E.I. Du Pont De Nemours And Company ... vs P. Srinivasa Rao & Ors.
2018 Latest Caselaw 1226 Del

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(COMM) 401/2016

       E.I. DU PONT DE NEMOURS
       AND COMPANY & ANR                         ..... Plaintiffs
                       Through: Ms.Kripa Pandit with Mr.Dhruv
                                Nayar, Advocates.
                       versus

       P. SRINIVASA RAO & ORS.                        .....Defendants
                      Through: None


%                           Date of Decision: 21st February, 2018

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                         JUDGMENT

MANMOHAN, J: (Oral)

I.A.No.20699/2014

Present application has been filed by defendant no.8 under Order VII Rule 10 CPC along with I.A.No.21562/2014 under Order VII Rule 11 CPC.

Pursuant to defendant no.8's statement before this Court as recorded vide order dated 18th January, 2018, the present suit stands decreed against defendant no.8. Accordingly, the present application has become infructuous and it accordingly stands disposed of.

I.A.No.2178/2017

Present application has been filed by defendant no.1 under Order VII Rule 11 with Section 151 CPC.

Pursuant to the defendant no.1's statement as recorded vide order dated 18th January, 2018, the present suit also stands decreed against defendant no.1. Accordingly, the present application has become infructuous and it accordingly stands disposed of.

CS(COMM) 401/2016 & I.A. 16875/2013

1. Present suit has been filed for injunction, damages, trademark infringement and copyright infringement. The prayer clause in the present suit is reproduced hereinbelow:-

A. A decree of permanent injunction be passed restraining the Defendants, their partners, agents, distributors, franchisees, representatives and assigns from:

(i) Using the trade marks CORAGEN® and/or DuPont™ or any trade mark which is deceptively or confusingly similar to the Plaintiffs' registered trade marks CORAGEN® and/or DuPont™ in respect of any goods whatsoever as a trade mark or part of a trade mark, trade name or part of a trade name or in any other manner whatsoever;

(ii) manufacturing or authorizing the manufacture, selling or offering for sale, marketing, exporting, advertising, promoting, displaying or in any other manner whatsoever using the Plaintiffs' trade marks CORAGEN® and/or DUPONT™ or any trade mark which is deceptively or confusingly similar to the Plaintiffs' registered trade marks CORAGEN® and/or DUPONT™ in any other manner whatsoever;

(iii) Using the Plaintiffs' CORAGEN® packaging/label, a representation of which can be found in paragraph No. 4 or any other packaging/label which is substantial reproduction of the artistic work in and to the packaging/label of the Plaintiffs or any other manner infringing the copyright in the artistic work which vests with the Plaintiffs;

B. A decree of a mandatory injunction be passed thereby directing that the Defendant, their partners, employees, agents, distributors, franchisees, representatives and assigns to:

i) hand over to the Plaintiffs or their nominated representative all goods, packaging and promotional materials, catalogues, stationery and any other material whatsoever bearing the Plaintiffs' trade marks CORAGEN®, CORAGEN® Packaging and/or the trade mark DUPONT™ and/or any other trade marks deceptively or confusingly similar to the Plaintiffs' trade marks CORAGEN®, CORAGEN® Packaging and/or the trade mark DUPONT™;

ii) recall all the products, marketing, promotional and advertising materials bearing the Plaintiffs' trade marks CORAGEN®, CORAGEN® Packaging and/or the trade mark DUPONT™ and/or any other trade marks deceptively or confusingly similar to the Plaintiffs' trade marks CORAGEN®, CORAGEN® Packaging and/or the trade mark DUPONT™ which has been manufactured, distributed, sold by him and hand over to the representatives of the Plaintiffs;

iii) deliver to the Plaintiffs' attorneys or representatives for destruction all products, labels, signs, prints, packages, moulds, plates, dies, wrappers, receptacles and advertisements in its possession or under his control bearing the Plaintiffs' trade marks and/or copyrights and/or any other packaging/label/ marks

deceptively or confusingly similar to the Plaintiffs' trade marks and copyrights;

iv) to disclose on oath the exact constitution and details of the manufacturer involved in the manufacturing of counterfeit products under the name CORAGEN;

v) to disclose on oath the exact constitution and details of all such distributors/manufacturers/retailers involved in the manufacturing/distribution/marketing etc. of counterfeit products manufactured or sold under the name CORAGEN, as the case may be;

C. The defendants be required to render an account of all transactions concerning the offending activities set out in the plaint and the Plaintiffs be then given the option of choosing either award of damages (including penal damages) or accounts for profits for the amount found due;

D. Costs of the suit be awarded to the Plaintiffs; E. And other relief which the Hon'ble Court deems and proper in the facts and circumstances of the case be allowed in favour of the Plaintiffs and against the Defendants.

2. The present suit was filed by the plaintiffs against a total of eight defendants. On 08th January, 2014, this Court was pleased to pass an ex parte injunction thereby restraining the defendants from manufacturing, selling or offering for sale, marketing, exporting, advertising, promoting, displaying, packaging or in any other manner whatsoever using the plaintiffs' trademarks i.e. 'CORAGEN' and 'DUPONT' or any other trade mark which may be deceptively similar to the plaintiffs' trade mark.

3. The plaintiffs' application seeking appointment of Local Commissioners bearing I.A.No.16876/2013 under Order XXVI Rule 9 CPC was also allowed by this Court on 08th January, 2014, wherein four Local Commissioners were appointed to visit the premises of the defendant nos.1 to 8, without any notice to them and to make inventory of the goods containing the trademarks and packaging of the plaintiffs. Vide order dated 21st January, 2014, the Local Commissioner appointed for defendant no.7 was replaced and the Local Commissioner's inspection and seizure was carried out on 25 th January, 2014. However, no infringing goods were seized from the premises of defendant nos. 3 and 7.

4. Vide order dated 29th October, 2015, the suit was settled qua defendant nos. 2 and 4 and vide order dated 22 nd February, 2016, defendant nos. 5 and 6 were deleted. Furthermore, pursuant to the statements made by the defendant nos. 1 and 8, this Court, on 18 th January, 2018, decreed the present suit against the defendant nos. 1 and 8.

5. The suit now survives only against the defendant nos. 3 and 7. Since defendant nos. 3 and 7 did not file their written statement, despite service, their right to file written statement was closed vide orders dated 6th December, 2016 and 4th January, 2017 respectively. Since the right of defendant nos. 3 and 7, to file written statement already stood closed, this Court vide order dated 18th January, 2018, proceeded ex-parte against the defendant nos. 3 and 7.

6. At the outset, learned counsel for plaintiffs gives up prayers (B), (C) and (E) of the plaint qua the surviving defendants. The statement made by learned counsel for plaintiffs is accepted by this Court and plaintiffs are held bound by the same.

7. In the plaint, it is stated that plaintiff No.1 is a world renowned global company that employs more than 60,000 people world-wide having a diverse array of product offerings. It is further stated that, the plaintiffs' business was ranked as 66th in the Fortune 500 with nearly US$ 28 billion in revenues and US$ 1.8 billion in profits.

8. In the plaint, it is stated that plaintiff no.1 entered India in the year 1974 and after its success set up its wholly owned subsidiary in India, i.e. plaintiff No. 2. It is further stated that the sales and promotion expenses in India for all products/brands bearing the mark CORAGEN® since 2008 has been approx. US$ 3-4 million.

9. It is averred in the plaint that the plaintiff no.1 is the registered proprietor of its well-known brands CORAGEN® and DUPONT™. Details of such registrations are tabulated herein below:

           Trade        Number          Date        Class        Goods
           Mark
        CORAGEN         1487406      14/09/2006       5      Insecticides


        DUPONT           419014      12/03/1984       5      Insecticides,
                                                             fungicides
                                                             and
                                                             herbicides.

10. The plaint further states that the above-mentioned registrations have been renewed from time to time and are valid and subsisting as on date. It is also stated that the packaging of the plaintiffs' brand CORAGEN® bears a unique and distinctive man device/image which is pending registration, which is represented herein below:

11. It is further stated that the plaintiff No.1 is the owner of the copyright which vests in the artistic work of the CORAGEN® packaging as reproduced herein below, as per the provisions of the Copyright Act 1957, particularly Section 2(e):-

12. It is averred in the plaint that the plaintiff no.2 is licensed to use the trade mark CORAGEN® and DUPONT™ and the distinctive CORAGEN® packaging.

13. Learned counsel for the plaintiffs states that the plaintiffs were shocked when it came to their attention that their brand CORAGEN® and DUPONT™ and the distinctive CORAGEN® packaging were being misused in few districts of Andhra Pradesh and Maharashtra. She states that not only was there large scale counterfeiting of the products sold under the brand CORAGEN in these areas/districts, but the said products were being sold without a principal certificate issued by the plaintiffs, which tantamounts to the sale of insecticides without a license. She further states that the plaintiffs' records have disclosed that defendants are not the holders of the principal certificates which is a mandatory requirement for distributing and selling insecticides, and in the present case, CORAGEN® branded products of the plaintiffs. Learned counsel for the plaintiffs states that the survey revealed that there were several unauthorized distributors of CORAGEN® as well as counterfeiters in the said district as well as in other districts of Andhra Pradesh and Maharashtra. She states that during the said survey, the plaintiffs were only able to identify some of these distributors, being the defendant nos. 1 to 8 mentioned in the cause title of the plaint.

14. The photographs of the counterfeit CORAGEN sold by the defendant nos. 3 and 7 mentioned in the cause title along with the photographs of their premises/bills are reproduced hereinbelow:-

15. Learned counsel for the plaintiffs states that in view of the judgment of this Court in Satya Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508, the present suit be decreed qua the relief of injunction against the defendant nos. 3 and 7. The relevant portion of the said judgment, relied upon by learned counsel for the plaintiffs, is reproduced hereinbelow:-

"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in- chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination- in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."

16. Considering the aforesaid mandate of law and the fact that the plaintiffs are the prior and registered user, this Court is of the opinion that the defendant nos. 3 and 7 have no justification for the adoption and use of virtually identical trade mark/dress and label as that of the plaintiff.

17. Accordingly, the present suit is decreed against the defendant nos. 3 and 7 in accordance with prayer clause A (i) to A (iii) of the plaint along with the actual costs. The costs shall amongst others

include the lawyer's fees as well as the amount spent on Court-fees. Registry is directed to prepare a decree sheet accordingly.

MANMOHAN, J FEBRUARY 21, 2018 KA/rs