The Bombay High Court recently granted an interim injunction in favour of Petrofer Chemie H.R. Fischer GmbH & Co. KG (“Plaintiff”) in its trademark infringement and passing-off action against United Petrofer Limited (“Defendant”). The order restrains the Defendant from using the mark “UNITED PETROFER,” its corporate name, and the domain unitedpetrofer.com, or any other mark deceptively similar to PETROFER, pending final disposal of the suit. This article discusses the contentions raised by the parties and the order passed by the Court.

Background

The Plaintiffs

The First Plaintiff, a German company established in 1948, manufactures industrial oils, lubricants, greases, chemicals, hydraulic fluids and metalworking compounds. It has continuously and extensively used the trademark PETROFER since inception. The mark is registered in India in Classes 1, 2, 3, and 4 since 1997 and the domain petrofer.com was secured in 1999. The PETROFER mark is also registered in numerous other jurisdictions.

The Second Plaintiff, incorporated in 2004 as HHIL Lubricants Pvt. Ltd., entered into an exclusive, perpetual licence agreement with the First Plaintiff in January 2005, authorising it to use all of Petrofer’s IP including trademarks, trade names, and know-how within India. It later changed its name to Hardcastle Petrofer Private Limited, and the IP licence was reaffirmed through a 2021 agreement.

The Defendant

United Petrofer Limited was incorporated in July 2016. In 2019, the Plaintiffs approached the Regional Director (Ministry of Corporate Affairs) seeking a change of the Defendant’s corporate name. By order dated 18 September 2019, the Regional Director held the Defendant’s name objectionable and ordered a change within six months. The Defendant subsequently filed rectification petitions before the Trademarks Registry in June 2020.

The Plaintiffs alleged that the Defendant’s adoption of PETROFER an identical mark for identical or similar goods amounted to infringement and passing off.

Plaintiffs’ Contentions

The Plaintiffs submitted that:

1. The Defendant’s use of UNITED PETROFER for identical/similar goods created a likelihood of confusion and constituted trademark infringement.
2. The Second Plaintiff’s minor purchases from the Defendant in 2017–2018 were insignificant, made without senior management’s knowledge, and did not amount to acquiescence.
3. The Defendant’s adoption of PETROFER was dishonest, especially since its directors declared before the Registrar of Companies that “United Petrofer” was not similar to any registered trademark a statement the Plaintiffs alleged was knowingly false.
4. The Defendant took inconsistent stands on the origin of the term PETROFER, further evidencing mala fides.
5. The addition of the word “United” did nothing to mitigate the likelihood of confusion; the core mark PETROFER remained identical.
6. The Plaintiffs had a strong prima facie case, and injunctive relief was warranted.

Defendant’s Contentions

The Defendant opposed the injunction on several grounds:

1. Its goods, additives and base oils differed from the Plaintiffs’ finished lubricants, meaning the goods were neither identical nor similar.
2. It used United Petrofer only as a trade name, not as a trademark, and therefore could not be liable for infringement.
3. As it was only adopting a corporate name, it was not required to conduct a trademark search in the Registry.
4. The Plaintiffs could not assert a monopoly over PETROFER merely because both parties’ products fell within the same trademark class.
5. The Defendant sold goods under its own registered trademarks, clearly displayed on packaging; the corporate name United Petrofer Ltd. merely identified the manufacturer and did not function as a trademark.
6. The Plaintiffs had acquiesced to the Defendant’s business activities since 2017 and were therefore barred from seeking injunctive relief.
7. The balance of convenience favoured the Defendant, given its business expansion over several years.

Court’s Analysis and Findings

The Court rejected the Defendant’s objections and held in favour of the Plaintiffs, finding as follows:

• Strong Prima Facie Case

The Defendant’s assertion that its goods differed from the Plaintiffs was contradicted by its own documents. The Defendant had publicly described itself as a lubricant manufacturer, and its objects clause referenced dealing in lubricants and chemicals, goods falling squarely within the Plaintiffs’ registered classes. Therefore, the Defendant’s contention that the goods were dissimilar was untenable.

• No Acquiescence

The Court accepted the Plaintiffs’ explanation that the Second Plaintiff’s limited raw material purchases in 2017 were routine and without senior management’s knowledge. More importantly, the Plaintiffs had actively contested the Defendant’s name before the Regional Director, successfully securing an order directing a name change. This conduct negated any allegation of acquiescence.

• Use as a Trademark

The Defendant’s denial that it used UNITED PETROFER as a trademark was rejected. The Plaintiffs produced website extracts, product catalogues, Indiamart listings, and the domain unitedpetrofer.com, all showing prominent use of UNITED PETROFER as a source identifier. Search results for “PETROFER” also linked both parties, reinforcing the likelihood of confusion.

• Dishonest Adoption

The Court noted the Defendant’s false declaration before the ROC stating that its proposed name did not resemble any registered trademark. This contradicted its argument that no trademark search was required and further suggested dishonest adoption.

• Goods and Trademark Classification

As the Defendant’s rectification petitions had already been dismissed, it could no longer challenge the Plaintiffs’ classification or validity of the PETROFER registrations. Given the overlap in goods, the Plaintiffs had demonstrated a strong case of infringement.

• Balance of Convenience and Irreparable Harm

The Court held that the balance of convenience lay in favour of the Plaintiffs and that continued use of PETROFER by the Defendant could cause irreparable harm through confusion and dilution.

In light of the above findings the High Court granted an interim injunction restraining the Defendant from using the mark PETROFER, including as part of its corporate name and domain, until final disposal of the suit.

Comment

This decision reinforces the judiciary’s stance that dishonest adoption of an identical or deceptively similar mark particularly for overlapping goods will not be countenanced, even when cloaked as a corporate name.