Madras High Court
Mr.Abhishek Jain vs Mr.Narasimha Rao on 28 June, 2024
Author: P.Velmurugan
Bench: P.Velmurugan
C.S. (Comm. Div.) No.51 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 28.06.2024
Coram:
THE HONOURABLE MR. JUSTICE P.VELMURUGAN
C.S. (Comm. Div.) No.51 of 2024 and
O.A.Nos.163 to 165, 419 to 421 of 2024 and
A.Nos.1189 and 1192 of 2024
Mr.Abhishek Jain
Trading as, A.K.Associates
34/33, Strotten Muthiah Mudali Street,
2nd Floor, Sowcarpet,
Chennai – 600 079 ... Plaintiff
Vs.
1.Mr.Narasimha Rao
Trading as, Sri Vijayalakshmi Enterprises
Autonagar Vijayawada, Phase-03, Plot No.06
NTR Commissionerate, Andhra Pradesh
2. Mr.K.N.S.R. Prasad
Trading as, Kanigicharia satyanarayan
11-25-182,
Main Bazar, Iron Centre
Vijayawada-520001 ... Defendants
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C.S. (Comm. Div.) No.51 of 2024
Prayer: Plaint is filed under Order VII Rule 1 of CPC read with
Order IV Rule 1 of Original Side Rules of the Madras High Court, Section
2 (1) (C) (xvii) read with Section 7 of the Commercial Courts Act, 2015
and Sections 29, 134, 135 of Trademarks Act, 1999, praying to pass a
judgment and decree against the defendant on the following terms:-
a. A permanent injunction restraining the
Defendants, their partners, their employees, officers,
servants, agents, and all others acting for and on their
behalf from manufacturing, selling, distributing, exporting,
advertising, offering for sale, online or offline, any
products and in any other manner, directly or indirectly,
dealing with any products in the name of ASTEI STRONG
and the logo or any other mark which is deceptively similar
or identical to the plaintiff's registered trademark as a part
of any domain name, company name, corporate name,
websites, social media platforms, mobile application and
other intermediaries in any language, amounting to an
infringement of the plaintiff's registered trademark bearing
application Nos.4359777 and in Class 6.
b. A permanent injunction restraining the defendants,
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C.S. (Comm. Div.) No.51 of 2024
their partners, their employees, officers, servants, agents
and all others acting for and on their behalf from
manufacturing, selling, distributing, exporting, advertising,
offering for sale and in any other manner, directly or
indirectly, dealing with any products or as a part of any
domain name, company name, corporate name, websites,
social media platforms, mobile application and other
intermediaries in any language in the name of ASTEI
STRONG, or any other mark and packaging which is
deceptively similar or identical to the trademark ASTEL
STRONG and/or the plaintiff's logos and packaging
amounting to passing off.
c. A permanent injunction restraining each of the
defendants, its partners. directors, proprietors, subsidiaries
affiliates, franchisees, officers, servantes, agents,
distributors, stockis, representatives, licensees and anyone
acting for or on their behalf directly or indirectly, as the
case may be from performing any actions, especially using
artistic works identical to plaintiff's original artistic works
in its ASTEL STRONG label, packaging and logo
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C.S. (Comm. Div.) No.51 of 2024
amounting to infringement of copyright therein.
d. The defendants be ordered to pay the plaintiff a
sum of Rs.10,00,000/- (Rupees Ten Lakhs) as damages for
having committing infringement of the plaintiff's registered
trademark, passing off trademark and trade dress,
infringement of copyright in respect of the plaintiff's
artwork, dilution and tarnishment of both trademark and
copyright in respect of the mark ASTEL STRONG.
e. A preliminary decree be passed in favour of the
plaintiff directing the defendants to render true and proper
accounts of the profits arising out of the amount of sales
generated by the defendants in respect of their alleged
activities especially sale and export of products bearing the
mark ASTEI STRONG and the impugned logo for their
business.
f. To grant order of delivery up of any brochures/
printed material and/or any material which infringes
plaintiff's registered trademark ASTEL STRONG and the
impugned logo.
g. Costs.
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C.S. (Comm. Div.) No.51 of 2024
For Plaintiff : Mr.S.Bharath
Defendants : Set Ex-parte on 06.06.2024
JUDGMENT
This suit is filed by the plaintiff for permanent injunction restraining the defendants from infringing the plaintiff's registered trademark, from passing off and from infringing the copyright; directing the defendants to pay the plaintiff a sum of Rs.10,00,000/- (Rupees Ten Lakhs) as damages for having committing infringement of the plaintiff's registered trademark, passing off trademark and trade dress, infringement of copyright; a preliminary decree be passed in favour of the plaintiff directing the defendants to render true and proper accounts of the profits arising out of the amount of sales generated by the defendants in respect of their alleged activities especially sale and export of products bearing the mark ASTEI STRONG and the impugned logo for their business; to grant an order of delivery up of any brochures/printed material and/or any material which 5/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 infringes plaintiff's registered trademark ASTEL STRONG and the impugned logo; and for costs.
2. The brief averments of the plaintiff is that the plaintiff is the sole proprietor of M/s.A.K. Associates and was incorporated in the year 2010. The plaintiff is a trader and merchant of nails, screw and metal hardware. The plaintiff's firm is the leading importers & wholesalers of concrete nails, common nails drywall screws, self-drilling screws in South India. The high quality is synonymous with the plaintiff and its products.
2.1. The plaintiff's primary product under the trademarks ASTEL STRONG includes nails having ribbed shanks to provide effective and secure fastening when nailed into concrete so that the built structures can be held and framed sturdily. With great holding strength, these nails provide good support for the structures being built and they are essential tools used for renovation and home improvement projects. The plaintiff has invested a lot of time and effort in developing their products with a 6/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 humble mission to provide distinctive quality products that improve lives and satisfy customer needs.
2.2. The plaintiff honestly and bonafidely coined and adopted the mark "ASTEL STRONG" and logos in the year 2010 with the legitimate intention of distinguishing the plaintiff's products from other third-party products and has been continuously using the mark at least since 2010. By virtue of their long-standing, continuous, uninterrupted and prior use of the mark and of their statutory and common law rights vested with them, the trademark ASTEL STRONG and/logos are indistinguishable from the goods of the plaintiff. The plaintiff has exclusively used ATEL STRONG and logos in relation to goods that is nails used in construction of various industrial sheds, workshops and building, under Class 06 so that, they are uniformly perceived as indicative of the source of the plaintiff. The plaintiff, being the proprietor of the trademark ASTEL STRONG, enjoys exclusive rights in the trademark and is entitled to take actions against 7/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 unauthorized use thereof by third parties.
2.3. The plaintiff causes the manufacture of products from third party manufacturers from foreign market especially from China by authorized manufacturers and sells it to Indian wholesale dealers for further distribution under the trademark ASTEL STRONG and logos. The plaintiff's goods under the trademark ASTEL STRONG and logos are highly demanded in the markets on account of the high quality of products, timely delivery and consistency and therefore, the plaintiff has already built up a handsome and valuable trade thereunder. In lieu of such reputation and goodwill, the purchasing consumers associate the brand ASTEL STRONG and logos exclusively with the plaintiff and any unauthorised use of the plaintiff's mark for trading in goods/products is void ab initio and amounts to blatant violation of the duly protected rights of the plaintiff.
2.4. The plaintiff has regularly and continuously been promoting the 8/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 marks ASTEL STRONG and logos to the extent permissible through permitted channels of advertisements, publicities, promotions and marketing research and the plaintiff has been spending enormous amounts of money, efforts, skills and time thereon. The plaintiff's products under the trademarks ASTEL STRONG have garnered immense goodwill and reputation in lieu of widespread promotion and use of the mark by the plaintiff. The plaintiff's products under the trademark ASTEL STRONG are available in various e-commerce platforms such as IndiaMART, Exporters India, Connect2india, where prospective customers can contact the plaintiff and receive quotes on the products.
2.5. The plaintiff's ASTEL STRONG packaging, was originally created by the plaintiff with unique and distinctive layout and get-up and quality as original "artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957. Over the years, the plaintiff has used these artistic works on its packaging for its products sold under the mark ASTEL 9/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 STRONG. The logos and the packaging of the plaintiff, which is relevant for the present suit, have various distinctive features and has been used by the plaintiff through the course of their business. Apartfrom the various unique features of the product packaging, the unique black and gold colour, placement of mark, texts, images etc. on the packaging, is also unique and is meant to be aesthetically pleasing. The plaintiff has expended significant, time, effort, and artistic skills to create the original artistic work of the logos and of the ASTEL STRONG packaging/outer carton (hereinafter referred to as the Astel Strong artwork). Therefore, the plaintiff is the owner of the copyright in the said distinguishing features and elements of the logos and the Astel strong artwork, thereby, having exclusive rights to use or reproduce the features thereof in any material form.
2.6. The plaintiff periodically publishes causing notices in the local newspapers, confirming that the plaintiff is the prior adopter of the 10/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 plaintiff's trademark and the owner in the artistic work conceived, created, developed and designed by the plaintiff solely, which gives the plaintiff an exclusive right over the mark. The plaintiff has also been vigilant in safeguarding their rights and interest in the trademark ASTEL STRONG and has initiated rectification proceedings against third parties who have attempted to misappropriate or misuse their trademark ASTEL STRONG.
2.7. Around December 2023, the plaintiff during a routine check on the website of the Trademark Registry, came to know that on 18.06.2022, a party named Kolluru Veera Venkata Satya Rakesh has applied for registration of the work mark 'ASTEI STRONG CONCRETE NAILS' vide Application No.5493757 under Class 06. The application was accepted and published in Journal No.5493757 dated 31.10.2022. The plaintiff immediately upon gaining knowledge of the said party's application, filed the application for rectification of the trademark on 12.01.2024 before the Registrar of trademarks. 11/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 2.8. Around September 2022, the plaintiff came across ASTEL STRONG counterfeit products manufactured, sold imported, distributed by st the 1 defendant. Consequently, the plaintiff filed a criminal complaint st against the 1 defendant before the Inspector of Police, Patmata Police Station, Vijayawada City on 23.09.2022 pursuant to which, the police st oficials conducted a raid in 1 defendant's premises and their shock, around 400 cases of concrete nails under the trademarks ASTEL STRONG were st seized from the 1 defendant's premises and FIR was also registered on 25.09.2022.
2.9. Around December 2023, it was brought to the knowledge of the plaintiff through their distributors/customers in Vijayawada that the identical products under the phonetically similar trademark ASTEI STRONG and logos and packaging (herein after referred to as impugned marks) being made available in the markets. The packaging of their infringing products is almost identical and deceptively similar to that of 12/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 plaintiff's product packaging with all similar colour combinations, placement of feature and fonts. Not only is the mark ASTEI STRONG is visually, structurally and phonetically similar to the plaintiff's trademark ASTEL STRONG, but also the packaging and label of the impugned products reveal that they are almost identical to plaintiff's ASTEL STRONG PACKAGING AND LABEL. Further, the defendants have also used a logo which is deceptively similar to the plaintiff's logos. The impugned product not only infringes the trademark rights of the plaintiff in the label mark ASTEL STRONG, but also the trade dress as well as Copyright of the plaintiff's Astel Strong artwork. Apart from passing off of the defendant's products as that of the plaintiff's, they also diluting and tarnishing the plaintiff's trademark ASTEL STRONG and its trade dress. Over and above, the use of the impugned logo on the impugned product also violates the trademark right and Copyright in the artwork of the plaintiff in its logos.
13/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 2.10. Around January 2024, the plaintiff to ascertain the nature and extent and details of the parties involved in the dishonest use of the mark st ASTEI STRONG, investigated the business of the 1 defendant (as they had a prior history of infringement) and in the general market, which revealed the following facts, as confirmed by Investigator's affidavit.
st Details revealed during investigation from 1 defendant;
st i. The 1 defendant appears to be a proprietorship concern of Mr.Narasimha Rao.
ii. Mr.Narasimha Rao claimed to be in the business of wholesaling spare parts, nuts and bolts etc. for automobiles like trucks, lorry etc. and business of construction and real- estate and not dealing in any concrete nails. He claimed never to have dealt in any such product ever before in the past as well.
Details reveal during investigation with the 2nd defendant:
i. The 2nd defendant who is a owner of a hadware shop under the name and style. 'Kanigicharia Satyanarayan' offers concrete nails for sale, under the trademark, ASTEI STRONG.
14/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 nd ii. When enquired, the 2 defendant indicated that the nails under the brand ASTEL STRONG are no longer available in the markets and instead, the name of the product was changed to ASTEI STRONG.
iii. The 2nd defendant indicated that the impugned product under the mark ASTEI STRONG were being supplied by a supplier from China.
iv. The 2nd defendant refused to disclose further details about the supplier of the impugned products and indicated that the impugned product is only distributed in Vijayawada and not anywhere else.
2.11. The Investigator purchased a box of 1kg nails under the nd impugned trademark from the 2 defendant and obtained invoice of the nd same. The images of the impugned product purchased from the 2 defendant and a copy of the invoice dated 27.01.2024 are filed as plaint documents. Upon further, enquiry, the plaintiff was able to ascertain information on the import details for concrete nails from 01.01.2023 to 01.01.2024 via Volza Grown Global (www.volza.com) from China to India 15/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 st and upon perusal of the details, it was revealed that the 1 defendant has been importing concrete nails from China. Therefore, from the import data, st it is evident that the 1 defendant is engaged in the importation of concrete nd nails from China. The 2 defendant when asked about the distributor of the impugned goods, reused to disclosed any details even upon persistent request. Therefore, the plaintiff believes that the defendants 1 and 2 are colluding to manufacture, import distribute and sell the infringing products under the impugned trademarks.
2.12. The defendants are presently using the impugned mark which is identical to the plaintiff's trademark and trade dress which are almost identical to that of the plaintiff's with a sole intention to ride upon the reputation and goodwill to make illegal profit which is a clear case of infringement of plaintiff's registered trademark ASTEL STRONG and trade dress. Over and above, the defendants are also using an impugned logo that is deceptively similar to the plaintiff's logo which is complete 16/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 violation of the plaintiff's proprietary rights. Further, the defendants have violated the rights vested in the plaintiff under the Copyright Act, by materially reproducing the artistic works of the plaintiff, in their own packaging.
2.13. The action of the defendants are intentional, dishonest and are calculated to cause losses to the plaintiff by diverting its consumers, reducing sales and damaging the reputation of the plaintiff by usurping its goodwill and reputation attached to its trademarks and trade dress. There is extremely high likelihood of confusion as the impugned products are indistinguishable form the plaintiff's products, which will have a deleterious consequence on safety of the buildings and construction works and general public due to substandard quality products provided by the defendants.
2.14. The trademark registration granted in favour of the plaintiff is a right in rem and its misuse would not only affect the statutory and 17/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 common law rights of the plaintiff, but also the rights, interest and well-
being of general public who will be misled and confused with defendants' goods. Every day of such continued misuse would continue to harm the plaintiff and public at large. Further, the defendants continue to violate their rights on a daily basis. Therefore, the present suit has been filed contemplating an urgent interim relief against the defendants. The plaintiff reserves their rights to claim damages against the defendants, at a later point in time based on the rendition of accounts by the defendants and under to pay additional court fee if any, in respect of such quantum of damages as determined by this Court.
2.15. For the reasons stated above, the defendants need to be restrained by permanent injunction, from using the impugned mark, impugned trade dress and the impugned logo. Unless such reliefs are granted, irreparable harm and injury would be cased to the plaintiff. There are no equities in favour of the defendants. The balance of convenience is 18/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 in favour of the plaintiff.
3. Though the 1st defendant entered appearance through counsel, he had not filed the written statement within 30 days from the date of suit summons and hence, 1st defendant was set ex-parte by this Court on 06.06.2024. Further, there was no representation for the 2nd defendant on 06.06.2024 despite his name was printed in the cause list. Therefore, the 2nd defendant was also set ex-parte on the same day.
4. In order to substantiate his claim, the plaintiff filed his proof affidavit for chief examination reiterating the averments made in the plaint and he was examined as P.W.1 and also marked 20 documents as Ex.P.1 to Ex.P.20 in which, Ex.P.1 is the printout of the Authorized Economic Operator Certificate MSME Registration certificate and Certificate of Registration for Importer granted in favour of the plaintiff dated 13.08.2021, 01.10.2009 and 16.10.2019, Ex.P.2 is the printout of the list of Distributors of the plaintiff's product and their addresses, Ex.P.3 is the 19/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 printout of the Certificate of Authentication issued to the plaintiff's Distributor by the plaintiff for the mark ASTEL STRONG, Ex.P.4 is the printout of invoices in relation to sale of products under the mark ASTEL STRONG from the year 2015-2024, Ex.P.5 is the printout of the Bill of Lading pertaining to the import of the plaintiff's product from China dated 05.10.2015, Ex.P.6 is the printout of the promotional materials in relation to the mark ASTEL STRONG and logo, Ex.P.7 is the photocopy of the invoices issued by third parties to the plaintiff in relation to the promotional materials purchased under the marks ASTEL STRONG and logos, Ex.P.8 is the photocopy of the statements of accounts pertaining to the sales and marketing expenses in relation to the mark ASTEL STRONG as certified by Chartered Accountant dated 10.02.2024, Ex.P.9 is the printout of the Extracts of third-party websites indicating online presence of the plaintiff and its products dated 12.02.2024, Ex.P.10 is the printout of the Extract of the online record of the registry pertaining to App. 20/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 No.2910230 in class 6 for the mark ASTEL STRONG (Label) of the plaintiff dated 26.02.2015, Ex.P.11 is the printout of the Online status, Registration Certificates and certificate for use in legal proceeding of the registration of the mark ASTEL STRONG under the Application No.4359777 dated 27.11.2019, Ex.P.12 is the photocopy of the Caution Notices issued in the local newspaper, Vijayawada dated 25.09.2022, Ex.P.13 is the printout of the Rectification Application filed by the plaintiff against the third party trademark registration dated 12.01.2024, Ex.P.14 is the printout of the Complaint filed before the Inspector of Police, Patamata Police Station filed by the plaintiff dated 23.09.2022, Ex.P.15 is the printout of the images from the raid conducted by the Police on 24.09.2022 along with CD, Ex.P.16 is the printout of the FIR registered by Patamata Police Station dated 25.09.2022, Ex.P.17 is the original Affidavit of the Investigator Mr.Deepak Kumar and supporting annexures dated 29.01.2024, Ex.P.18 is the printout of the Extract of the import data of the 21/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 impugned products from China to India by defendant No.1 for the period 01.01.2023 to 31.01.2024, Ex.P.19 is the printout of the product packaging pertaining to the plaintiff's product, Ex.P.20 is the printout of the product packaging pertaining to the impugned product.
5. Since the defendants have not filed the written statement and remained ex-parte, the averments made in the plaint is un-challenged. The proof affidavit filed by P.W.1 and the documents marked on the side of the plaintiff are also un-challenged.
6. On a perusal of the averments made in the plaint and proof affidavit filed by P.W.1 and also the documentary evidence marked on the side of the plaintiff, this Court finds that the plaintiff has proved his claim.
7. Therefore, the suit is decreed as prayed for with cost. Consequently, connected applications are closed.
28.06.2024 (1/2) 22/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 Witness examined on the side of the plaintiff: Mr.Abhishek Jain – P.W.1 List of exhibits on the side of the plaintiff:
S.No. Exhibits Description of documents
1 Ex.P.1 The printout of the Authorized Economic Operator
Certificate MSME Registration Certificate and Certificate of Registration for Importer granted in favour of the plaintiff dated 13.08.2021, 01.10.2009 and 16.10.2019.
2 Ex.P.2 The printout of the list of Distributors of the plaintiff's product and their addresses.
3 Ex.P.3 The printout of the Certificate of Authentication issued to the plaintiff's Distributor by the plaintiff for the mark ASTEL STRONG.
4 Ex.P.4 The printout of invoices in relation to sale of products under the mark ASTEL STRONG from the year 2015- 2024.
5 Ex.P.5 The printout of the Bill of Lading pertaining to the import of the plaintiff's product from China dated 05.10.2015 6 Ex.P.6 The printout of the promotional materials in relation to the mark ASTEL STRONG and logo.
7 Ex.P.7 The photocopy of the invoices issued by third parties to the plaintiff in relation to the promotional materials purchased under the marks ASTEL STRONG and logos (original is produced, compared and returned to the plaintiff's counsel) 23/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 S.No. Exhibits Description of documents 8 Ex.P.8 The photocopy of the statements of accounts pertaining to the sales and marketing expenses in relation to the mark ASTEL STRONG as certified by Chartered Accountant dated 10.02.2024 (Original is produced, compared and returned to the plaintiff's counsel). 9 Ex.P.9 The printout of the Extracts of third-party websites indicating online presence of the plaintiff and its products dated 12.02.2024.
10 Ex.P.10 The printout of the Extract of the online record of the registry pertaining to App. No.2910230 in class 6 for the mark ASTEL STRONG (Label) of the plaintiff dated 26.02.2015.
11 Ex.P.11 The printout of the Online status, Registration Certificates and certificate for use in legal proceeding of the registration of the mark ASTEL STRONG under the Application No.4359777 dated 27.11.2019.
12 Ex.P.12 The photocopy of the Caution Notices issued in the local newspaper, Vijayawada dated 25.09.2022 (Original is produced, compared and returned to the plaintiff's counsel).
13 Ex.P.13 The printout of the Rectification Application filed by the plaintiff against the third party trademark registration dated 12.01.2024.
14 Ex.P.14 The printout of the Complaint filed before the Inspector of Police, Patamata Police Station filed by the plaintiff dated 23.09.2022.
15 Ex.P.15 The printout of the images from the raid conducted by the Police on 24.09.2022 along with CD.
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S.No. Exhibits Description of documents
16 Ex.P.16 The printout of the FIR registered by Patamata Police
Station dated 25.09.2022.
17 Ex.P.17 The original Affidavit of the Investigator Mr.Deepak
Kumar and supporting annexures dated 29.01.2024 (original invoice and visiting card are produced, compared and returned to the plaintiff's counsel). 18 Ex.P.18 The printout of the Extract of the import data of the impugned products from China to India by defendant No.1 for the period 01.01.2023 to 31.01.2024. 19 Ex.P.19 The printout of the product packaging pertaining to the plaintiff's product.
20 Ex.P.20 The printout of the product packaging pertaining to the impugned product.
Section 65B affidavit is filed for Exs.P1 to P7, P9, P10, P11, P13 to P16, P18 to P20.
List of witnesses examined on the side of the defendants - Nil List of exhibits marked on the side of the defendants - Nil 28.06.2024 (2/2) Index : Yes / No Speaking Order : Yes / No Neutral Case Citation : Yes/No Ksa-2 25/26 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.51 of 2024 P.VELMURUGAN. J.
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