Delhi High Court Restores Castrol's Disparagement Suit Against 3P Mark Owner, Says Claims Not Barred By Earlier Suit

The Delhi High Court has restored Castrol's suit alleging disparagement against the proprietor of the “3P” mark, Sanjay Sonavane, along with media entities holding that it was not barred by law as it was based on a different set of facts from an earlier case on trademark threats.

A bench of Justices C. Hari Shankar and Om Prakash Shukla said the two cases, though linked to the same dispute, were legally distinct.

“That the suits may have emanated from a bouquet of similar, or even interconnected facts – it cannot even be said that they arose from the same facts – would not make a difference to the fact that the causes of action in the suits were distinct and different.”

Castrol had first approached the court against Sanjay Sonavane and his company after he accused it of infringing his “3P” mark and issued a public notice, followed by a police raid at the premises of its distributor in Nashik based on his complaint.

In that case, Castrol sought a declaration that its “3X Protection” mark did not infringe Sonavane's rights and asked the court to restrain him from making such threats.

The company said large quantities of its original products were seized during the raid and that the action, along with the public notice, created a real threat of civil and criminal proceedings against it.

Later, Castrol filed a second case against Sonavane, Daily Bhramar, Maharashtra Bulletin, Saksham Times Media Foundation, and Google LLC, alleging that media reports, YouTube videos and their circulation, including on WhatsApp groups, painted a misleading picture of the raid and suggested wrongdoing on its part, thereby harming its reputation. It sought removal of the content, restraint on further publication, and damages.

A single judge had dismissed the second case, holding that Castrol was aware of the media coverage when it filed the first case and ought to have included all its claims there instead of filing a fresh case.

Setting aside this finding, the Division Bench held that the first case was confined to alleged groundless threats of trademark and copyright infringement, whereas the second case arose from acts of publication and circulation that allegedly disparaged Castrol's business.

“There is, therefore, hardly any overlap between the evidence which Castrol would have to lead in order to succeed in the first suit and that which it would have to lead to succeed in the second. Even on this touchstone, therefore, the causes of action in the two suits are markedly distinct and different..”

The court said that although both cases were triggered by related events such as the raid, the later publication of news reports and videos, and their circulation on social media, gave rise to a separate and independent cause of action.

It also noted that the media organisations named in the second case were not parties to the first case and had no role in the cause of action underlying it. Clubbing these claims in one case would have mixed up distinct issues.

Rejecting the view that Castrol was required to amend the first case to include later developments, the bench held that a fresh case based on a different cause of action was maintainable.

The court accordingly set aside the earlier order and restored Castrol's disparagement suit for further hearing.

For Appellant: Advocates Urfee Roomi, Janaki Arun, Anuja Chaudhary, and Arpit Singhal.

For Respondents: Advocates Adarsh Ramanujan, Parth Singh, Gaurav Sharma, and Madhav Anand for R-1; Advocate Anuparna Chatterjee for R-5.