VGP IPCO LLC & ANR. V. SURESH KUMAR TRADING AS OM SHIV LUBRICANTS & ORS CS(COMM) 821/2024:

DATE: 22/08/2025

COURT: High Court of Delhi

BENCH: Justice Manmeet Pritam Singh Arora

FACTS:

The plaintiffs, Valvoline Licensing and Intellectual Property LLC (Plaintiff No. 1, a Delaware corporation) and Valvoline Cummins Pvt. Ltd. (Plaintiff No. 2, an Indian joint venture), sought a permanent injunction against the defendants for infringing their registered trademarks, copyright, and trade dress. Valvoline, established in 1866, is a globally recognized lubricant brand with operations in over 150 countries, including India, where it has generated significant revenue (₹2150.25 crores in FY 2022–23). The plaintiffs own registrations for the word mark “VALVOLINE” dating back to 1942 and the device mark registered in 1994, both widely recognized in the automotive lubricant market.

In August 2024, the plaintiffs discovered that the defendants were manufacturing and selling engine oils using deceptively similar marks “VIVOLINE” along with copied trade dress, packaging, and overall product layout. Defendant No. 1 was identified as the manufacturer, while Defendants Nos. 2–4 acted as wholesalers and resellers, including through platforms such as IndiaMart and Facebook. Despite being served with summons, Defendants Nos. 1, 2, and 4 failed to file written statements or appear before the court, while Defendant No. 3 expressed willingness to suffer an injunction. An ad-interim injunction was granted earlier, and the plaintiffs pressed for a permanent injunction under Order VIII Rule 10 CPC, as no defence was put forth by the defendants.

ISSUES:

The central issue before the court was whether the defendants’ use of the marks “VIVOLINE” and similar packaging/trade dress for engine oils amounted to trademark infringement, passing off, and unfair competition against the plaintiffs’ well-established and registered trademarks “VALVOLINE” and its formatives, thereby justifying the grant of a permanent injunction.

JUDGEMENT WITH REASONING:

The Delhi High Court decreed the suit in favour of the plaintiffs, granting a permanent injunction restraining the defendants from using the impugned marks “VIVOLINE” or any deceptively similar marks, packaging, or trade dress. The interim order dated 22.10.2024 merged into the decree, and the court directed the Trademark Registry to expedite Defendant No. 1’s withdrawal application for the impugned mark.

The Court reasoned that the plaintiffs had placed on record ample documentary evidence demonstrating their long-standing statutory rights, goodwill, and reputation in the trademark VALVOLINE, both internationally and in India. Their earliest registration in India dated back to 1942 with user claims from 1895, while the device mark was registered in 1994. The plaintiffs also substantiated their market presence and credibility through substantial sales figures and their recognition in more than 150 countries. On comparing the competing marks and packaging, the Court noted striking similarities both phonetically and visually, between “VALVOLINE” and “VIVOLINE,” as well as imitation of trade dress and overall get-up. These similarities, in the Court’s view, were bound to mislead consumers into believing that the defendants’ goods were associated with or originated from the plaintiffs.

Further, the Court held that the defendants’ conduct of failing to file written statements, despite service of summons, and their willingness in one case (Defendant No. 3) to suffer an injunction, implied the absence of any valid defence. The defendants’ adoption of the mark “VIVOLINE” was found not to be honest, given the plaintiffs’ established reputation and wide market presence. The unrebutted averments in the plaint, supported by affidavits and documents, sufficed under Order VIII Rule 10 CPC to decree the suit without requiring ex parte evidence. The Court emphasized that the defendants’ actions amounted to unfair competition and deliberate infringement intended to trade upon the goodwill of the plaintiffs. Consequently, the plaintiffs were held entitled to a permanent injunction to protect their trademark rights and market reputation.

ANALYSIS:

This case highlights the judiciary’s consistent approach in safeguarding the rights of proprietors of well-established trademarks against deceptive imitation. The Court reaffirmed that in cases of long-standing and reputed marks like VALVOLINE, even minor variations, such as VIVOLINE, which are phonetically and visually similar, cannot be allowed, especially when used for identical goods like lubricants. By invoking Order VIII Rule 10 CPC, the Court underscored that when defendants fail to file a written statement or contest the allegations, the plaint’s averments, supported by documentary proof, can be treated as admitted, thereby avoiding unnecessary trial. This reflects a pragmatic approach in trademark infringement suits where delay or absence of defence may otherwise allow continued market confusion.

Additionally, the judgment demonstrates the Court’s emphasis on protecting not only registered trademarks but also associated trade dress, packaging, and get-up, recognizing their role in consumer association and brand identity. By restraining the defendants from using the impugned marks and directing the Trademark Registry to expedite the withdrawal of Defendant No. 1’s application, the Court provided both immediate relief and long-term protection to the plaintiffs. The case also reiterates that dishonest adoption of deceptively similar marks in the same industry is presumed to be intended to ride on the goodwill of established brands, amounting to unfair competition. Thus, the ruling strengthens the jurisprudence that brand reputation, consumer trust, and market fairness outweigh any purported justification by infringers.