these registrations are subsisting till date; the
plaintiffs describe, in para 9; particularly, their trademark “SHELL” being no. 1251269 dated
24.11.2003, in Class-24. According to the suit, the plaintiffs have earned immense goodwill and
reputation in world markets, including in India. This is sought to be underlined by disclosure of
sales figures for the period 1999-2007, for the year 1999; the sales mentioned is US $ 142,140/
Million and for 2000, the corresponding figure is US $ 355,782 Million. It is claimed that the
gross sales in India for 2000 (April 2006 to December 2007) is Rs.1361.20 Crores. It is alleged
that the SHELL trademark and name has acquired distinctiveness and secondary meaning
amongst members of the public. The plaintiffs cite a report of one Market and Opinion Research
International (MORI) in 2005, and submit that 54% of the general public surveyed claimed that
CS(OS) No.639/2008 Page 2
they knew SHELL either very well or fairly well. It is contended that the plaintiffs have been
zealously and aggressively protecting their intellectual property rights.
4. The plaintiffs allege that the defendant is engaged in the manufacture and export of
bedsheets, quilts and pillow covers in various specifications; it is a proprietary concern. It is
further claimed that the plaintiffs became aware of the defendant’s website
www.shellkandla.com upon enquiries and also the use of the word “SHELL” in the e-mail
identity, info@shellkandla.com . The plaintiffs allege having issued a Seize and Desist letter
dated 21.12.2006, demanding the defendant to stop using the SHELL name. It is also argued that
the defendant, in their letter dated 29.12.2006, informed that they were willing to change the
trade name and asked the plaintiffs’ cooperation in executing name-change procedure with
government authorities. It is submitted that despite several reminders, the defendants did not
comply with their promise and eventually sent an e-mail on 30.11.2007, demanding about Rs.4
crores as monetary compensation for name change. The plaintiffs submit being aggrieved by the
unauthorized use of the word “SHELL” in which they have excessive rights, by the defendant,
which injures their reputation.
5. The plaintiffs allege that the defendant is well-aware of the fame and reputation of the
plaintiffs in respect of the mark “SHELL” and its use of such mark is in bad faith.
6. The plaintiffs have claimed to being a registered proprietor of well-known mark (falling
within the definition under Section 2(1)(zg) of the Trademarks Act, 1999 (hereafter called “the
Act”). Since the mark has been used extensively for over 100-years globally, promoted and
advertised, their products under the said mark through print and advertisement media. The claim
for being well-known mark is also premised upon numerous registrations subsisting in the
CS(OS) No.639/2008 Page 3
plaintiffs’ favor in various classes under the Act. It is submitted that this Court has jurisdiction
since the plaintiffs’ affiliate office operates in Delhi under license and their goods are extensively
sold here. It is also claimed that the defendant operates and promotes its business activity
through the website www.shellkandla.com on a commercial scale, which is accessible from
anywhere, including Delhi. In these circumstances, the plaintiffs seek injunction, restraining the
defendant from manufacturing any articles or commercial-dealing with them under the trade-
name SHELL EXPORTS or any other deceptively similar mark and also from using the name
www.shellkandla.com as their domain name.
7. In support of their claim, the plaintiffs have filed copies of trademark registrations in
respect of the word “SHELL” as well as the “SHELL” logo with the word in various classes and
the renewals obtained from time to time in pages 176-226 of the list of documents. To establish
use, the plaintiffs rely upon copies of brochures, webshots etc., displaying the said SHELL logo;
they are filed at pages 234-281, copies of press clipping in support of the claim, containing
articles and write-ups in support of the claim for being world-famous and well-known marks, are
filed between pages 282-355. The plaintiffs also rely upon previous orders of the Court in other
suits where the defendants in those suits were injuncted from using the SHELL trademark.
8. The defendant contests the suit and, submits that it is motivated. It is contended that the
defendant has no intention of deriving benefits from the plaintiffs’ trade name and has been
using M/s. SHELL EXPORTS KANDLA for the last 11 years, the manner of presentation of
which has not constructive or visual resemblance with the plaintiffs’ trade or corporate name. It
is submitted that the goods manufactured by the defendant are not even advertised in India and
that it sells its goods abroad. The defendant states that it is not using the plaintiffs’ logo, emblem
or any other mark on its products capable of any confusion. He also submits to manufacturing
CS(OS) No.639/2008 Page 4
“shell” products, such as bedsheets, quilt covers, etc., which are not sold in India, but are
produced in accordance with the overseas buyer’s specifications. It is submitted that such goods,
after export, are stuffed, or finished, and sold under different brands, having regard to the buyers,
and local markets. The defendant submits that he does not use the SHELL logo, or even the
word, mark for marketing his products; he does not even advertise it anywhere, either in India, or
in any other place.
9. The defendant, in support of his averments, relies on certain documents, such as the
certificates issued by the Apparel Export Promotion Council, a letter from the Office of the
th
Development Commissioner, Kandla Special Economic Zone, dated 26 June, 2007, stating that
its (the defendant’s) unit was given a letter of approval on 01.11.1996. The copy of the Actual
User Registration certificate, dated 02.01.1997, issued to the defendant, about the use of the
SHELL EXPORT trade name, is also relied on. Copies of the Export Promotion Council
document, issue in 2003, as well as the certificate issued by the Registrar of Firms, in respect of
the defendant concern, dated 18.05.2000, have been placed on the record.
10. By an order of court, dated 12.05.2009, issues were framed; they are:
(1) Whether the plaintiff is registered proprietor of the trademark SHELL; OPP
(2) Whether the use by the defendant of the word SHELL as part of its trade name for
trade/business different from that of the plaintiff amounts to infringement of the plaintiff’s
trademark; OPP
(3) Whether the defendant is the prior user of the mark/word SHELL for the Class 24 goods
of the business carried by it and if so to what effect? OPD
(4) Whether the plaintiff has not used word/ mark SHELL in India and if so to what effect?
OPD
CS(OS) No.639/2008 Page 5
(5) Whether the use by the defendant of the word SHELL as part of its trade-name and on its
website would amount to the defendant passing off its goods/business as and that of the plaintiff?
OPP
(6) Whether the defendant is an honest and bona fide user of the word SHELL as part of its
trade name/domain name and if so to what effect? OPD
(7) Whether the word SHELL is a generic word and if so to what effect? OPD
(8) Whether there are other distinguishing features in the name/mark of the defendant from
that of the plaintiff and if so to what effect? OPD
(9) Whether the plaintiff is not entitled to the relief claimed for the reason of delay, latches
and acquiescence? OPD
(10) Whether this Court has territorial jurisdiction to entertain the suit? OPP
(11) Whether the plaintiff is entitled to any damages from the defendant and if so in what
amount? OPP
(12) Relief
11. The plaintiffs filed the affidavit evidence of one witness, Rahul Sethi, who claims to be
rd
their Constituted Attorney, dated 23 September, 2009. Despite several dates of hearing, the
plaintiffs’ witness was not present in Court, for cross examination. He has affirmed the
averments of the suit, and the documents filed along with it.
12. Mr. Manav Kumar, learned counsel, relied on the averments in the suit, as well as the
plaintiffs’ documents, to say that the distinctiveness, repute and fame of the plaintiffs’ mark
cannot be doubted. It is contended that the word SHELL is virtually synonymous with the
plaintiffs and their products, and globally, consumers associate it with the plaintiffs’ products.
The plaintiffs are registered owner of the marks, worldwide, and have, 3000 registrations
standing to their credit, across several countries. In India, too, they have been using the mark and
CS(OS) No.639/2008 Page 6
have registrations in their favour for several products and services. The plaintiffs submit that
they are particularly concerned with the subsisting registration in their favour, in Class 24, both
of the word mark, and the distinctive SHELL emblem.
13. Learned counsel relied on the copies of web-shots of the plaintiffs’ websites, as well as
copies of their brochures and write ups, to submit that the SHELL mark is used extensively in
relation to various petroleum products and allied services, since 1907, and at least since 1942 in
India. In these circumstances, according to counsel, the mark is not only distinctive, with a
valuable reputation, but one capable of being characterized as a well-known and famous mark,
that has acquired secondary meaning among the consumers. It is also submitted that consumer
surveys have revealed that a vast majority of the general public are aware of the distinctive
SHELL brand and mark, and that most people who are spoken to about the SHELL brand,
disclose its brand awareness, and that it pertains to the plaintiffs’ goods and services.
14. The plaintiffs have relied on the evidence of PW-1 Rahul Sethi, who deposed in support
of the averments, generally. He also exhibited documents, Ex. PW-1/3 to PW-1/17, copies of the
plaintiff companies’ annual reports, for various years. The affidavit states that the SHELL mark
was devised and used for the first time, since 1907, and has been used extensively in several
countries around the world. A list of trademark registrations for the wordmark and the device has
been annexed to the affidavit. The deponent mentioned that the SHELL mark has been in use in
India, since 1942, and the registrations for the mark have been renewed; they are extant. The
deponent, in the affidavit mentions that the SHELL mark was also registered in relation to Class
24 in India, with effect from 24.11.2003. He has sought to prove the registrations by producing
copies of the certificates (Ex. PW-1/19 and Ex. PW-1/20). He deposed, further, about the sales
and advertisement amounts spent by the plaintiffs; as well as produced copies of invoices, etc., to
CS(OS) No.639/2008 Page 7
show extensive marketing and sales of the plaintiffs’ goods and services. The witness has further
deposed about the brand acceptance and awareness in the marketplace, and exhibited the
documents filed along with the list of documents, produced with the suit.
Issue Nos. 1, 4 and 7
15. The Court proposes to consider these issues, as they concern the main aspects of the
plaintiffs’ claim. Now, the documents produced and affirmed on behalf of the plaintiffs are not
seriously disputed. These clearly establish that the plaintiffs’ marks – both the device and the
word mark are registered trademarks, and have been in existence for a substantially long point of
time, in India. The plaintiffs’ claim is that the mark is used and well-known in respect petroleum,
petroleum products and allied goods and services; they also claim to be using the mark in other
fields such as research and development, education, and so on. The issue concerning the
plaintiffs’ proprietorship, of registered trademarks were not disputed by the defendant, nor his
counsel, during the hearing of the suit. That the plaintiffs have been using the mark, in respect of
petroleum and other goods and services, are not disputed. Therefore, Issue Nos 1 and 4 are
answered in their favour.
16. That brings the discussion to the seventh issue, i.e. whether SHELL is a generic word or
term. It is established that the purpose of using trademarks is to enable consumers to identify the
source of the product. Marks – particularly word marks are descriptive, geographical, generic or
arbitrary. A mark which has no co-relation to goods or services which it services is an “arbitrary”
mark. The plaintiffs’ contention is that SHELL is not descriptive, but arbitrary, and by long
usage, it has not only acquired secondary significance, but has become a well-known mark. In
CS(OS) No.639/2008 Page 8
sum, they contend that the word itself conjures association with the plaintiffs’ services or
products.
17. Now, there can be no doubt that the materials on record show that the plaintiffs have been
using the SHELL mark for a considerably long period. In relation to petroleum products, it can
be safely said that the mark has acquired a secondary significance, as to identify itself with the
plaintiffs. To that extent, the plaintiffs’ claim is correct. The question however, is not whether
such distinctiveness is sufficient to entitle the plaintiffs to the injunction sought for.
18. “Shell” is a common word, signifying many meanings. It means the shell (of a sea
creature) of the kind used by the plaintiffs’ logo. It also has several other meanings, such as – an
empty covering or cover; an outer layer with something inside (as in an eggshell); it also
signifies an explosive or firearm shell. If one takes these factors into consideration, there is no
doubt that SHELL, though not a descriptive word, in respect of the goods or services offered by
the plaintiffs, is a common word. The plaintiffs, as stated earlier, are well known for products in
the petroleum, oil and allied fields. The seventh issue is answered accordingly; there is no
genericness of SHELL, in relation to petroleum products. However, it is also undoubtedly a
common dictionary word.
Issue Nos. 2,3, 5 & 6
19. The facts of this case show that the defendant’s use of SHELL, is confined to its
corporate name. It does not participate or engage in petroleum or allied business. It claims to
have been using the SHELL word in its corporate name, since 1993; it relies on certificates
issued by government and trade bodies, evidencing use since at least 2000. The defendant also
does not offer any goods or services; it is a purely export oriented firm, which manufactures
covers or “shells” of quilts/ sheets, which are then filled with stuffing. These products are,
according to its averments and materials on record, exported. The defendant firm is situated in
CS(OS) No.639/2008 Page 9
Kandla. The plaintiff has not controverted these facts, through any pleadings, or evidence. It has
also not placed any material to show that the defendants are using their trademark SHELL, on
their (the defendant’s) products.
20. The suit and the evidence led on behalf of the plaintiffs shows that they own a large
number of trademark registrations, in various classes. These include Class 24 (Textiles and
textile goods, not included in other classes; bed and table covers) with effect from 2003. Yet, the
plaintiff has not disclosed whether it is engaged in any textile goods manufacture or trade, or
deals in bed and table covers, which is the only commercial activity of the defendant. The
materials on record also suggest that the defendant has been using the mark since at least 2000, if
not earlier. These, in the opinion of the Court show that the defendant has been using the mark in
relation to its corporate or trade name, much before the plaintiffs, as regards the textile and
bedcovers trade.
21. Section 29 (5) of the Trademarks Act has enacted the standard for a new species of
infringement, i.e. trade-name infringement. It reads as follows:
“(5) A registered trade mark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his business concern dealing in goods or
services in respect of which the trade- mark is registered.”
Significantly, unlike trademark infringement in relation to similar goods, where the marks are
similar or identical, where Parliament has mandated a presumption (of infringement) there is no
such presumption in case of trade name similarity.
22. Sona Spices Pvt Ltd. v. Soongachi Tea Industries Pvt. Ltd., 2007 (34) PTC 91 (Del) and
First Computers v. A. Guruprasad, 1996 PTC (16) 27 (Mad) (DB) are authorities on the question
of use by the alleged infringer, of the mark, before the plaintiffs’ mark was registered. In Sona
Spices , the Plaintiff was prior registered owner of trademark Sona and was using the same for
spices and was a recent entrant in tea business. The Defendant was using the same brand name
for tea for around 30 years and was also a registered owner of the same brand name. This Court
rejected the Plaintiff's application for interim injunction on the ground that the Defendant was a
prior user of the mark Sona , in respect of tea business and the Plaintiff failed to prove any
CS(OS) No.639/2008 Page 10
established business in respect of tea. In First Computers , the Plaintiff was trading in computers.
The Defendant neither manufactured, nor a sold computers; he used to train people in the use of
computers. In such circumstances where the likely customers were also educated people, the
Division Bench of Madras High Court did not find any ground to grant interim relief to the
Plaintiff. In Britannia Industries Ltd. v. Cremica Agro Food Ltd., 2008 (38) PTC 89 (Del) the
Plaintiff was using the trademark GREETINGS in relation to biscuits, cakes and bakery products
whereas the Defendant's products were a combination of assorted biscuits. This Court refused to
grant interim injunction and did not find it to be a prima facie case of interim relief to the
Plaintiff. In Harrods Ltd. v. Harrodian School Ltd., [1996] RPC 697, the question was whether
the use by the Defendant of their name (Harrodian School) would lead to confusion among the
public that they were misrepresenting themselves as being connected with the Plaintiff (Harrods
Ltd). The injunction was refused for lack of evidence of actual deception and confusion. Millet
LJ., observed:
“If any confusion really did exist then, given the time which elapsed between the
publication of the brochure, the opening of the school, and the trial, I would have
expected the plaintiffs to be in a position to call evidence that some of their huge number
of customers had asked for a brochure for the school or had enquired whether the store
supplied uniforms for the school, or had otherwise manifested their impression that the
school was connected with the store. No such evidence was called..”
23. The plaintiffs have been unable to show from the record any evidence of their use of the
SHELL mark in relation to textiles or products of the kind, the defendant deals in. They have
also not shown that the defendant uses the mark, in relation to any products sold, or offered in
the market. All indications are that the trade-name is used only for export; the defendant does not
use any mark for its products, at least not SHELL. The defendant’s use, on the other hand, is
descriptive, vis-à-vis the textile articles which are “shell” goods, without stuffing.
24. Cases of infringement no doubt, do not depend on proof of actual deception. Yet the
entire object of trademark law would be rendered meaningless if courts were to mechanically
grant injunctive relief, where no injury is shown, or shown to be a natural result of someone’s
use of a mark. The object of trademark law is to prevent conduct by a trader or producer, which
is calculated to injure the business or goodwill of another trader (in the sense that this is a
CS(OS) No.639/2008 Page 11
reasonably foreseeable consequence). This is more so, where generic terms, or common words
are used for trademark; this also applies where the words describe the goods, or services, or some
of their prominent attributes. The need to show some element of use or goodwill, in the mark, for
the goods or services, cannot be lost sight of; in Perkins v. Shone, 2004 EWHC 2249 (Ch D) this
was emphasized as follows:
“Commercially goodwill is recognised as a form of property, and transactions in
goodwill occur constantly in all areas of business. The law also recognises that goodwill
exists, and affords it a measure of protection through the law of passing off. However, the
degree of legal protection is not as extensive as the factual and commercial content of
goodwill. To some extent that is necessarily so given the factors which make up the
goodwill of a business or of a particular line of business. The essence of goodwill has
been encapsulated judicially in Lord Macnaghten's expression 'the attractive force which
brings in custom': IRC v. Muller [1901] AC 217 at 223. To a large measure it lies in the
de facto expectation that an established line of business will continue: that the customers
will carry on purchasing the goods or services and that the suppliers will carry on
providing the supplies which enable the goods or services to be provided. But those are
not matters which can be given legal protection as some species of property right. The
goodwill value of a business can be reinforced by making long term contracts with
customers or suppliers, but goodwill can exist and can have a significant value even in
the absence of long term contracts. In such cases it exists as a commercial reality
although major elements of it do not and cannot receive legal protection.”
Recently, a Division Bench, in Rhizome Distilleries Pvt. Ltd. & Ors. v. Pernod Ricard S.A.
France & Ors.[FAO (OS) 484/2008 & C.M. Nos. 17352/2008 & 3429/2009, decided on
23.10.2009 by Vikramajit Sen, J and V.K. Jain, J] stated the applicable principles, where rival
marks are common or dictionary words or common to the trade, in the following manner:
“We are reminded of the decision of the Court of Appeal in McCain International
Limited v. Country Fair Foods Limited 1982 PTC 156. The learned Single Judge had
granted interlocutory relief in a passing off action. The Plaintiff avowedly was the first to
launch 'chipped potatoes' in the market which rather than being fried could be baked in
the oven or cooked in a grill. The competing brands were 'McCain Oven Chips' and
'Country Fair Oven Chips'. The Court of Appeal was of the opinion that the case was
similar to the term 'Flaked Oatmeal" in Parsons v. Gillespie 1898 AC 239 which was
seen as descriptive' Reference was also made to the use of the word "slip-on" which was
also found to be descriptive; or Hedley's Malted Milk as against Horlicks Malted Milk.
We think it noteworthy that it was reiterated that it was essential for a trader to add a
prefix or suffix, preferably showing origins in order to get any protection in respect of a
word which is descriptive. Reference was also made to Office Cleaning Service Ltd. v.
Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 where the rivals were
using "Office Cleaning Services" and "Office Cleaning Association". The opinion was
CS(OS) No.639/2008 Page 12
that where a fancy word has been chosen as a part of the name and if another trader
adopts that fancy name that may be seen as inviting confusion. Keeping all these
precedents in view, the Court of Appeal concluded that the use of the word 'Oven Chips'
was descriptive and the prefix of 'McCain', 'Country Fair' or 'Birds Eye' were sufficient
to distinguish the products. We are not faced with the employment of descriptive words
but the underlying rationale is apposite, namely, that if words of common parlance are
used, exclusivity cannot be claimed…”
25. This Court is of opinion that the use of SHELL as corporate name by the defendant,
notwithstanding the plaintiffs’ registration of the word mark, cannot ipso facto confer
exclusivity. The plaintiffs should use it in relation to specific goods, such as garments, etc; then
alone would there exist some justification in granting relief. Trademark law, it must be
remembered, is not mechanical application of abstract principles, after a ritualistic incantation of
standard terms. It strives to protect businesses built up to match certain standards. If a trader or
manufacturer uses words that acquire some distinctiveness, he is undoubtedly entitled to
protection, at least in respect of similar marks, in respect of the goods he deals in. However,
merely because he acquires registration (of the mark) he does not become its exclusive owner.
SHELL conjures up images of the Shell device; even its petroleum products. But nothing on
record suggests that it associates with export of shell bedcovers; the plaintiffs do not deal in such
goods, nor were to be shown as dealing in them, in respect of the domestic or export market. The
defendant, on the other hand, has shown to have been using it for over one decade. In these
circumstances, the Court holds that the plaintiffs are not entitled to the reliefs of injunction and
damages.
26. For the above reasons, the plaintiffs have not been able to prove their case, for any of the
reliefs claimed. The suit, therefore, has to fail. It is dismissed with costs; counsel’s fee is
quantified at Rs. 50,000/-
February 01, 2010 (S.RAVINDRA BHAT)
JUDGE
CS(OS) No.639/2008 Page 13
Date of decision : 01.02.2010
+ CS(OS) 639/2008
SHELL BRANDS INTERNATIONAL AG & ANR. ..... Plaintiffs
Through : Mr. Manav Kumar and Ms. Neha Kapoor, Advocates.
versus
MR. PRADEEP JAIN PROPRIETOR SHELL EXPORTS E+ B+..... Defendant
Through : Mr. Shridhar. Y. Chitale, Advocate.
CORAM:
MR. JUSTICE S. RAVINDRA BHAT
1. Whether the Reporters of local papers Yes.
may be allowed to see the judgment?
2. To be referred to Reporter or not? Yes.
3. Whether the judgment should be Yes.
reported in the Digest?
HON’BLE MR. JUSTICE S.RAVINDRA BHAT
%
1. The plaintiffs seek a decree for permanent injunction, alleging infringement and passing-
off, of their trademark “SHELL”; they also seek other reliefs, such as damages, direction for
delivery-up etc.
2. The first plaintiff is a company incorporated under the laws of Switzerland. The second
plaintiff is an incorporated company under the laws of England. They both claim to be members
of the SHELL group of companies, of which ROYAL DUTCH SHELL PLC, an English entity is
the holding-company. It is alleged that the group comprises of several subsidiary and joint
venture entities which produce, manufacture and market a wide range of petro-chemicals, energy
CS(OS) No.639/2008 Page 1
goods and services. The plaintiffs allege that the SHELL group of companies was established in
1907 and now constitute a diverse international group of energy and petro-chemical companies,
operating in over 140 countries, employing 1,19,000 people. It is also claimed that the group is
engaged world-wide and is best known for its retail service stations, exploring and producing oil
and gas on land and at sea. It is contended that the presence of the SHELL Group in India dates
back to about eighty years ago when they established an oil distribution company “BURMAH
SHELL” in 1928. Para 6 of the suit lists nine companies and concerns which are controlled by
the SHELL Group. It is submitted that the plaintiffs’ branded products are sold in Delhi. The
plaintiffs contend that the SHELL is a world-famous and globally respected trademark, trade
name, service mark and brand name.
3. The plaintiffs and their affiliates, says the suit, have obtained 3000 trademark
registrations world-wide, for SHELL related marks. It is submitted that the SHELL trademark
and the “seashell” device is registered in a number of classes with the earliest registrations – still
extant, dating back to 1942. It is submitted that these registrations are subsisting till date; the
plaintiffs describe, in para 9; particularly, their trademark “SHELL” being no. 1251269 dated
24.11.2003, in Class-24. According to the suit, the plaintiffs have earned immense goodwill and
reputation in world markets, including in India. This is sought to be underlined by disclosure of
sales figures for the period 1999-2007, for the year 1999; the sales mentioned is US $ 142,140/
Million and for 2000, the corresponding figure is US $ 355,782 Million. It is claimed that the
gross sales in India for 2000 (April 2006 to December 2007) is Rs.1361.20 Crores. It is alleged
that the SHELL trademark and name has acquired distinctiveness and secondary meaning
amongst members of the public. The plaintiffs cite a report of one Market and Opinion Research
International (MORI) in 2005, and submit that 54% of the general public surveyed claimed that
CS(OS) No.639/2008 Page 2
they knew SHELL either very well or fairly well. It is contended that the plaintiffs have been
zealously and aggressively protecting their intellectual property rights.
4. The plaintiffs allege that the defendant is engaged in the manufacture and export of
bedsheets, quilts and pillow covers in various specifications; it is a proprietary concern. It is
further claimed that the plaintiffs became aware of the defendant’s website
www.shellkandla.com upon enquiries and also the use of the word “SHELL” in the e-mail
identity, info@shellkandla.com . The plaintiffs allege having issued a Seize and Desist letter
dated 21.12.2006, demanding the defendant to stop using the SHELL name. It is also argued that
the defendant, in their letter dated 29.12.2006, informed that they were willing to change the
trade name and asked the plaintiffs’ cooperation in executing name-change procedure with
government authorities. It is submitted that despite several reminders, the defendants did not
comply with their promise and eventually sent an e-mail on 30.11.2007, demanding about Rs.4
crores as monetary compensation for name change. The plaintiffs submit being aggrieved by the
unauthorized use of the word “SHELL” in which they have excessive rights, by the defendant,
which injures their reputation.
5. The plaintiffs allege that the defendant is well-aware of the fame and reputation of the
plaintiffs in respect of the mark “SHELL” and its use of such mark is in bad faith.
6. The plaintiffs have claimed to being a registered proprietor of well-known mark (falling
within the definition under Section 2(1)(zg) of the Trademarks Act, 1999 (hereafter called “the
Act”). Since the mark has been used extensively for over 100-years globally, promoted and
advertised, their products under the said mark through print and advertisement media. The claim
for being well-known mark is also premised upon numerous registrations subsisting in the
CS(OS) No.639/2008 Page 3
plaintiffs’ favor in various classes under the Act. It is submitted that this Court has jurisdiction
since the plaintiffs’ affiliate office operates in Delhi under license and their goods are extensively
sold here. It is also claimed that the defendant operates and promotes its business activity
through the website www.shellkandla.com on a commercial scale, which is accessible from
anywhere, including Delhi. In these circumstances, the plaintiffs seek injunction, restraining the
defendant from manufacturing any articles or commercial-dealing with them under the trade-
name SHELL EXPORTS or any other deceptively similar mark and also from using the name
www.shellkandla.com as their domain name.
7. In support of their claim, the plaintiffs have filed copies of trademark registrations in
respect of the word “SHELL” as well as the “SHELL” logo with the word in various classes and
the renewals obtained from time to time in pages 176-226 of the list of documents. To establish
use, the plaintiffs rely upon copies of brochures, webshots etc., displaying the said SHELL logo;
they are filed at pages 234-281, copies of press clipping in support of the claim, containing
articles and write-ups in support of the claim for being world-famous and well-known marks, are
filed between pages 282-355. The plaintiffs also rely upon previous orders of the Court in other
suits where the defendants in those suits were injuncted from using the SHELL trademark.
8. The defendant contests the suit and, submits that it is motivated. It is contended that the
defendant has no intention of deriving benefits from the plaintiffs’ trade name and has been
using M/s. SHELL EXPORTS KANDLA for the last 11 years, the manner of presentation of
which has not constructive or visual resemblance with the plaintiffs’ trade or corporate name. It
is submitted that the goods manufactured by the defendant are not even advertised in India and
that it sells its goods abroad. The defendant states that it is not using the plaintiffs’ logo, emblem
or any other mark on its products capable of any confusion. He also submits to manufacturing
CS(OS) No.639/2008 Page 4
“shell” products, such as bedsheets, quilt covers, etc., which are not sold in India, but are
produced in accordance with the overseas buyer’s specifications. It is submitted that such goods,
after export, are stuffed, or finished, and sold under different brands, having regard to the buyers,
and local markets. The defendant submits that he does not use the SHELL logo, or even the
word, mark for marketing his products; he does not even advertise it anywhere, either in India, or
in any other place.
9. The defendant, in support of his averments, relies on certain documents, such as the
certificates issued by the Apparel Export Promotion Council, a letter from the Office of the
th
Development Commissioner, Kandla Special Economic Zone, dated 26 June, 2007, stating that
its (the defendant’s) unit was given a letter of approval on 01.11.1996. The copy of the Actual
User Registration certificate, dated 02.01.1997, issued to the defendant, about the use of the
SHELL EXPORT trade name, is also relied on. Copies of the Export Promotion Council
document, issue in 2003, as well as the certificate issued by the Registrar of Firms, in respect of
the defendant concern, dated 18.05.2000, have been placed on the record.
10. By an order of court, dated 12.05.2009, issues were framed; they are:
(1) Whether the plaintiff is registered proprietor of the trademark SHELL; OPP
(2) Whether the use by the defendant of the word SHELL as part of its trade name for
trade/business different from that of the plaintiff amounts to infringement of the plaintiff’s
trademark; OPP
(3) Whether the defendant is the prior user of the mark/word SHELL for the Class 24 goods
of the business carried by it and if so to what effect? OPD
(4) Whether the plaintiff has not used word/ mark SHELL in India and if so to what effect?
OPD
CS(OS) No.639/2008 Page 5
(5) Whether the use by the defendant of the word SHELL as part of its trade-name and on its
website would amount to the defendant passing off its goods/business as and that of the plaintiff?
OPP
(6) Whether the defendant is an honest and bona fide user of the word SHELL as part of its
trade name/domain name and if so to what effect? OPD
(7) Whether the word SHELL is a generic word and if so to what effect? OPD
(8) Whether there are other distinguishing features in the name/mark of the defendant from
that of the plaintiff and if so to what effect? OPD
(9) Whether the plaintiff is not entitled to the relief claimed for the reason of delay, latches
and acquiescence? OPD
(10) Whether this Court has territorial jurisdiction to entertain the suit? OPP
(11) Whether the plaintiff is entitled to any damages from the defendant and if so in what
amount? OPP
(12) Relief
11. The plaintiffs filed the affidavit evidence of one witness, Rahul Sethi, who claims to be
rd
their Constituted Attorney, dated 23 September, 2009. Despite several dates of hearing, the
plaintiffs’ witness was not present in Court, for cross examination. He has affirmed the
averments of the suit, and the documents filed along with it.
12. Mr. Manav Kumar, learned counsel, relied on the averments in the suit, as well as the
plaintiffs’ documents, to say that the distinctiveness, repute and fame of the plaintiffs’ mark
cannot be doubted. It is contended that the word SHELL is virtually synonymous with the
plaintiffs and their products, and globally, consumers associate it with the plaintiffs’ products.
The plaintiffs are registered owner of the marks, worldwide, and have, 3000 registrations
standing to their credit, across several countries. In India, too, they have been using the mark and
CS(OS) No.639/2008 Page 6
have registrations in their favour for several products and services. The plaintiffs submit that
they are particularly concerned with the subsisting registration in their favour, in Class 24, both
of the word mark, and the distinctive SHELL emblem.
13. Learned counsel relied on the copies of web-shots of the plaintiffs’ websites, as well as
copies of their brochures and write ups, to submit that the SHELL mark is used extensively in
relation to various petroleum products and allied services, since 1907, and at least since 1942 in
India. In these circumstances, according to counsel, the mark is not only distinctive, with a
valuable reputation, but one capable of being characterized as a well-known and famous mark,
that has acquired secondary meaning among the consumers. It is also submitted that consumer
surveys have revealed that a vast majority of the general public are aware of the distinctive
SHELL brand and mark, and that most people who are spoken to about the SHELL brand,
disclose its brand awareness, and that it pertains to the plaintiffs’ goods and services.
14. The plaintiffs have relied on the evidence of PW-1 Rahul Sethi, who deposed in support
of the averments, generally. He also exhibited documents, Ex. PW-1/3 to PW-1/17, copies of the
plaintiff companies’ annual reports, for various years. The affidavit states that the SHELL mark
was devised and used for the first time, since 1907, and has been used extensively in several
countries around the world. A list of trademark registrations for the wordmark and the device has
been annexed to the affidavit. The deponent mentioned that the SHELL mark has been in use in
India, since 1942, and the registrations for the mark have been renewed; they are extant. The
deponent, in the affidavit mentions that the SHELL mark was also registered in relation to Class
24 in India, with effect from 24.11.2003. He has sought to prove the registrations by producing
copies of the certificates (Ex. PW-1/19 and Ex. PW-1/20). He deposed, further, about the sales
and advertisement amounts spent by the plaintiffs; as well as produced copies of invoices, etc., to
CS(OS) No.639/2008 Page 7
show extensive marketing and sales of the plaintiffs’ goods and services. The witness has further
deposed about the brand acceptance and awareness in the marketplace, and exhibited the
documents filed along with the list of documents, produced with the suit.
Issue Nos. 1, 4 and 7
15. The Court proposes to consider these issues, as they concern the main aspects of the
plaintiffs’ claim. Now, the documents produced and affirmed on behalf of the plaintiffs are not
seriously disputed. These clearly establish that the plaintiffs’ marks – both the device and the
word mark are registered trademarks, and have been in existence for a substantially long point of
time, in India. The plaintiffs’ claim is that the mark is used and well-known in respect petroleum,
petroleum products and allied goods and services; they also claim to be using the mark in other
fields such as research and development, education, and so on. The issue concerning the
plaintiffs’ proprietorship, of registered trademarks were not disputed by the defendant, nor his
counsel, during the hearing of the suit. That the plaintiffs have been using the mark, in respect of
petroleum and other goods and services, are not disputed. Therefore, Issue Nos 1 and 4 are
answered in their favour.
16. That brings the discussion to the seventh issue, i.e. whether SHELL is a generic word or
term. It is established that the purpose of using trademarks is to enable consumers to identify the
source of the product. Marks – particularly word marks are descriptive, geographical, generic or
arbitrary. A mark which has no co-relation to goods or services which it services is an “arbitrary”
mark. The plaintiffs’ contention is that SHELL is not descriptive, but arbitrary, and by long
usage, it has not only acquired secondary significance, but has become a well-known mark. In
CS(OS) No.639/2008 Page 8
sum, they contend that the word itself conjures association with the plaintiffs’ services or
products.
17. Now, there can be no doubt that the materials on record show that the plaintiffs have been
using the SHELL mark for a considerably long period. In relation to petroleum products, it can
be safely said that the mark has acquired a secondary significance, as to identify itself with the
plaintiffs. To that extent, the plaintiffs’ claim is correct. The question however, is not whether
such distinctiveness is sufficient to entitle the plaintiffs to the injunction sought for.
18. “Shell” is a common word, signifying many meanings. It means the shell (of a sea
creature) of the kind used by the plaintiffs’ logo. It also has several other meanings, such as – an
empty covering or cover; an outer layer with something inside (as in an eggshell); it also
signifies an explosive or firearm shell. If one takes these factors into consideration, there is no
doubt that SHELL, though not a descriptive word, in respect of the goods or services offered by
the plaintiffs, is a common word. The plaintiffs, as stated earlier, are well known for products in
the petroleum, oil and allied fields. The seventh issue is answered accordingly; there is no
genericness of SHELL, in relation to petroleum products. However, it is also undoubtedly a
common dictionary word.
Issue Nos. 2,3, 5 & 6
19. The facts of this case show that the defendant’s use of SHELL, is confined to its
corporate name. It does not participate or engage in petroleum or allied business. It claims to
have been using the SHELL word in its corporate name, since 1993; it relies on certificates
issued by government and trade bodies, evidencing use since at least 2000. The defendant also
does not offer any goods or services; it is a purely export oriented firm, which manufactures
covers or “shells” of quilts/ sheets, which are then filled with stuffing. These products are,
according to its averments and materials on record, exported. The defendant firm is situated in
CS(OS) No.639/2008 Page 9
Kandla. The plaintiff has not controverted these facts, through any pleadings, or evidence. It has
also not placed any material to show that the defendants are using their trademark SHELL, on
their (the defendant’s) products.
20. The suit and the evidence led on behalf of the plaintiffs shows that they own a large
number of trademark registrations, in various classes. These include Class 24 (Textiles and
textile goods, not included in other classes; bed and table covers) with effect from 2003. Yet, the
plaintiff has not disclosed whether it is engaged in any textile goods manufacture or trade, or
deals in bed and table covers, which is the only commercial activity of the defendant. The
materials on record also suggest that the defendant has been using the mark since at least 2000, if
not earlier. These, in the opinion of the Court show that the defendant has been using the mark in
relation to its corporate or trade name, much before the plaintiffs, as regards the textile and
bedcovers trade.
21. Section 29 (5) of the Trademarks Act has enacted the standard for a new species of
infringement, i.e. trade-name infringement. It reads as follows:
“(5) A registered trade mark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his business concern dealing in goods or
services in respect of which the trade- mark is registered.”
Significantly, unlike trademark infringement in relation to similar goods, where the marks are
similar or identical, where Parliament has mandated a presumption (of infringement) there is no
such presumption in case of trade name similarity.
22. Sona Spices Pvt Ltd. v. Soongachi Tea Industries Pvt. Ltd., 2007 (34) PTC 91 (Del) and
First Computers v. A. Guruprasad, 1996 PTC (16) 27 (Mad) (DB) are authorities on the question
of use by the alleged infringer, of the mark, before the plaintiffs’ mark was registered. In Sona
Spices , the Plaintiff was prior registered owner of trademark Sona and was using the same for
spices and was a recent entrant in tea business. The Defendant was using the same brand name
for tea for around 30 years and was also a registered owner of the same brand name. This Court
rejected the Plaintiff's application for interim injunction on the ground that the Defendant was a
prior user of the mark Sona , in respect of tea business and the Plaintiff failed to prove any
CS(OS) No.639/2008 Page 10
established business in respect of tea. In First Computers , the Plaintiff was trading in computers.
The Defendant neither manufactured, nor a sold computers; he used to train people in the use of
computers. In such circumstances where the likely customers were also educated people, the
Division Bench of Madras High Court did not find any ground to grant interim relief to the
Plaintiff. In Britannia Industries Ltd. v. Cremica Agro Food Ltd., 2008 (38) PTC 89 (Del) the
Plaintiff was using the trademark GREETINGS in relation to biscuits, cakes and bakery products
whereas the Defendant's products were a combination of assorted biscuits. This Court refused to
grant interim injunction and did not find it to be a prima facie case of interim relief to the
Plaintiff. In Harrods Ltd. v. Harrodian School Ltd., [1996] RPC 697, the question was whether
the use by the Defendant of their name (Harrodian School) would lead to confusion among the
public that they were misrepresenting themselves as being connected with the Plaintiff (Harrods
Ltd). The injunction was refused for lack of evidence of actual deception and confusion. Millet
LJ., observed:
“If any confusion really did exist then, given the time which elapsed between the
publication of the brochure, the opening of the school, and the trial, I would have
expected the plaintiffs to be in a position to call evidence that some of their huge number
of customers had asked for a brochure for the school or had enquired whether the store
supplied uniforms for the school, or had otherwise manifested their impression that the
school was connected with the store. No such evidence was called..”
23. The plaintiffs have been unable to show from the record any evidence of their use of the
SHELL mark in relation to textiles or products of the kind, the defendant deals in. They have
also not shown that the defendant uses the mark, in relation to any products sold, or offered in
the market. All indications are that the trade-name is used only for export; the defendant does not
use any mark for its products, at least not SHELL. The defendant’s use, on the other hand, is
descriptive, vis-à-vis the textile articles which are “shell” goods, without stuffing.
24. Cases of infringement no doubt, do not depend on proof of actual deception. Yet the
entire object of trademark law would be rendered meaningless if courts were to mechanically
grant injunctive relief, where no injury is shown, or shown to be a natural result of someone’s
use of a mark. The object of trademark law is to prevent conduct by a trader or producer, which
is calculated to injure the business or goodwill of another trader (in the sense that this is a
CS(OS) No.639/2008 Page 11
reasonably foreseeable consequence). This is more so, where generic terms, or common words
are used for trademark; this also applies where the words describe the goods, or services, or some
of their prominent attributes. The need to show some element of use or goodwill, in the mark, for
the goods or services, cannot be lost sight of; in Perkins v. Shone, 2004 EWHC 2249 (Ch D) this
was emphasized as follows:
“Commercially goodwill is recognised as a form of property, and transactions in
goodwill occur constantly in all areas of business. The law also recognises that goodwill
exists, and affords it a measure of protection through the law of passing off. However, the
degree of legal protection is not as extensive as the factual and commercial content of
goodwill. To some extent that is necessarily so given the factors which make up the
goodwill of a business or of a particular line of business. The essence of goodwill has
been encapsulated judicially in Lord Macnaghten's expression 'the attractive force which
brings in custom': IRC v. Muller [1901] AC 217 at 223. To a large measure it lies in the
de facto expectation that an established line of business will continue: that the customers
will carry on purchasing the goods or services and that the suppliers will carry on
providing the supplies which enable the goods or services to be provided. But those are
not matters which can be given legal protection as some species of property right. The
goodwill value of a business can be reinforced by making long term contracts with
customers or suppliers, but goodwill can exist and can have a significant value even in
the absence of long term contracts. In such cases it exists as a commercial reality
although major elements of it do not and cannot receive legal protection.”
Recently, a Division Bench, in Rhizome Distilleries Pvt. Ltd. & Ors. v. Pernod Ricard S.A.
France & Ors.[FAO (OS) 484/2008 & C.M. Nos. 17352/2008 & 3429/2009, decided on
23.10.2009 by Vikramajit Sen, J and V.K. Jain, J] stated the applicable principles, where rival
marks are common or dictionary words or common to the trade, in the following manner:
“We are reminded of the decision of the Court of Appeal in McCain International
Limited v. Country Fair Foods Limited 1982 PTC 156. The learned Single Judge had
granted interlocutory relief in a passing off action. The Plaintiff avowedly was the first to
launch 'chipped potatoes' in the market which rather than being fried could be baked in
the oven or cooked in a grill. The competing brands were 'McCain Oven Chips' and
'Country Fair Oven Chips'. The Court of Appeal was of the opinion that the case was
similar to the term 'Flaked Oatmeal" in Parsons v. Gillespie 1898 AC 239 which was
seen as descriptive' Reference was also made to the use of the word "slip-on" which was
also found to be descriptive; or Hedley's Malted Milk as against Horlicks Malted Milk.
We think it noteworthy that it was reiterated that it was essential for a trader to add a
prefix or suffix, preferably showing origins in order to get any protection in respect of a
word which is descriptive. Reference was also made to Office Cleaning Service Ltd. v.
Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 where the rivals were
using "Office Cleaning Services" and "Office Cleaning Association". The opinion was
CS(OS) No.639/2008 Page 12
that where a fancy word has been chosen as a part of the name and if another trader
adopts that fancy name that may be seen as inviting confusion. Keeping all these
precedents in view, the Court of Appeal concluded that the use of the word 'Oven Chips'
was descriptive and the prefix of 'McCain', 'Country Fair' or 'Birds Eye' were sufficient
to distinguish the products. We are not faced with the employment of descriptive words
but the underlying rationale is apposite, namely, that if words of common parlance are
used, exclusivity cannot be claimed…”
25. This Court is of opinion that the use of SHELL as corporate name by the defendant,
notwithstanding the plaintiffs’ registration of the word mark, cannot ipso facto confer
exclusivity. The plaintiffs should use it in relation to specific goods, such as garments, etc; then
alone would there exist some justification in granting relief. Trademark law, it must be
remembered, is not mechanical application of abstract principles, after a ritualistic incantation of
standard terms. It strives to protect businesses built up to match certain standards. If a trader or
manufacturer uses words that acquire some distinctiveness, he is undoubtedly entitled to
protection, at least in respect of similar marks, in respect of the goods he deals in. However,
merely because he acquires registration (of the mark) he does not become its exclusive owner.
SHELL conjures up images of the Shell device; even its petroleum products. But nothing on
record suggests that it associates with export of shell bedcovers; the plaintiffs do not deal in such
goods, nor were to be shown as dealing in them, in respect of the domestic or export market. The
defendant, on the other hand, has shown to have been using it for over one decade. In these
circumstances, the Court holds that the plaintiffs are not entitled to the reliefs of injunction and
damages.
26. For the above reasons, the plaintiffs have not been able to prove their case, for any of the
reliefs claimed. The suit, therefore, has to fail. It is dismissed with costs; counsel’s fee is
quantified at Rs. 50,000/-
February 01, 2010 (S.RAVINDRA BHAT)
JUDGE
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