Delhi High Court
Caterpillar Inc. vs Suresh Dua & Ors. on 20 March, 2014
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 20th March, 2014.
+ CS(OS) 9/2011
CATERPILLAR INC. ..... Plaintiff
Through: Mr. Sanjay Jain, Sr. Adv. with Mrs.
Priya Rao, Ms. Ruchi Jain, Ms. Astha
Jain and Ms. Noor Ahmed, Advs.
Versus
SURESH DUA & ORS. ..... Defendants
Through: None.
CORAM:-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The suit had been instituted by the plaintiff for permanent injunction
restraining the seven defendants from manufacturing and selling counterfeit
footwear in violation of the plaintiff's statutory and common law rights and
for other ancillary reliefs of delivery-up, rendition of accounts and damages,
pleading:
(i) that the plaintiff is a corporation organized and existing under
the laws of the State of Delaware, United States of America
and the exclusive proprietor of the trade marks
CATERPILLAR, CATERPILLAR logo, CAT and CAT logo
with respect to which it has secured registrations or has
pending applications in over 100 countries all over the world;
CS(OS) No.9/2011 Page 1 of 7
(ii) that the plaintiff has several registrations in India as well for
the trade marks CATERPILLAR logo and CAT logo under
several classes and more particularly under class 25, in relation
to footwear;
(iii) that there is a substantial recognition of the said trade marks as
being distinctive of the plaintiff's goods and they have come to
acquire the status of well-known trade marks;
(iv) that the plaintiff sometime in the month of October 2010, learnt
of counterfeit footwear being sold by the defendants and upon
initiation of investigation it was revealed that defendant no. 4
Anil Kumar and defendant no. 5 Shyam Prakash were
manufacturing the counterfeit footwear and supplying the same
to defendant defendant no. 1 Suresh Dua and defendant no. 2
Sunny Gulla - who were the wholesale distributors of the
counterfeit footwear in Delhi, along with defendant no. 3 who
was the retailer of the said counterfeit footwear in Delhi, as
well as defendant no. 6 M/s Kempford Shoes and defendant no.
7 Rais Ahmed who were found to be the wholesale distributors
of the counterfeit footwear in Agra;
CS(OS) No.9/2011 Page 2 of 7
(v) that since the aforesaid trade marks found upon the footwear
being manufactured and sold by the defendants are universally
identified and associated in the public mind with the products
and business of the plaintiff alone, the adoption by the
defendants of the same is actuated with mala fide intention to
misappropriate the plaintiff's reputation/goodwill and
constitutes infringement and dilution of the plaintiff's
registered trade marks as well as passing off of the defendants'
goods as that of the plaintiff's.
2. This Court issued summons in the suit to the defendants on
04.01.2011 and vide order of the same date granted an ex-parte ad-interim
injunction in favor of the plaintiffs. This Court, at the request of the
plaintiff, also appointed seven Local Commissioners to inspect the
respective premises of the defendants. The Local Commissioners, in
compliance of the orders of this Court, have submitted their reports.
3. The claims in the suit were subsequently settled with defendants no.
1, 3, 4, 5, 6 and 7 and decrees drawn as per separate compromise
applications filed by the respective parties before this Court in that regard.
This Court thereafter upon being satisfied of due service to defendant no. 2,
CS(OS) No.9/2011 Page 3 of 7
the lone surviving defendant in the suit, vide order dated 18.04.2012
proceed ex-parte against the defendant No.2 and directed the plaintiff to file
its affidavit by way of ex-parte evidence.
4. Accordingly, the plaintiff has filed the affidavit of Mr. James B.
Buda, Senior Vice President and Chief Legal Officer of the plaintiff, and
tendered, inter-alia, the following documents in evidence:
(i) True Copies of the certificates of registration of trade marks
CATERPILLAR logo and CAT logo, exhibited as PW1/7 and
PW1/8 respectively;
(ii) Affidavit of Mr. Pankaj Gupta, Independent Investigator
appointed by the plaintiff prior to filing of the suit along with
photographs corroborating the averments made in the plaint,
exhibited as PW1/13 to PW1/16;
(iii) Affidavit of Mr. Kishore Kumar, Independent Investigator
appointed by the plaintiff subsequent to the ex-parte ad-interim
injunction order passed by this Court, to prove violation thereof
by the defendant no. 2 by continuing to offer the counterfeit
footwear for sale, and exhibited as PW1/18; and
CS(OS) No.9/2011 Page 4 of 7
(iv) Notary Report evidencing the purchase by Mr. Kishore Kumar,
Independent Investigator of the counterfeit footwear sold by
defendant no. 2 in defiance of the ex-parte ad-interim
injunction order, exhibited as PW1/19.
5. The Local Commissioner appointed by this Court to inspect the
premises of defendant no. 2 has also reported discovery of "39 pairs of
CAT/CATERPILLAR shoes and 6 individual pieces of
CAT/CATERPILLAR shoes". The photographs enclosed with the Report
also reveal near identity of the mark affixed on the footwear sold by the
defendant no. 2 with the registered trade marks of the plaintiff.
6. In light of the unrebutted averments in the plaint, cogent evidence on
record and the clinching report filed by the Local Commissioner, I have no
hesitation in holding that the defendant no. 2 is guilty of blatant
infringement of the plaintiff's registered trade marks as well as of passing
off his own goods as that of the plaintiff's. Accordingly, a decree of
permanent injunction restraining the defendant no. 2 from using marks upon
its goods which are identical or deceptively similar to the trade marks of the
plaintiffs, as well as of delivery-up to the plaintiff of all infringing materials
in possession of defendant no. 2, is passed forthwith.
CS(OS) No.9/2011 Page 5 of 7
7. The plaintiff has also pressed for damages and placed reliance for the
said purpose on the judgments of this Court in Time Incorporated Vs.
Lokesh Srivastava 116 (2005) DLT 599, Malhotra Book Depot Vs. Mata
Basanti Devi School of Biosciences & Biotechnology 195 (2012) DLT 514
and Kee Pharma Ltd Vs. Big M Healthcare 189 (2012) DLT 644.
8. In my opinion, the flagrant violation by the defendant no. 2 of the
intellectual property rights of the plaintiff warrants award of damages. It
cannot be lost sight of that the while the other defendants had entered
appearance and have willfully suffered decrees against them, the defendant
no. 2 has chosen not to appear and which has led to wastage of time, money
and resources of the parties as well as this Court. Lastly, it must be noted
that IA 20123/2011 under Order 39 Rule 2A of the CPC filed by the
plaintiff upon finding the defendant no. 2 to be in violation of the ex-parte
ad-interim injunction order of this Court and in which notice was issued
vide order dated 19.12.2011, is also pending before this Court. The
documents filed along with the application, being the Report of the
Independent Investigator as well as the Notary Report, exhibited in evidence
as PW1/18 and PW1/19 supra, certainly suggest the factum of violation of
Court's orders by the defendant no. 2. Though I do not deem it appropriate
CS(OS) No.9/2011 Page 6 of 7
to pass any further orders on the contempt application of the plaintiff in light
of the reliefs already granted above, I have considered the same to be a
relevant factor in deciding the entitlement and quantum of damages.
9. Accordingly, a decree for recovery of punitive damages is also passed
in favor of the plaintiffs for a sum of Rs. 1,50,000. The suit is decreed in
favor of the plaintiff and against the defendant no. 2 in the aforesaid terms
along with costs. Counsel's fees assessed at Rs. 20,000.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
MARCH 20, 2014.
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