Hindustan Unilever Limited vs Naresh Arora & Ors
2013 Latest Caselaw 1844 Del

13
$~
*      IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(OS) 1190/2012

       HINDUSTAN UNILEVER LIMITED            ..... Plaintiff
                    Through: Mr. Sandeep Sethi, Senior Advocate
                             with Mr. Manish Dhir, Advocate.

                   versus

       NARESH ARORA & ORS                     ..... Defendants
                   Through: Mr. Arpit Batra, Advocate for
                            defendants No.1 and 3.
                            Mr. Mohan Vidhani, Advocate with
                            Mr. Rahul Vidhani, Advocate for
                            defendants No.2 and 4.

%                              Date of Decision: 25th April, 2013.

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                             JUDGMENT

MANMOHAN, J (Oral):

I.A. 2261/2013 in CS(OS) 1190/2012 Present application has been filed under Order 1 Rule 10(2) read with Section 151 CPC for deletion of defendants No.1 and 3.

It is stated that the defendants No.1 and 3/applicants are not carrying out any alleged activities as stated in the plaint. Learned counsel for defendants No.1 and 3/applicants states that they are property brokers and

are not involved in the business of manufacture of any product.

As admittedly, there are averments in the plaint against all the defendants including the applicants, this Court is of the view that they cannot be deleted at the present stage. However, at the time of framing of issues, an issue may be framed "Whether defendants No.1 and 3 are liable to be deleted in view of the averments in the written statement".

With the aforesaid observations, present application stands disposed of.

I.A. 13403/2012 in CS(OS) 1190/2012

1. Present application has been filed under Order 39 Rules 1 and 2 CPC seeking a restraint order against the defendants from manufacturing, selling, marketing, advertising, exporting or supplying caps and containers of plaintiff‟s Lifebuoy Talcum Powder and Vaseline.

2. Mr. Sandeep Sethi, learned senior counsel for plaintiff submits that the defendants are „contumacious infringers‟ inasmuch as defendants No. 1 to 4 despite giving an undertaking in an earlier suit being CS(OS) 789/2011 that they would not infringe the rights of the plaintiff by manufacturing or selling any product similar to plaintiff‟s products, are still indulging in infringement and passing off of registered designs of the plaintiff.

3. Mr. Sandeep Sethi states that when the present plaint was filed, the plaintiff had information only to the extent that the defendants were infringing its design with regard to cap of Pond‟s Talcum Powder. He further states that during the visit of Local Commissioner appointed by this Court it has now transpired that the defendants are infringing and passing off plaintiff‟s other designs as well. He has drawn this Court‟s attention to the Registration Certificate bearing No.190839 issued with respect to a design

of a container used by the plaintiff for its Lifebuoy Talcum Powder. Mr.Sandeep Sethi, learned senior counsel has also drawn this Court‟s attention to Registration Certificates bearing Nos. 217547 and 195705 with respect to design of containers with cover and cap used by the plaintiff to sell its Vaseline product.

4. Mr. Sandeep Sethi has also drawn this Court‟s attention to the Local Commissioner, Mr. Sunil Sethi, Advocate‟s report, wherein he has observed as under:-

"8. We then moved to the basement floor where caps and lids of bottles were being manufactured. In the basement, one big machines was in operation at that time and a die for caps similar to the shape of Vaseline bottle cap was installed. After showing the workers of Ponds CAP (with design registration) as provided by the representative of the plaintiff, the workers of the Defendants pulled out a die used for making the inner part of the registered CAP. The said die was marked as DYE-1 and its picture taken. At this floor more than fifty (50) dies and moulds of different shapes and sizes were found lying. All such dies were for making caps and lids only.

9. The first floor and roof of the building are being used for storage purposes. Numerous sacks of caps, lids and bottles bearing different shapes and sizes have been stored on the first floor. We found two sacks full of the bottles bearing the shape similar to the Pond's bottle but smaller in size (20 grams) on the roof. These sacks were seized and numbered as B-10 and B-

11. On asking Mr. Dayanand Kumar, we were informed that each of these sacks contained approximately 5000 bottles. In the staircase we found one sack with bottles bearing the shape similar to the Pond's bottle but smaller in size (20 grams). This sack was seized and numbered as B-12. On asking Mr. Dayanand Kumar, we were informed that each of these sacks contained approximately 2000 bottles.

xxx xxx xxx

11. That we also took pictures of the seized products including the dies and moulds used for manufacturing the infringing CAPS and bottles by the Defendants. The pictures taken at the premises of the Defendant are attached herewith as Annexure D (Colly).

12. In addition to the above, we also found various finished and unfinished bottles, caps and dies/moulds of other products of the Plaintiffs and other entities, namely Liquid Soaps, Vaselin, etc."

(emphasis supplied)

5. Mr. Sandeep Sethi, learned senior counsel for plaintiff has shown to this Court photograph at page 23 of the Local Commissioner‟s report to show that defendants have copied the plaintiff‟s design with regard to its Vaseline containers.

6. On the other hand, Mr. Mohan Vidhani, learned counsel for defendants No.2 and 4 states that the Local Commissioner had no mandate or authority to report this Court with regard to manufacture of bottle, caps, dies and moulds of defendants‟ products other than Ponds.

7. Mr. Vidhani, learned counsel further states that defendants are not manufacturing containers and caps which are used by the plaintiff to sell Lifebuoy Talcum Powder and Vaseline. He further states that the photograph at page 23 of Mr. Sunil Sethi-Local Commissioner‟ report was not taken at site and is not a product manufactured by the defendants. He has also shown the sample of the container that is being used by the defendants to sell their petroleum jelly products. Mr. Vidhani, learned counsel further points out that the plaintiff has disclaimed the colour scheme

and colour combination of its Vaseline container. He lastly submits that the plaintiff‟s Design Certificate No.190839 has already lapsed. The samples shown by Mr. Vidhani are taken on record.

8. In rejoinder, Mr. Sandeep Sethi, learned senior counsel for plaintiff states that the design registration with respect to Lifebuoy‟s container is still valid and subsisting. He undertakes to file a copy of the subsisting Registration Certificate within a period of one week.

9. Having heard learned counsel for the parties, this Court takes judicial notice of the fact that a Local Commissioner is accompanied by the officials of the plaintiff, who would naturally bring to his notice if other designs of the plaintiff are being infringed by the defendants.

10. This Court finds that the Local Commissioner has only reported the fact that various other bottles and caps of other products of the plaintiff are being infringed upon by the defendants. In the opinion of this Court, there is no bar in law in a Local Commissioner bringing such a fact to the notice of this Court. In the opinion of this Court, the defendants‟ arguments of lack of authority on the part of Local Commissioner is akin to an infringer clutching at straws, especially when he been found with his hand in the till.

11. This Court has perused the Local Commissioner‟s report and finds that on the spot proceedings were prepared by the Local Commissioner not only in the presence of a police official, but was also duly signed by a representative of the defendants. This Court is of the prima facie view that the Local Commissioners have carried out the commissions as per the direction of this Court.

12. Consequently, this Court is of the opinion that plaintiff is entitled at this prima facie stage to rely upon the report of the Local Commissioner.

13. This Court has examined the containers being used by the plaintiff and defendants for their Vaseline and Petroleum Jelly products respectively and is prima facie of the opinion that the intent of the defendants was to imitate plaintiff‟s registered designs. Moreover both the plaintiff‟s and defendants‟ products are sold on a shelf in a cosmetic shop and there is bound to be confusion and deception as any customer with imperfect recollection is likely to mistake the defendants‟ containers as plaintiff‟s.

14. Keeping in view the undertakings given by defendants No. 1 to 4 in earlier suit bearing No. 789/2011 as well as the fact that the Local Commissioner has not only mentioned about the defendants‟ infringement of other products of the plaintiff, but has also filed a photograph showing the cap of the container, which is being used by the plaintiff to manufacture its Lifebuoy Talcum Powder, this Court is of the view that an injunction must follow.

15. Consequently, till disposal of the suit defendants, their agents, servants, employees, Directors, partners, assigns, franchisees, distributors, proprietors are restrained directly or indirectly from manufacturing, selling, marketing, advertising, exporting and/or permitting the use of or supply to any third party CONTAINER or CONTAINER WITH COVER or CONTAINER WITH CAP singularly or on any product, which are substantial and colourable reproduction or imitation of the plaintiff‟s registered Designs vide Certificate Nos. 190839, 217547, 195705.

16. With the aforesaid observations, present application stands disposed of.

CS(OS) 1190/2012 & I.As. 4513-4514/2013 Mr. Mohan Vidhani, learned counsel for defendants No.2 and 4 states that defendant No.5 is not personally present in Court today as he is unwell.

Since this Court plans to examine all the defendants on the same day, let all the defendants be personally present in Court on 12 th September, 2013 for recording of their statement under Order 10 CPC.

MANMOHAN, J APRIL 25, 2013 js/rn