3M Company vs Mr A. Patel & Orthers
2009 Latest Caselaw 97 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                  CS(OS) 1771/2006

%15.01.2009                      Date of decision:15.01.2009

3M COMPANY                                              ....     Plaintiff
                      Through: Mr Pravin Anand, Mr Nishant Bora and
                               Mr Shantanu Sahay, Advocates.

                               Versus

MR A. PATEL & ORTHERS                                 ..... Defendants
                     Through: Ex parte.


CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.    Whether reporters of Local papers may No
      be allowed to see the judgment?

2.    To be referred to the reporter or not?     No

3.    Whether the judgment should be reported No
      in the Digest?


RAJIV SAHAI ENDLAW, J.

1. The plaintiff, a company incorporated under the laws of

United States of America, has instituted this suit for permanent

injunction restraining the defendants from manufacturing, selling,

advertising or dealing in stationery items and similar goods bearing

the trademark 3M and/or POST-IT and/or POST-IT logo or any other

trademark or logo deceptively similar thereto.

2. The plaintiff, as a proprietor of the said mark, claims

infringement and has also sued for injunction against passing off.

Ancillary reliefs of delivery, rendition of accounts, recovery of

damages and costs have also been prayed.

3. The suit was instituted against Mr Ashok Patel as proprietor of

M/s Standard Xerox and Stationers as defendant no.1, against M/s

Sundaram Marketing through its partners Mr Lakhan Patel and Mr

Valji Patel as defendant No.2 and against Mr Ashok Kumars as

defendants No. 3 to 5 on the John Doe principle, held applicable to

India. However, during the pendency of the suit, none else was

brought on record, hence, the suit is treated as against defendants

No. 1 and 2 only.

4. Vide ex parte order dated 14th September, 2006, the

defendants were restrained from manufacturing or selling or dealing

in counterfeit /infringing stationery items and similar goods bearing

the trademark/trade name 3M and/or the trademark POST-IT and/or

the POST-IT logo and/or any other deceptively similar trademark or

logo. On application of the plaintiff, Court Commissioners were also

appointed to visit the premises of the defendants No. 1 and 2 and to

make an inventory and seize all the products bearing the

trademark/trade name 3M, POST-IT etc. The Commissions have

been executed.

5. None appeared for the defendants in spite of service. Vide

order dated 22nd November, 2006 the defendants were ordered to be

proceeded against ex parte and the interim order was made absolute

during the pendency of the suit. However, thereafter on 7th

February, 2007, 10th May, 2007, 6th July, 2007, 18th July, 2007 and 6th

December, 2007 the counsel for the defendants appeared. IAs 7914-

7917/2007 were also filed by both the defendants. The defendants

along with the said applications also filed their written statements.

The applications were for setting aside the ex parte order,

condonation of delay in filing the written statements and for setting

aside of the order making the ex parte order absolute during the

pendency of the suit. However, the defendants again stopped

appearing and the said applications were dismissed for non

prosecution on 30th May,2008 and the plaintiff directed to lead its ex

parte evidence. The defendants remain ex parte. The plaintiff has

filed affidavits by way of examination in chief of its constituted

attorney Ms Sadhna Kaul and of Mr. Sanjeev Sharma, Chartered

Accountant.

6. It is the case of the plaintiff and in evidence that the plaintiff is

the registered proprietor of the trademark/trade name 3M and

trademark POST-IT in India in respect of sheet material, paper etc.

The said registrations have been proved as Exhibit P3 to Exhibit P8.

The plaintiff claims similar registrations in USA and UK also. The

defendants were found by the plaintiff to be engaged in the business

of marketing and selling stationery items and were further found to

be selling counterfeit stationery items bearing the plaintiff's

trademark and trade name 3M and POST-IT. An independent

investigator Ms Vaishali on behalf of the plaintiff made purchases

from the defendants of the said material and which was found to be

counterfeit; the same was offered for sale at much lower price than

the goods of the plaintiff. Even though the said independent

investigator Ms Vaishali has not been examined but I find the

deposition of the constituted attorney of the plaintiff to be believable.

The said witness of the plaintiff has also deposed as to the

differences between the original and the counterfeit. The suit was

filed to prevent such sale of counterfeit goods of the plaintiff.

7. The said actions of defendant definitely amount to

infringement of the registered trademark/trade name of the plaintiff.

The written statement of the defendants, although not taken on

record, is of bare denial. As aforesaid, the commissions ordered by

this court were executed and the commissioners have filed their

report. The commissioners deputed to visit the premises of the

defendants have reported seizure of counterfeit goods of the

plaintiff. The defendants have, in their written

statements/applications as aforesaid filed, even though not pursued,

not given any explanation whatsoever as to the seizure of counterfeit

goods from their premises. In fact, it was, inter alia, the case of the

defendants that they were willing to suffer a decree for injunction as

claimed by the plaintiff and the plaintiff had agreed to give up its

claim for delivery and damages against the defendants.

8. In the circumstances aforesaid, the plaintiff has become

entitled to a decree for injunction. No purpose would be served in

ordering rendition of accounts against the defendants inasmuch as

trader's dealing in counterfeit goods are not known to keep accounts

thereof. However, notwithstanding the defendants having not

contested the suit and there being no grievance of violation of

interim order of this court, following the principles laid down in

Microsoft Corporation v Yogesh Papat 2005 (30) PTC 245 (Del)

and in Time Incorporated v Lokesh Srivastava 2005 (30) PTC 3

(Del), and on the basis of conservative view of the deposition of Mr.

Sanjeev Sharma, witness of plaintiff, it would not be fair to let the

defendants go scot free. Punitive damages of Rs 2 lacs inclusive of

costs of the suit are decreed against each of the defendants 1 and 2.

There was no dispute that Mr Ashok Patel is the proprietor of M/s

Standard Xerox and Stationers and Mr Lakhan Patel and Mr Valji

Patel were the partners of M/s Sundaram Marketing. The punitive

damages would thus be recovered from them as aforesaid. The suit

of the plaintiff is thus decreed against the defendants 1 and 2 for the

relief of permanent injunction as claimed in para 32 (a) (b) and (c)

and for recovery of Rs 2 lacs from each of the defendants 1 and 2

inclusive of costs.

The decree sheet be drawn up accordingly.

RAJIV SAHAI ENDLAW (JUDGE) January 15, 2009 M