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[Cites 19, Cited by 0]

Custom, Excise & Service Tax Tribunal

Sheikh &Amp Mahajan Llp vs Commissioner Of Customs ... on 3 December, 2021

Author: Dilip Gupta

Bench: Dilip Gupta

    CUSTOMS, EXCISE & SERVICE TAX APPELLATE TRIBUNAL
                         NEW DELHI

                              PRINCIPAL BENCH

                     CUSTOMS APPEAL NO. 52368 OF 2019

[Arising out of Order-in-Appeal No. CC(A)/CUS/D-II/PREV/533/2019-20 dated
14.06.2019 passed by the Commissioner of Customs (Appeals), New Delhi]

M/s Sheikh & Mahajan LLP                                  Appellant
786, Ground Floor, Gali No. 6A,
Zakir Nagar, Okhla, New Delhi.

                                  Versus

Commissioner of Customs (Preventive),                  Respondent
New Delhi
New Custom House, Near IGI Airport,
New Delhi-110037.



Appearance

Shri V.V. Gautam, Advocate, Ms. Isha Vashisht, Advocate and Shri Anshul
Mittal, Advocate for the Appellant

Shri Rakesh Kumar, Authorized Representative for the Respondent


CORAM : HON'BLE MR. JUSTICE DILIP GUPTA, PRESIDENT
        HON'BLE MR. P.V. SUBBA RAO, MEMBER (TECHNICAL)



                                       Date of Hearing : 28.06.2021
                                      Date of Decision : 03.12.2021


                       FINAL ORDER NO. 52052/2021




P.V. SUBBA RAO :


          This appeal is filed by the appellant assailing the order-in-

appeal 1 dated June 14, 2019 passed by the Commissioner of

Customs (Appeals), New Delhi rejecting the appellant‟s appeal and




1
    Impugned order
                                                  2
                                                                             C/52368/2019

upholding the order-in-original dated June 14, 2018 passed by the

Additional Commissioner of Customs (Preventive), New Delhi.


2.          The    appellant    filed   Bill     of     Entry    No.   4927337        dated

24.01.2018 through its Custom House Agent 2 M/s Ananya Exim.

Receiving information about mis-declaration of the goods in terms

of quantity and value in this consignment, the goods were

examined and then seized by the Customs officers on 7.2.2018.

The Panchnama states that "as the goods were found to be mis-

declared in terms of quantity and value, imported goods were

seized under Section 110 of the Customs Act, 1962" vide seizure

Memo dated 7.2.2018 on reasonable belief the same were liable for

confiscation under provisions of the Customs Act, 1962.                                The

consignment           was    handed      over         to   the   Central   Warehousing

Corporation 3 Patparganj which was the custodian of the imported

goods. On 12.2.2018, the appellant requested that the goods may

be warehoused which was permitted by the Department and

thereafter re-examined in detail. As recorded in the Panchnama

drawn on 27.2.2018, during examination of the goods, it was also

noticed that the imported goods had mentioned brands such as

AIR, MAX, logo of Adidas, Puma, Nike, etc. The details of the shoes

found as recorded in the Panchnama are as follows:


      Sl.    Carton No.   Description of goods       Brand Name/logo
      No.
      1.     1            Men‟s shoes                AIR on shoes and Nike on Shoe
                                                     Flap
      2.     6            Men‟s shoes                Unbranded Shoes
      3.     13           Men‟s shoe                 Unbranded Shoes, along with
                                                     Adidas logo found separately
      4.     216          Men‟s shoes                Logo of horse on the shoes
      5.     227          Men‟s shoes                Logo of horse on the shoes and
                                                     Puma mentioned on Shoe Flap
      6.     255          Men‟s shoes                Max mentioned on Shoes

2
    CHA
3
    CWC
                                       3
                                                                    C/52368/2019
      7.    288      Men‟s shoes           Logo of Men on Shoes
      8.    361      Men‟s shoes           Logo of Nike, Presto BRS100,
                                           Duralon, AIR (Printed on Shoes)




3.         Summons   were    issued   to    the   importer    and    Shri    Asif

Farooque, Director of the appellant firm responded and gave a

statement on 28.2.2018 in which he, inter alia, said that he had

imported the goods on credit of 90 days and has yet to pay his

Chinese supplier; regarding the mis-declaration of men‟s shoes as

boy‟s shoes, he said that there was no difference in the tariff head

between boys and men‟s shoes and they had imported declaring

them as boys shoes; the maximum retail price4 was not embossed

properly on some shoes but he said that he would get the same

embossed. He also said that he was ready to pay the differential

duty, if any. With regard to the difference in quantity of shoes

covered by Invoice No. KM-1059 dated 29.11.2017 he said that he

would discuss it with their Chinese counterpart and explain later.

Regarding the shoes bearing marks such as AIR, Max, logo of Men

printed on shoes and branded NIKE shoes he explained that he was

only a trader of unbranded shoes and would clarify after consulting

the Chinese counterpart. He also asserted that the shoes bearing

brand names like NIKE and Puma on the flaps do not belong to the

appellant as it had never ordered the same. After discovering that

these names were on the flaps, he contacted his Chinese

counterparts who said that due to mistake of their labour, they

dispatched those shoes which were actually not meant for him. He

asserted that such shoes were accidentally mixed with their goods

and they do not belong to him. He agreed that the goods were mis-

4
    MRP
                                  4
                                                         C/52368/2019

declared in terms of description as well as value as the same have

been wrongly sent by the supplier. Regarding the valuation of the

goods (since the goods which were imported were not tallying with

the invoice), he suggested that a joint market enquiry be

conducted to ascertain the actual price of the goods. Accordingly, a

joint enquiry was conducted in which Shri Asif Farooque also

participated along with the officers.   Based on the survey, the

prices declared by the appellant in the Bill of Entry were rejected

and the price was arrived at by deductive method from the market

price of the goods after deducting the retailer‟s margin and

importer‟s margin, post import expenses and duty.




4.      The goods in question were, therefore, not as per the

declarations made both in terms of quantity and quality. On the

suggestion of the appellant, a joint market survey was conducted

along with the appellant and based on the market price, the

assessable value was determined through deductive method. There

were also brand names of Nike, Puma and Adidas and the

appellant‟s clarification was that those goods were sent by mistake

to them by the supplier.




5.      Imported goods which are suspected to have violated

Intellectual Property Rights 5 have to be dealt with as per the

Intellectual Property Rights (Imported Goods) Enforcement Rules,

20076 framed under the Customs Act. The right holder i.e., the one

who has the IPR has to issue a notice under Rule 3 to the Principal

5
    IPR
6
    Rules
                                    5
                                                               C/52368/2019

Commissioner, or Commissioner of Customs along with fees. The

Commissioner of Customs has to take a decision within 30 working

days and notify the applicant Rights holder whether the notice has

been registered or rejected and also the validity period of the

registration (Rule 4). Registration under Rule 4 is subject to

execution of a bond under Rule 5(a) and indemnity bond under

Rule 5(b). Once the right holder applies for (Rule 3) and is

registered (Rule 4) with the Commissioner of Customs, import of

infringing goods into India shall be deemed to be prohibited (Rule

6) within the meaning of Section 11 of the Customs Act, 1962.

Thereafter, in terms of Rule 7(1)(a) if the Deputy Commissioner or

Assistant Commissioner of Customs has reason to believe that any

goods are infringing the IPR, he shall suspend their clearance and

inform both the importer and the right holder of the suspension of

goods and the reasons therefor. The right holder has the right (Rule

8) to examine suspended goods and take samples, test and analyse

to assist in determining whether the goods are pirated, counterfeit

or otherwise infringe an intellectual property right. Rules 9 and 10

require the Assistant Commissioner, Deputy Commissioner to

supply   information   to   the   right   holder   and   the     importer

respectively.




6.    Even if the Right Holder does not issue a notice under Rule 3

and no registration is granted to the right holder under Rule 4, the

Deputy Commissioner or Assistant Commissioner may, under Rule

7(1)(b), on his own initiative, suspend the clearance of goods in

respect of which he has prima facie evidence that they are
                                            6
                                                                        C/52368/2019

infringing IPR. In such a case, the right holder has to fulfill the

obligations of issuing a notice under Rule 3 and fulfill the condition

under Rule 5 for registration within five days from the date of

suspension of clearance; else, the goods should be released. Rule 7

also requires the right holder to join the proceedings within 10

working days from the date of suspension of clearance of the goods

which limit can be extended by the Commissioner for another 10

days.


7.          In this case, when a reference was made by the officer, the

Deputy Commissioner (IPR Cell), has, on 22.2.2018, informed that

NIKE, Puma, Adidas are registered with them as right holders under

the IPR Rules, 2007. Accordingly, letters dated 5.3.2018 were

issued to M/s Nike, Adidas and letter dated 6.3.2018 to Puma

asking them to join the proceedings in terms of rules and they did

so and after examining the goods, reported as follows:


Report of Adidas and conclusion:

     i.       The right holder is the owner of the trademark "adidas" (word) and
              logos "Three Stripes", "Trefoil", "Three Bars" and entitled to use the
              trademark "adidas" and logos "Three Stripes", "Trefoil" and "three
              bars" under the Trademarks Act in India.

     ii.      The 3-stripes mark is the quintessential adidas symbol.

     iii.     M/s Sheikh & Mahajan LLP has imported consignment consisting of
              goods which bear either the trademark "adidas" and/or logos Three
              stripes, Trefoil and three bars and/or marks deceptively and confusing
              similarly to trademark "adidas" and logos "Three Stripes", "Trefoil"
              and "three bars" and shall cause confusion and deception amongst
              the purchasing public and trade,

     iv.      The counterfeit goods imported by M/s Sheikh & Mahajan LLP, wherein
              trademark "adidas" and logos Three stripes and three bars have been
              used in deceptively and confusingly manner are deceptively and
              confusingly similar to the three bars logo of the Right Holder.

     v.       On a close scrutiny of the infringing products following similarly and
              dissimilarity, the differences between a genuine "adidas" and sample
              of "adidas" shoes handed over to him are as follows:
                               7
                                                              C/52368/2019


Sl.No.   Original Product                    Counterfeit Products
1.       The label fixed on the tongue is    The quality of label is poor
         heat sealed                         and is not properly sealed
2.       Every label should contain a        The unique security code
         security code. A security code      existing on the tongue is
         is made up of 13 digit numbers      incorrect, which means that
         and English Alphabets. Every        the sample product is a
         security code is unique             fake product.
3.       Information on the tongue label     The information on the
         should set out in the order         tongue       are      incorrect,
                                             incomplete       and     in    an
                                             incorrect order. The label
                                             in totality renders the
                                             sample product a fake
                                             product
4.       The label contains complete         The label attached to the
         information of every product        sample product does not
         individually.   The information     contain        the        correct
         contained are:                      information which every
         The country of origin               genuine       product       must
         Size                                contain.         The     sample
         Adidas article code                 product does not contain
         Factory code                        the     correct      place     of
         Unique security code                manufacture, factory code,
         Adidas purchase order no.           production date,          adidas
         Production date                     article      code,        unique
         Two dimensional bar code            security code is missing,
                                             adidas purchase order no.
                                             and bar code is fictious,
                                             incorrect       coding       and
                                             numbering of the above
                                             mentioned salient features
                                             in the sample product
                                             handed over to us proves
                                             that it is a fake product.
                                             Absence of the above
                                             mention salient features in
                                             the sample product over
                                             handed that it is a fake
                                             product.
5.       The raw material and the            The raw material and the
         technology      used    in    the   technology used in the
         manufacturing of a genuine          manufacturing         of      the
         product is of a very good quality   sample products handed
         and standards and thus the          over to us is of poor quality
         overall finish and the quality of   and the product as a whole
         a genuine product is very           is poorly finished with poor
         superior                            pasting and stitching which
                                             is evident on comparison
                                             with a genuine product.
                                             Thus the poor quality and
                                             finish    of     the    product
                                             handed over is a fake
                                             product.
6.       The trademark (i.e. word marks      The trademarks have been
         and/or logo) are in a fixed         applied shabbily and also
         proportion.                         are not in proportion which
                                             proves that the sample of
                                             shoes as fake product.
7.       On the genuine adidas handed        In the samples handed over
         over have three parallel equi       to us, the said three stripes
         spaced strips at a forward slant    is not properly fixed and
         of the upper and/or a trefoil       paced.      Also, the shoes
         with three stripes.    Also, the    were packed in polythene
                                       8
                                                                     C/52368/2019

                goods are packed in good            bags.
                quality boxes.
        8.      Embroidery/stitching work on        Embroidery/stitching       &
                the original product is of          pasting     done    samples
                superior quality                    collected is of poor quality
                                                    which renders the sample
                                                    product a fake product.
        9.      Detailed      information      in   As the shoes were found to
                compliance of Legal Metrology       be packed in polythene
                Act, 2009 about every product       bags, Mrp, Label is missing
                is set out in adidas/Mrp Label      on the packaging of the
                attached to the box of every        shoes.
                product.       The   information
                contained are:
                Product
                Quantity
                Size
                MRP
                Date of Manufacturing
                Name       and     address    of
                Manufacturer/Customer      Care
                Cell
                Email
                TWO DIMENSIONAL BAR CODE
                Article No.

        10.     The security label fixed on the     There is no Security label
                shoes contains adidas logo          fixed on the shoes.     The
                along with a printed bar code,      Care label is also missing
                which is unique for every           on    the   security   label
                individual product.   The Care      attached to the shoes.
                label attached to the shoes
                contain reasonable care to be
                taken    for  maintaining   the
                product which is unique for
                every individual product.



Report of M/s Puma and conclusions


        8.1    Sample analysis findings:

        i.     The appearance/design/style of the shoes does not match with

               PUMA design.

        ii.    The fulfillment of the product sample is of inferior quality.

        iii.   The material used to manufacture the product is of inferior

               quality, not matching the standards of original PUMA product.

        iv.    The packaging of the product does not match the standards of

               original PUMA products.

        v.     The size of the PUMA leaping Cat device on the shoes does not

               match with the standards of original PUMA product.

        vi.    The finishing of the product is not matching with the standards

               of original PUMA product.
                                              9
                                                                                C/52368/2019

           vii.    The form strip shown in the images is stated as counterfeit in

                   the below image.

           viii.   The images mentioned are stated as counterfeit and should not

                   be released under any circumstances.

           ix.     The side strip used in the design of the shoe is also counterfeit.

           x.      The shoe flap are the essential part of the shoe bearing the

                   brand name of PUMA imported by Sheikh and are counterfeit

                   product and can‟t be released if any circumstances.



8.     Although        Nike    also     submitted         its   report,    it    has    not

subsequently submitted the required bond and bank guarantees

with respect to this consignment and hence in the impugned order,

the rights of Nike were not enforced.




9.     It, therefore, appeared that all the goods imported by the

appellant except those with „Max‟ mentioned on them were

counterfeit goods. The details of the various types of goods

imported by the appellant in terms of the IPR violations were as

follows:


Sl.   Description of               Total     Total         Remarks
No    Shoes (Brand)                Cartons   Quantity
.                                            (in Pairs)
1.    AIR    (Mentioned       on   97        2302          The said product was checked by
      Shoes)                                               the authorized representative of
                                                           NIKE and after examination of
                                                           the same, they informed that the
                                                           said product pertain to NIKE
                                                           brand.       The      authorized
                                                           representative vide their letter
                                                           dated 14.0.3.2018 has informed
                                                           that the goods are counterfeit
                                                           products.
2.    Unbranded Shoes              83        1986          The products was checked by the
                                                           authorized representative of
                                                           ADIDAS and after examination of
                                                           the same, they informed that the
                                                           said product pertain to ADIDAS
                                                           brand.      The      authorized
                                                           representative vide their letter
                                                           dated 14.03.2018 has informed
                                                           that the goods are counterfeit
                                                           product.
                                        10
                                                                  C/52368/2019
3.    Max    (Mentioned     on   50    1200    There was no IPR on the brand
      Shoes)                                   name Max.
4.    Logo of Horse         on   60    1420    The DC (IPR) has informed
      Shoes                                    that the said product is not
                                               registered      with    Customs.
                                               However, the products was
                                               checked by the authorized
                                               representative of PUMA and
                                               after examination of the
                                               same, they informed that the
                                               said product pertain to Puma
                                               brand.         The    authorized
                                               representative       vide   their
                                               letter dated 14.03.2018 has
                                               informed that the goods are
                                               counterfeit products.
5.    Logo of Man printed        144   3456    The DC (IPR) has informed
                                               that the said product is not
                                               registered      with    Customs.
                                               However, the products was
                                               checked by the authorized
                                               representative of PUMA and
                                               after examination of the
                                               same, they informed that the
                                               said product pertain to Puma
                                               brand.         The    authorized
                                               representative       vide   their
                                               letter dated 14.03.2018 has
                                               informed that the goods are
                                               counterfeit products.
6.    Logo of Nike Presto, BRS   30    720     The DC (IPR) has informed that
      100,     Duralon,    AIR                 the NIKE brand is registered with
      (Printed on Shoes)                       Customs. Also the said product
                                               was checked by the authorized
                                               representative of NIKE and after
                                               examination of the same, they
                                               informed that the said product
                                               pertain to NIKE brand. The
                                               authorized representative vide
                                               their letter dated 14.03.2018 has
                                               informed that the goods are
                                               counterfeit products.
      Total                      464   11084

      Description of      Shoe
      Flap (Brand)
      FLAP NIKE                        1770    Vide letter dated 22.0.3.2018 of
                                               authorized representative, they
                                               informed     that     there  are
                                               counterfeit products.
      LOGO ADIDAS                      4960    Vide       letter      dated
                                               22.03.2018 of authorized
                                               representative,         they
                                               informed that these are
                                               counterfeit products.
      FLAP PUMA                        2890    Vide       letter      dated
                                               12.03.2018 of authorized
                                               representative,         they
                                               informed that these are
                                               essential part of the shoes
                                               and     also      counterfeit
                                               products.
      TOTAL                            9620




10.    As suggested by Shri Farooq in his statement, the prices of

the goods were ascertained through a joint market enquiry
                                        11
                                                                    C/52368/2019

conducted along with the appellant. From the market price the

margin of profit of dealer @ 15% and importer @ 15% were

deducted.    After deducting these two elements another 5% was

deducted as post-importation costs of importer. The price arrived at

after making these deductions was taken as the cum-duty price and

the assessable value was calculated backwards. On this assessable

value, the duty was determined. Before the original authority, the

appellant has accepted that the goods were mis-declared in terms

of value and description and undertook to pay the differential duty

fine and penalty, if any imposed by the Department. It also

categorically mentioned that it did not want any show cause notice

or an opportunity of personal hearing as all details relevant to the

case have already been explained to them and understood. They

requested to dispose of the matter early.


11.   After examining the facts of the case, the original authority,

viz., the Additional Commissioner has passed the following order:


      "(i)   I reject the declared assessable value of Rs. 16,04,404/- for the
      goods imported vide Bill of Entry No. 4927337 dated 24.01.2018 in terms
      of Section 14 of the Customs Act, 1962 read with Rule 12 of the Customs
      Valuation (Determination of Value of Imported Goods) Rules, 2007.

      (ii)   I re-determined the assessable value as Rs. 14,25,462/- for the
      goods other than counterfeit goods (i.e. Unbranded Shoes as per
      Panchnama dated 27.02.2018 (which are identified as shoes of adidas
      brand on the basis of three strips vide technical report dated 14.03.2018
      submitted by authorized representative of M/s Adidas ad on the basis of
      which they claimed their IPR), Logo of Horse on shoes and Man Printed on
      Shoes (regarding which M/s Pume Se has claimed its IPR through its
      authorized representative vide its technical report dated 21.03.2018)
      imported vide Bill of entry No. 4927337 dated 24.01.2018, under Section
      14(1) of the Customs Act, 1962 read with Rule 5 & Rule 7 of the Customs
      Valuation (Determination of Value of Imported Goods) Rules, 2007.

      (iii)   I order for confiscation of the goods other than counterfeit goods
      (i.e. Unbranded Shoes as per Panchnama dated 27.02.2018 (which are
      identified as shoes of adidas brand on the basis of three strips vide
      technical report dated 14.03.2018 submitted by authorized representative
      of M/s Adidas and on the basis of which they claimed their IPR), Logo of
      Horse on shoes and Man Printed on Shoes (regarding which M/s Puma Se
      has claimed its IPR through its authroised representative vide its technical
      report dated 21.03.2018) valued at Rs. 14,25,462/- covered under Bill of
      Entry No. 4927337 dated 24.01.2018 under Section 111(l) & (m) of the
                                        12
                                                                    C/52368/2019

      Customs Act, 1962. However, I give an option to the importer to redeem
      the said goods i.e. Shoes Max (Mentioned on Shoes), Shoes "Mark AIR" ,
      Shoes (Logo of "Nike Presto") on payment of redemption fine of Rs.
      15000/- under Section 125(1) of the Customs Act, 1962.

      (iv)   I confirm the consequential Customs Duty amounting to Rs.
      3,93,133/- in respect of the goods other than counterfeit goods (shoes
      bearing the brand name "Adidas and Puma) imported vide Bill of Entry
      No. 4927337 dated 24.01.2018 (as discussed above against the importer,
      M/s Sheikh & Mahajan LLP 786, ground Floor, Gali No. 6A, Zakir Nagar,
      Okhla, New Delhi (IEC-ADJFS8130M) under Section 28(1) of the Customs
      Act, 1962. I order for recovery of confirmed Customs duty of Rs.
      3,93,133/- in respect of the goods other than counterfeit goods (Shoes
      bearing the brand name "Adidas & Puma) under Section 28 of the
      Customs Act, 1962 from the importer.

      (v)    I impose a penalty of Rs. 3,93,133/- on M/s Sheikh & Mahajan LLP
      786, ground Floor, Gali No. 6A, Zakir Nagar, Okhla, New Delhi (IEC-
      ADJFS8130M), the importer under section 114(A) of the Customs Act,
      1962 with an option that the importer shall be eligible for reduced penalty
      as prescribed under Section 114A, subject to compliance therein.

      (vi)    I order for absolute confiscation of the counterfeit goods (i.e.
      unbranded Shoes as per Panchnama dated 27.02.2018 (which are
      identified as shoes of adidas brand on the basis of three strips vide
      technical report dated 14.03.2018 submitted by authorized representative
      of M/s Adidas and on the basis of which they claimed their IPR), Logo of
      Horse on shoes and Man Printed on Shoes (regarding which M/s Puma Se
      has claimed its IPR through its authorized representative vide its technical
      report dated 21.03.2018) collectively valued at Rs. 72,29,117/- covered
      under Bill of Entry No. 4927337 dated 24.01.2018, under Section 111(d)
      & (l) of the Customs Act, 1962 read with IPR (Imported Goods)
      enforcement Rules, 2007.

      (vii)  I impose a penalty of Rs. 220000/- on M/s Sheikh & Mahajan LLP
      786, ground Floor, Gali No. 6A, Zakir Nagar, Okhla, New Delhi (IEC-
      ADJFS8130M), the importer under section 112 of the Customs Act, 1962
      however the importer shall be eligible for reduced penalty as prescribed
      under Section 112, subject to compliance therein."




12.   On appeal, the Commissioner (Appeals) passed the impugned

order upholding the above order of the Additional Commissioner.

The appellant has filed this appeal assailing the impugned order on

the following nine grounds:


      (i)    None of the goods imported by the appellant under

      subject bill of entry are prohibited, in terms of Section 11 of

      the Customs Act, 1962 read with Rule 6 of IPR Rules ibid,

      which provides that for being deemed prohibited under

      section 11 of Customs Act, 1962, the right holder needs to
                                 13
                                                          C/52368/2019

obtain    registration   from        the   Commissioner   and   after

registration, if on examination, it is found that alleged goods

are infringing the right of right holder, the goods shall be

deemed as prohibited. In the instant case, it is evident from

the report of Assistant Commissioner, which has been quoted

by the learned Original Authority at page No. 8 of the order in

original (which is placed at page No. 185 of the paper book),

wherein in the chart at serial No. 4 & 5, it is mentioned that

logo of Horse on shoes and logo of men printed is not

registered with customs.             Since the goods of these two

brands are not registered with the Customs, in terms of Rule

6 of IPR Rules read with Rule 11 of Customs Act, 1962, the

goods are not prohibited and, thus, the seizure, confiscation,

imposition of penalty upon the goods and demand of duty is

illegal and liable to be set aside.


(ii)    The confiscation of goods under section 111(d) & (m) of

the Customs Act, 1962 is illegal, as there is no mis-

declaration of either description of goods, brand and value.


(iii)   The rejection of value of the impugned goods under

section 14 of the Customs Act, 1962 is illegal as value can be

rejected only in exceptional circumstances, as defined under

Section 14 such as when the buyer and seller are related,

price is not the sole consideration and there is no sale. In the

instant case, none of the factors exists.


(iv)    Re-determination of assessable value under section

14(1) of the Customs Act, 1962 is arbitrary and illegal, as in
                                 14
                                                       C/52368/2019

accordance with section 14, the assessable value with the

transactional value and the appellant has declared the

transactional value paid by him, as mentioned in the invoice

issued by the shipper/overseas supplier and the officers of

preventive did not produce any document justifying that the

appellant   has   paid    any    amount   over   and   above   the

transaction value to the shipper/supplier of the subject

goods, onus to prove under valuation is upon the revenues,

which is a settled law.


(v)    The confiscation of goods cleared on higher assessed

value (upon which the duty has been paid by the appellant at

enhanced rate, as the goods would have been destroyed and

decayed, which is the case with the balance goods which are

absolutely confiscated by the learned Original Authority, as

per the inspection done by the appellant of the goods at

Warehouse, where the goods have been warehoused pending

clearance) is illegal, arbitrary, contrary to the provisions of

section 111(d) & (m) of the Customs Act, 1962.


(vi)   The absolute confiscation of goods having men mark,

horse mark and three strips is illegal, as these two marks are

not registered with the customs, as per the report of D.C.

Customs and are not prohibited, in terms of Rule 6 of IPR

Rules read with section 11 of Customs Act and similarly the

three stripped mark is a free mark, not the mark of Adidas.

The Adidas mark contains word "Adidas" (word) and logos,

three stripes and "Trefoil".
                                  15
                                                        C/52368/2019

      (vii) Imposition of redemption fine of Rs. 15,000/- under

      section 125(1) and penalty of Rs. 3,93,133/- upon the goods

      under section 114A of the Customs Act, 1962 is illegal and

      arbitrary, as there is no violation of IPR and Section 14 of

      Customs Act, 1962 and Valuation Rules, by the appellant.


      (viii) Without prejudice to the contentions and rights of the

      appellant, imposition of penalty under section 112 of the

      Customs Act, 1962 is contrary to the provisions of proviso 5

      of Section 114A of the Customs Act, 1962, which itself

      provides that where any penalty has been levied under

      section 114A, no penalty shall be levied under Section 112 or

      114.


      (ix)   The impugned order in original and order in appeal are

      liable to be set aside, in terms of order passed by this

      Tribunal (Mumbai Bench) in case of SRK Enterprises Vs.

      Commissioner of Customs (Imports) Nhava Sheva,

      2012 (280) ELT 264 (Tri.-Mum.), wherein this Tribunal

      observed that "since the timeline prescribed in IPR Rules

      has not been followed (relying upon judgment of

      Landom Distributors Pvt. Ltd. (Madras High Court),

      provisions of IPR Act and Rules inapplicable)."




13.   Learned Departmental Representative supports the impugned

order. On the first and sixth arguments of the appellant, learned

Departmental Representative submits that the shoes in question

not only had the logos of the horse and the man but also included

with device mark "FORM strip" and Trefoil besides Puma on the flap
                                  16
                                                         C/52368/2019

of the shoes and thereby infringed the IPR of Puma and Adidas and

were counterfeit goods. They violated the IPR of the right holder

and Puma.     He submitted that the Delhi High Court has, in the

case of Puma Se & Anr Vs. Footwear (Klick) India Pvt. Ltd. &

Ors. in CS (OS) 2518/2015 dated 24.8.2012 held that the

device mark Form strip Puma, and marks are registered marks of

Puma besides catalog and the word Puma. Further, in PUMA SE &

ANR Vs. Dashmesh Footwear & Ors CS (COMM) 43/2015

dated 17.12.2015 also the High Court of Delhi concluded that the

form strip logo of Puma is registered in India and the right holders

of the same. It is, therefore, his submission that merely because

the shoes also had the men face and horse on them it does not

make a difference as long as they are violating/infringing some

right of trade mark holder which they did.    Therefore, the goods

were prohibited goods in terms of Section 11 of the Customs Act

read with Rule 6 of the IPR Rules. Similarly, he submits that the

three strips are the trademark of Adidas and the right holders had

registered trademark Adidas and logos three stripes, trefoil and

three bars has belonging to it with the Customs under the IPR

Rules. He relies on the judgment of High Court of Delhi in

CS(COMM) 1269/2018 and IA 16629/2018 dated 14th May

2019. Learned counsel for the appellant relies on the Judgment of

the General Court of the European Union Press Release no.

76/19 in case T-307/17 adidas AG vs EUIPO in which it was

held that „ adidas does not prove that the mark has acquired,

throughout the territory of the EU, distinctive character following

the user which had made if three parallel equidistant stripes of
                                    17
                                                               C/52368/2019

identical width, applied on the product in any direction‟. For this

reason also the goods which were confiscated were deemed to be

prohibited goods under Section 11 of the Customs Act.                With

respect to the second submission, that the confiscation under

Section 111(b) & (m) of the Customs Act is illegal and that there is

no mis-declaration of either description of the goods brand or

value, learned Departmental Representative submits that the mis-

declaration was evident and was admitted to by the appellant

themselves.   Initially   when   the    discrepancies   were      noticed,

summons were issued to Shri Asif Farooque, the Director of the

appellant firm who, in his statement before the Customs officers,

explained that the shoes with the flap bearing brand names Nike

and Puma and logo Adidas do not belong to him at all. He further

said that he had contacted his Chinese supplier and confirmed that

the labour has dispatched the wrong shoes accidently and they do

not belong to him. In fact, he said that he is trader in unbranded

shoes.   The Bill of Entry mentions "non- popular brands".          At no

point of time has he asserted that he has declared the goods which

were imported. What has declared in the Bill of Entry was clearly

different from what was imported. Shri Farooque also agreed that

the MRP was not properly embossed and said the same would be

got done on the shoes.      Since the description of the goods was

different from those that of imported, Shri Farooque suggested that

a joint market survey to ascertain the price of the goods. This was

the statement by Shri Farooque, Director of the appellant. Another

Director of the appellant, Shri Rajeev Kumar Jaiswal also accepted

that the goods were mis-declared in terms of value and description
                                     18
                                                            C/52368/2019

and undertook to pay the differential duty fine and penalty

voluntarily, if any, imposed by the Department. He also waived

requirement of show cause notice as also the opportunity of

personal hearing as in this case as "all relevant details have already

been explained to them and he understood the same" and

requested to dispose of the case. These statements have not been

retracted. What has been admitted need not be proved although in

this case it has also been proved through the reports of the right

holders. The appellant has not taken the stand that there was no

mis-declaration before the original authority and has on the

contrary admitted to the same during the adjudication proceedings.

Therefore, the assertion of the learned Counsel that there was no

mis-declaration in terms of section 111(d) & (m) is without any

force.




14.      With respect to the third and fourth ground of the appeal that

the transaction value should be accepted and the assessable value

of the goods should not have been re-determined, learned

Departmental Representative points to the fact that the goods

declared in the invoice and the Bill of Entry were different from the

goods which were imported. The nature, quantity and description of

goods were different.      The appellant has agreed that they were

different. There is nothing on record to show that this statement

was made under any threat or coercion. In fact, the appellant has

sought clarification from its supplier from China and confirmed that

wrong goods have been sent to them. Therefore, a question arose

as to how to value the goods which were actually imported. The
                                  19
                                                         C/52368/2019

appellant himself has suggested that a joint market survey should

be conducted to ascertain the market price of the goods which

accepted and the assessable value may be deduced from it.

Thereafter, the appellant participated in the market survey along

with officers and the market prices of the goods were determined.

From the market prices the retailer‟s margin @ 15% and then the

importers margin @ 15% was deducted.           A further 5% was

deducted as post importation expenses importer would have been

incurred. After these deductions what was left was taken the cum-

customs duty price of the imported goods and the assessable value

was worked backward it. The entire valuation was a joint exercise

by the Department and the importer appellant. The appellant did

not contest the valuation at the time of adjudication also.

Therefore, the argument that the transaction value should be

accepted as the assessable value has no force whatsoever

especially when the assessee has accepted that what was imported

were different from what were declared and further clarified from

its overseas supplier and confirmed that wrong goods were

imported which they had not ordered due to some supplier's end.

On the fifth ground that the confiscation of the goods cleared on

higher assessable value is illegal, arbitrary and contrary to the

provisions, learned Departmental Representative submits that

Section 111(d) provides for confiscation of any goods imported

contrary to any provisions imposed by or under Customs Act or any

other law for the time being for in force. Section 111(m) provides

for confiscation of goods which do not correspond in value or in any

other particular with the entry made under Customs Act. The entry
                                    20
                                                              C/52368/2019

in question is the Bill of Entry filed by the appellant. Admittedly, the

goods do not confirm to the description. As per the report of the

right holders given after examination of the imported goods, the

goods infringe the Intellectual Property Rights of the right holders.

Therefore, as per Rule 6 of the IPR Rules read with Section 11 of

the Customs Act they are prohibited goods. Therefore, confiscation

both under Section 111(d) and 111(m) is valid and proper. With

respect to the seventh ground that imposition of redemption fine

and penalty under the Customs Act is illegal and arbitrary, learned

Departmental Representative submits this submission has no force

because not only did the goods not correspond in description but

also in value.   Therefore, the confiscation under Section 111 is

correct and as also the option of allowing redemption of the goods

non-IPR violating goods under Section 125(1).        He also supports

the imposition of penalty under Section 114A of the Act. Learned

Departmental representative conceded on the eighth ground that

simultaneous penalty cannot be imposed under Section 112 and

114A.    On ninth ground that the right holders had not joined the

proceedings in time i.e., within ten days of the detention of the

goods and, therefore, the entire process is vitiated, learned

Departmental Representative submits that the records demonstrate

that the goods were initially seized under a Panchnama on

information   regarding    mis-declaration.      Thereafter     on    the

appellant's request, the goods were allowed to be warehoused and

they were re-examined. On re-examination it found that the goods

had marks which may lead to infringement of IPR of the right

holders. A reference was made to the Deputy Commissioner (IPR
                                  21
                                                          C/52368/2019

Cell) and he confirmed that Nike, Puma and Adidas were already

registered with the Customs Department and therefore, they held

registrations under Rule 4 of the IPR Rules. When letters were

written to three right holders they responded immediately and

joined the proceedings. The argument of the learned Counsel that

the right holders should have immediately filed a bond in respect of

this consignment is not correct because the rule nowhere requires

that a bond should be executed within ten days. It only requires

the right holder to join the proceedings within 10 days and they

did. This assertion of the learned Counsel is not supported by the

rule.   The argument of the learned Counsel with respect to the

proceedings was that clearance of the imported goods was

suspended by the Deputy Commissioner on his own initiative and

therefore, this case is covered by Rule 7 (1)(b) is not correct. A

plain reading of the Rule 7 says that Rule 7(1)(a) deals with cases

where the right holder is already registered.    Rule 7(1)(b) deals

with cases where the right holders are not registered. In this case,

the right holders have already been registered.    If they were not

registered, they would have had to fulfill the obligations under Rule

3 and Rule 5 and get registered under Rule 4 and these obligations

would have to be fulfilled within five days of suspension of the

clearance of the goods. The present case is not covered by these

provisions   because   right   holders   were   already   registered.

Therefore, he submits that there is no force in the submissions of

the learned Counsel and his appeal may be rejected.
                                     22
                                                              C/52368/2019

15.       We have considered the submissions on both sides. The

issues to be decided in this case are:


   i)       Were   the   goods   which   were   confiscated   absolutely

            prohibited goods under Section 11 of the Customs Act

            read with Rule 6?

   ii)      Were the goods seized by the Deputy Commissioner on his

            own initiative under Rule 7(1)(b) or on the basis of a

            registered right holder under Rule 7(1) (a)?

   iii)     Have the Right Holders joined the proceedings within the

            time frame set out in the Rules or not and consequently

            are the proceedings vitiated as asserted by the appellant?

   iv)      Was the rejection of the declared value of the impugned

            goods under section 14 of the Customs Act, 1962 correct?

   v)       Was the re-determination of assessable value under

            section 14(1) of the Customs Act, 1962 correct?

   vi)      Was the confiscation of goods under section 111(d) & (m)

            of the Customs Act, 1962 correct?

   vii)     Was the absolute confiscation of goods having men mark,

            horse mark and three stripes is illegal, as these two marks

            were not registered with the customs but which also had

            the three stripes and "Trefoil" mark?

   viii)    Was imposition of redemption fine of Rs. 15,000/- under

            section 125(1) and penalty of Rs. 3,93,133/- upon the

            goods under section 114A of the Customs Act, 1962

            correct?

   ix)      Was the simultaneous imposition of penalty under section

            112 and 114 valid?
                                  23
                                                         C/52368/2019

16.   On the first question, the assertion of the learned counsel is

that the import of the impugned goods were not prohibited in terms

of Section 11 read with Rule 6 because as per the Report of the

Deputy Commissioner (IPR Cell) itself, the „Man‟ and „Horse‟ logos

used on the shoes were not registered with the customs. When the

logos themselves were not registered, there cannot be an IPR with

respect to these two logos. According to Rule 6, once the IPR is

registered, import of goods which infringe the IPR is deemed to be

prohibited under Section 11. Learned Departmental Representative

submits that the goods have not been confiscated for having the

logos of „Horse‟ and „Man‟ but because they also had the logos of

"FORM strip" besides Puma on the flap of the shoes. Once the IPR

of Puma is violated, it does not matter if the shoes also have some

other marks such as Horse and Man. We find that Rule 6 of the IPR

reads as follows:


            6. Prohibition for import of goods infringing
            intellectual property rights.- After the grant of
            the registration of the notice by the Commissioner on
            due examination, the import of allegedly infringing
            goods into India shall be deemed as prohibited within
            the meaning of Section 11 of the Customs Act, 1962.



17.   What is to be examined is whether or not any registered IPR

have been infringed and if so, the import of the goods is prohibited

and not otherwise. The goods have some non-registered logos and

trademarks and also have certain registered IPR on them. A plain

reading of Rule 6 shows that import of goods is prohibited if the

registered IPR is violated and it does not make any exception to

goods which also have some other logos. It is immaterial how many

logos are on the goods. If they violate any IPR, their import is
                                  24
                                                           C/52368/2019

prohibited, and not otherwise. In this case, the shoes with Man and

Horse logos also had device mark "FORM strip" besides Puma on

the flap of the shoes. The Delhi High Court has in the case of Puma

Se held that the device mark Form strip Puma, and marks are

registered marks of Puma besides      catalog and the word Puma.

Further in PUMA SE also the High Court of Delhi concluded that the

form striped logo of Puma is registered in India and the right

holders of the same. We find that the impugned goods have,

therefore, violated the IPR and the import of these goods was,

therefore, prohibited under Rule 6 read with Section 11.




18.   Learned counsel for the appellant also argued that the goods

were detained by the Deputy Commissioner on his own initiative

and therefore, the proceedings fall under Rule 7(1) (b) and the

Right holders should have fulfill their obligations within five days

and since they have not, the goods should have been released.

Rule 7 reads as follows:


           7. Suspension of clearance of imported goods.-

           (1)(a) Where the Deputy Commissioner of Customs or
           Assistant Commissioner of Customs, as the case may
           be, based on the notice given by the right holder
           has a reason to believe that the imported goods
           are suspected to be goods infringing intellectual
           property rights, he shall suspend the clearance of
           the goods.

           (b) The Deputy Commissioner of Customs or
           Assistant Commissioner of Customs , as the case may
           be, may, on his own initiative, suspend the
           clearance of goods , in respect of which he has
           prima-facie evidence or reasonable grounds to
           believe that the imported goods are goods
           infringing intellectual property rights.

           (2) The Deputy Commissioner of Customs or
           Assistant Commissioner of Customs , as the case may
                      25
                                              C/52368/2019

be, shall immediately inform the importer and the right
holder or their respective authorised representatives
through a letter issued by speed post or through
electronic mode of the suspension of clearance of the
goods and shall state the reasons for such suspension.

(3) Where clearance of the goods suspected to
be infringing intellectual property has been
suspended and the right holder or his authorised
representative does not join the proceedings
within a period of ten working days from the date
of suspension of clearance leading to a decision
on the merits of the case, the goods shall be
released provided that all other conditions of
import of such goods under the Customs Act,
1962, have been complied with:

Provided that the above time-limit of ten working days
may be extended by another ten days in appropriate
cases by the Commissioner or an officer authorized by
him in this behalf.

(4)     Where    the    Deputy    Commissioner    of
Customs or Assistant Commissioner of Customs,
as the case may be, has suspended clearance of
goods on his own initiative and right holder does
not give notice under rule 3 of the Rules or does
not fulfill the obligation under Rule 5, within five
days from the date of suspension of clearance,
the goods shall be released provided that all other
conditions of import of such goods under the Customs
Act, 1962, have been complied with.

(5)      Where the clearance of goods has been
suspended, customs may, where it acts on its own
initiative, seek from the right holder any information or
assistance, including technical expertise and facilities
for the purpose of determining whether the suspect
goods are counterfeit or pirated or otherwise infringe an
intellectual property right.

(6)      Where the Deputy Commissioner of Customs or
Assistant Commissioner of Customs, as the case may
be, has suspended clearance of goods on his own
initiative and right holder has given notice under rule 3
of the Rules and fulfilled the obligations under Rule 5,
but , the right holder or his authorised representative
does not join the proceedings within a period of ten
working days from the date of suspension of clearance
leading to a decision on the merits of the case, the
goods shall be released provided that all other
conditions of their import under the Customs Act, 1962,
have been complied with:

Provided that the above time- limit of ten working days
may be extended by another ten working days in
                                  26
                                                            C/52368/2019

            appropriate cases by the Commissioner or an officer
            authorized by him in this behalf.

            (7) In the case of perishable goods suspected of
            infringing intellectual property rights, the period of
            suspension of release shall be three working days which
            may be extended by another four days subject to the
            satisfaction of the Commissioner or the officer
            authorized by him in this behalf that such extension
            shall not affect the goods.

            (8) Notwithstanding anything contained in these
            Rules, in the case of suspension of clearance of
            perishable goods on the basis of notice of the right
            holder or his authorized representative, the right holder
            or his authorized representative shall join the
            proceedings as required under these Rules within three
            working days or the extended period as provided in
            sub-rule (7) and in case of suspension of clearance of
            perishable good by the Deputy Commissioner of
            Customs or Assistant Commissioner of Customs, as the
            case may be, on his own initiative, the right holder shall
            give notice, execute a bond and join the proceedings as
            required under these Rules within three working days
            or the extended period as provided in sub-rule (7), as
            the case may be, failing which the goods shall be
            released.

            (9) If within ten working days or the extended period
            under sub-rule (6), as the case may be, and within
            three working days or the extended period as provided
            in sub-rule (7) of this rule in the case of perishable
            goods, the right-holder or his authorized representative
            joins the proceedings, the Deputy Commissioner of
            Customs or Assistant Commissioner of Customs , as the
            case may be, having reasons to believe that the goods
            are goods infringing intellectual property rights and
            liable to confiscation under section 111 (d) of the
            Customs Act, may seize the same under section 110 of
            the Customs Act.

19.   Rule 7(1) (a) deals with cases where the suspension of

clearance   where    the   Deputy     Commissioner     or    Assistant

Commissioner has reason to believe that the goods are infringing

IPRs and suspends clearance of the goods. Within 10 days of

suspension of the clearance, the Right holder has to join the

proceedings as per Rule 7(3). These provisions apply to cases there

is already a Right Holder who is registered with the Customs.
                                  27
                                                         C/52368/2019



20.   Rule 7(1) (b) empowers the Deputy Commissioner or

Assistant Commissioner to suspend clearance on his own initiative;

thereafter, Rights holder has to give a notice under Rule 3 and

fulfill the obligations under Rule 5 within five days. Rules 3 and 5

deal with the procedure for registration of the IPR of the Rights

holder.




21.   Thus, Rule 7(1)(b) deals with cases where the IPR has not

been registered with the Customs and in such a case, the Rights

holder has to give notice and fulfill obligations for registration

within five days. On the other hand, Rule 7(1)(a) deals with cases

where the Rights have already been registered with the Customs

and in cases of suspension of clearance, the Rights holders have to

join the proceedings within ten working days. In this case, the

clearance of the goods was suspended on receiving information

regarding some    mis-declaration and on the       request of the

appellant, the goods were warehoused and thereafter a Panchnama

was drawn after detailed examination which revealed that the

goods had also logos of popular brands. When the matter was

referred to the Deputy Commissioner (IPR cell), he confirmed that

the logos were registered with the Customs. Thereafter, the goods

were seized. As the seizure of the goods and suspension of the

clearance was based on the IPR already registered with the

Customs, it is covered under Rule 7(1)(a) and not under Rule

7(1)(b). Therefore, the assertion of the learned counsel that the
                                    28
                                                         C/52368/2019

clearance of the goods was suspended by the Deputy Commissioner

on his own initiative is not correct.




22.   The next question is whether the Rights Holders have joined

the proceedings within the time set out in the Rules or not and

consequently have the proceedings been vitiated. On 5.3.2018

officers sent letters to Nike and Adidas and their representative

joined the proceedings the same day. On 6.3.2018 officers sent a

letter to PUMA and in reply, they sent a letter on 7.3.2018 and

joined the proceedings. Learned Counsel‟s submission is that they

have not executed a consignment specific bond with the Customs

within ten days. We find Rule 7(3) requires the Rights holders to

join the proceedings within 10 days. It does not require any bond

to be executed within 10 days. Once they join the proceedings,

they can examine the goods, take samples for detailed examination

and report back as to which of the goods have violate their IPRs

and why. The question of execution of a bond comes thereafter.

There is no requirement of execution of a consignment specific

bond within 10 days in Rule 7(3) and we cannot read into it words

which do not exist. We, therefore, find that the Rights Holders have

joined the proceedings within the time of ten days and the

proceedings are NOT vitiated on this ground.




23.   The next question is whether the rejection of the declared

value of the impugned goods under section 14 and its re-

determination was correct. After examining the goods, the Customs

officers summoned the appellant. Shri Farooque, Director of the
                                     29
                                                                C/52368/2019

appellant appeared and gave a statement accepting that the goods

which were imported do not match with the description in the

documents. He also contacted his Chinese supplier and confirmed

that the goods were sent by mistake of labour at the suppliers‟ end.

Since the goods which were imported were different from those

which were declared in the Bill of Entry and in the invoice, the

question arose as to how to assess the value of the goods. Shri

Farooque suggested that a joint market survey be conducted to

determine the market price and the assessable value can be

deduced from it. On his suggestion, a joint market survey was

conducted by the Customs officers and Shri Farooque and the

market price of the imported goods was determined. From this

market price, 15% was deducted as the Retailer‟s margin and a

further 15% was deducted as the importer‟s margin. Another 5%

was deducted towards the post-importation costs which the

importer would have to incur. The price after these deductions was

reckoned as the cum-duty price and the assessable value was

calculated therefrom. We find no force in the argument of the

learned counsel that the transaction value should have been

accepted because:


     a)    According   to     the   Director   of    the   appellant   Shri

     Farooque, the goods which were imported were not the same

     as were declared in the documents and they were sent by

     mistake. Evidently, if the goods are different, the value

     should be different too.

     b)    Shri Farooque himself suggested that the value can be

     determined     through     a   joint   market     survey    and    the
                                     30
                                                         C/52368/2019

      department accepted the suggestion and thereafter he

      participated in the survey.

      c)    Deductions have been made on account of retailer‟s

      margin, importer‟s margin, post-importation costs from the

      market price and what was left after these deductions was

      taken as cum-duty price and the value calculated backwards.

      d)    There is nothing on record to show that Shri Farooque

      gave the statement under duress.

      e)    After the entire exercise, another Director of the

      appellant firm, Shri Rajeev Jaiswal gave in writing that he

      fully understood the case and waived the requirement of SCN

      and personal hearing and asked for an order.

      f)    Having accepted that the imported goods were different

      from those in the documents and having confirmed from its

      overseas supplier and clarified that the goods were sent by

      mistake and having suggested that value may be determined

      through a joint market survey and having participated in such

      a survey and having never contested the value at the time of

      adjudication, the appellant cannot now turn back and fault

      the Revenue for accepting the appellant‟s own suggestion and

      thereafter determining the assessable value of the goods

      through a joint survey along with the appellant.


24.   We, therefore, find no force in the submission of the

counsel that the invoice value should have been accepted as

the assessable value without re-determining through the

deductive method.
                                  31
                                                         C/52368/2019

Confiscation of goods under section 111(d), (l) & (m) of the
Customs Act



25.   In the order of the original authority upheld by the impugned

order, goods other than the counterfeit goods were confiscated

under section 111(l) and (m) and the counterfeit goods were

confiscated under section 111(d) and (l) of the Act. This section

reads as follows:


            SECTION       111. Confiscation    of  improperly
            imported goods, etc. - The following goods brought
            from a place outside India shall be liable to
            confiscation:                                   -
            ........

(d) any goods which are imported or attempted to be imported or are brought within the Indian customs waters for the purpose of being imported, contrary to any prohibition imposed by or under this Act or any other law for the time being in force;

.....

(l) any dutiable or prohibited goods which are not included or are in excess of those included in the entry made under this Act, or in the case of baggage in the declaration made under section 77;

....

(m) any goods which do not correspond in respect of value or in any other particular with the entry made under this Act or in the case of baggage with the declaration made under section 77 in respect thereof, or in the case of goods under transhipment, with the declaration for transhipment referred to in the proviso to sub-section (1) of section 54;

........

26. As far as the goods infringing the IPR (counterfeit goods) are concerned, once they are found to have violated the Rights of the rights holder, as per Rule 6, they become prohibited goods under section 11 of the Customs Act, 1962. Section 111(d) squarely applies to prohibited goods which are imported. It was also evident that these goods were not included in the entry made in the Bill of 32 C/52368/2019 Entry. In fact, Shri Farooque, Director of the appellant firm has, after checking with his overseas Chinese supplier, confirmed that the goods were not even ordered by them and were sent by mistake of the labourers. Therefore, confiscation of these goods under section 111(l) in the order of the original authority affirmed in the impugned order is correct and proper.

27. As regards the goods which were not found to infringe any IPR, the same were found to be of not the value which was declared. Their value was reassessed as per the suggestion of Shri Farooque, Director of the appellant firm through a joint market survey. Therefore, these goods were correctly confiscated under section 111(l) and (m).

Was the absolute confiscation of goods having men mark, horse mark and three strips is illegal, as these two marks were not registered with the customs but which also had the three stripes and "Trefoil" mark?

28. We find that the goods were not seized for having marks of Man and Horse but were confiscated for also having other marks such as Trefoil and three stripes and Puma written on the flaps. Learned Departmental Representative relied on the judgments of Delhi High Court in PUMA SE (supra) to assert that the Form Strip is the registered trade mark of PUMA. He relies on the judgment of Delhi High Court in the case of Adidas (supra) to assert that trefoil is the registered trade mark of Adidas. Learned counsel relies on the judgment of the General Court of EU to assert that three parallel lines in any direction are not the registered trade mark of Adidas. It is his assertion that unless the shoes also have Adidas 33 C/52368/2019 written on them, they have not violated the IPR. We find that the ratio of the judgment of the jurisdictional Delhi High Court is binding on this bench and the judgment of the General Court of EU is, at best, persuasive. We also find that under consideration in the judgment of the General Court of EU were, three vertical parallel lines as indicated in the judgment and under consideration was whether three equidistant parallel lines in any direction are the registered trade mark of Adidas. In the photographs of the shoes produced by parties before us, the three lines are not vertical lines but are at an angle as is well-known on the Adidas shoes. For these reasons, we are convinced that the judgment of the General Court of EU will apply to this case. So long as the IPR of another person are violated, it does not matter even if they contain some unregistered trade marks. We find in favour of the Revenue on this count.

Was imposition of redemption fine of Rs. 15,000/- under section 125(1) and penalty of Rs. 3,93,133/- upon the goods under section 114A of the Customs Act, 1962 correct?

29. The impugned order has upheld the order of the original authority whereby he confiscated goods (other than counterfeit goods) valued at Rs. 14,25,462/- under section 111(l) and (m) of the Customs Act and allowed their redemption on payment of a fine of Rs. 15,000/- which is about 1% of the value. Given the facts and circumstances of the case, we find this reasonable and find no reason to interfere with this redemption fine.

30. Penalty of Rs. 3,93,133/- has also been imposed under section 114A of the Customs Act and penalty of Rs.2,20,000/- has 34 C/52368/2019 been imposed under section 112. We find that these two sections are mutually exclusive by virtue of the fifth proviso to Section 114A which reads as follows:

SECTION 114A. Penalty for short-levy or non-levy of duty in certain cases. - Where the duty has not been levied or has been short-levied or the interest has not been charged or paid or has been part paid or the duty or interest has been erroneously refunded by reason of collusion or any wilful mis-statement or suppression of facts, the person who is liable to pay the duty or interest, as the case may be, as determined under sub-section (8) of section 28 shall also be liable to pay a penalty equal to the duty or interest so determined:
......
Provided also that where any penalty has been levied under this section, no penalty shall be levied under section 112 or section 114.

31. Thus, imposition of both penalties is not sustainable. We, therefore, set aside the penalty imposed under section 114A of the Customs Act.

32. In view of the above, the appeal is partly allowed setting aside the penalty imposed under section 114A and upholding the remaining part of the impugned order.

(Order pronounced in court on 03/12/2021).

(JUSTICE DILIP GUPTA) PRESIDENT (P. VENKATA SUBBA RAO) MEMBER (TECHNICAL)