Bombay High Court
Unilever Plc. And Anr vs Ashok Kumar (Unknown Person) on 6 November, 2020
Author: K.R. Shriram
Bench: K.R.Shriram
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.5825 OF 2020
IN
COMMERCIAL IP SUIT (L) NO.5820 OF 2020
WITH
LEAVE PETITION (L) NO.5827 OF 2020
Unilever Plc. And Anr. ....Applicants/Plaintiffs
V/s.
Ashok Kumar (unknown person/s) ....Defendant
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Mr. Vinod Bhagat a/w. Ms. Laher Shah, Ms. Radhika Mehta and Ms. Prachi
Shah i/b. G.S. Hegde and V.A. Bhagat for applicants/plaintiffs.
None for defendant.
----
CORAM : K.R.SHRIRAM, J.
DATED : 6th NOVEMBER 2020 P.C. :
1 In the present Interim Application, applicants/plaintiffs seek to move for ad-interim reliefs without notice for the reasons set out in paragraph 39 of the plaint. The action in the present suit is for infringement of plaintiffs' registered trade marks, copyrights combined with an action for passing off. Mr. Bhagat states that leave petition under Clause XIV of the Letters Patent (Bombay) has been lodged and pending hearing of the leave petition, presently seeks atleast ad-interim reliefs in terms of prayer clauses - (a), (b), (d) and (e).
2 According to plaintiffs, plaintiff no.1 is one of the oldest multinational companies and its products are available in around 190 Gauri Gaekwad 2/14 901.IAL-5825-2020.doc countries. Plaintiff no.1 owns over 400 brands. According to plaintiffs, since about the year 1970, plaintiff no.1 started using an artistic device of the letter "U" placed above the word UNILEVER, as its house mark, on wide variety of goods manufactured, marketed and/or sold by it. Plaintiff no.1 has in the year 2004, adopted and used a new stylised U-Logo, a specimen copy of which is annexed at Exhibit A to the plaint.
3 In para 8 of the plaint, plaintiffs have relied upon the registration for the U-Logo and copy of the trade mark registration certificate has been appended at Exhibit B to the plaint. Plaintiff no.1's "U"
logo has been used in India by plaintiff no.2 after obtaining a license/permission from plaintiff no.1. Evidence substantiating the use of the U-Logo trade mark is annexed at Exhibit C to the plaint. It is submitted that plaintiff no.1 has acquired both statutory and common law rights in the said "U" logo, which is very popular and is exclusively associated with plaintiffs.
4 Plaintiff no.2 is a subsidiary of plaintiff no.1 in India and is India's largest fast moving consumer goods (FMCG) company, with leadership in Home & Personal Care Products and Foods & Beverages. 5 In or about the year 1952, the trade mark LAKME was adopted by The Tata Oil Mills Company Limited for use in relation to skin care cosmetic products. By virtue of a series of devolution of rights and vide a Gauri Gaekwad 3/14 901.IAL-5825-2020.doc Deed of Assignment dated 13.08.1998, the said trade mark LAKME came to be assigned in favor of plaintiff no.2, who has continuously used the said trade mark since then. Plaintiff no.2 is the subsequent registered proprietor of the trade mark LAKME word per se and of various formative trade marks inter alia containing the word LAKME as its essential and memorable feature and is used in relation to cosmetic preparations. A list disclosing details of plaintiff no.2's various trade mark registrations as well as copies of the registration certificates are annexed at Exhibit D to the Plaint. 6 In or about the year 2005, plaintiff no.2 adopted the trade mark NINE TO FIVE (9 to 5) for use upon and in relation to its specific range of LAKMÉ products. Plaintiff no.2 has secured registrations of the said trade marks LAKME NINE TO FIVE and NINE TO FIVE, details of such trade mark registrations are mentioned in para 18 of the plaint and copies of the registration certificates have been appended at Exhibit E to the Plaint. Plaintiff no.2 had in and around the year 2011, appointed a designing agency to design a new original artwork to be used in respect of its LAKMÉ NINE TO FIVE (9 to 5) range of cosmetic preparations. The same is annexed at Exhibit G to the plaint. The copyright in the original artistic work was assigned to plaintiff no.2 as required under the Copyright Act, 1957, by a Deed of Assignment dated 19th March 2019, a copy whereof is appended at Exhibit F to the plaint. Plaintiff no.2 is therefore the owner of the copyright subsisting in the original artistic work of LAKME NINE TO FIVE (9 to 5) Gauri Gaekwad 4/14 901.IAL-5825-2020.doc cosmetic preparations.
7 In the year 2010, plaintiff no.2 got designed a new logo to be used in respect of its products bearing the trade mark LAKMÉ, through a designing agency. Plaintiff no.2 has annexed at Exhibit H to the plaint, a copy of the Deed of Assignment depicting the logo evidencing assignment of rights from the author in its favour. Plaintiff no.2 has secured registration of this trade mark as well. Copy of the registration certificate and online status appearing on the website of the Trade Marks Registry relating to the said registration is appended at Exhibit I to the plaint. 8 Plaintiff no.2 has been selling its goods under its LAKME trade marks bearing the L Logo including LAKME NINE TO FIVE (9 to 5) and the original artistic works thereof extensively pan India. The sales and advertisement figures relating to such goods are mentioned in para 26 of the plaint and copies of certificates from its Chartered Accountants in support thereof are annexed are Exhibit J to the plaint. Also annexed at Exhibit K are copies of plaintiff no. 2's few sample sales invoices, annual reports and advertisement cuttings. Plaintiffs have obtained orders against third party infringers and copies of such orders are annexed to the plaint at Exhibit L. 9 According to plaintiffs, in the first week of November 2020, plaintiffs' investigating team came across three different premises of defendant wherefrom defendant is conducting its nefarious activities of Gauri Gaekwad 5/14 901.IAL-5825-2020.doc marketing, supplying and selling infringing cosmetic preparations bearing counterfeit marks LAKME, LAKME NINE TO FIVE (9 to 5) depicted under pirated artworks identical to those of plaintiff. The counterfeit marks depicted under pirated artworks also mention on its packaging the name, address and the corporate logo of plaintiffs. Plaintiffs have obtained products from defendant which products reveal minor visible differences when compared with plaintiffs' original LAKME cosmetic preparations. These differences were sufficient to identify the same as counterfeit products. Such counterfeit products also include counterfeit brand extensions not manufactured by plaintiff no.2 for its LAKME range of cosmetic preparations. Investigations conducted on defendant has further revealed presence of few godowns where such counterfeit goods are stocked and stored. Defendant, whose identity plaintiff is yet to ascertain, is conducting its nefarious activities surreptitiously from all such addresses mentioned in the cause title of the plaint. Defendant is clandestinely conducting its business operations of selling counterfeit products, which infringe plaintiffs' trade marks and artworks, strictly in cash without issuing any invoice. Plaintiffs have appended colour representations of defendant's counterfeit products including brand extensions. Plaintiffs have also produced copy of the investigation report and copy of the Quality Assurance Report obtained by plaintiffs. All of this is appended at Exhibit M to the plaint.
Gauri Gaekwad
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10 It is also averred in para 29 of the plaint that defendant is
unknown person/s conducting its activities clandestinely. Through the investigation, plaintiffs have thus far been able to only identify the addresses of such unknown person/s where from such nefarious counterfeit activities are being conducted. Plaintiffs are not aware of the name or constitution of the said defendant, whether defendant is a single entity or multiple entities and the manner in which it conducts its business. Accordingly plaintiffs have named defendant as "Ashok Kumar", a term synonymous to the internationally known "John Doe". Plaintiffs have submitted that upon the identity of defendant being known the generic name "Ashok Kumar" shall be substituted by the real names who will then be impleaded in the present proceeding. I am in agreement with plaintiffs' said submission. 11 I have gone through the plaint in great detail. Prima facie, plaintiffs' trade mark LAKME and LAKME Nine to Five (9 to 5) are popular and well known trade marks which enjoy enormous goodwill and reputation. The said trade marks and artworks are distinctive of plaintiffs. Upon perusing the plaint, it is evidently clear that defendant is infringing upon plaintiffs' trade marks and copyrights in the artistic works as aforementioned. A cursory look at defendant's infringing products would be mistaken with the products of plaintiffs. One cannot make out any difference between the two. The rival comparisons are produced below :
Plaintiffs' product Defendant's counterfeit products Gauri Gaekwad 7/14 901.IAL-5825-2020.doc alongwith brand extensions Gauri Gaekwad 8/14 901.IAL-5825-2020.doc
12 In the aforesaid circumstances, I find that a strong prima facie case is made out by plaintiffs for granting ad-interim reliefs. The balance of convenience is also in favour of plaintiffs. In view of what is stated in paragraph 39 of the plaint and the foregoing discussion, I am satisfied that giving any notice to defendant before passing the present order would defeat the very purpose of granting of any ad-interim reliefs. In these circumstances, there shall be an ad-interim order in terms of prayer clauses
(a), (b), (d) and (e) except the bracketed portion of the Interim Application which read thus:-
(a) pending the hearing and final disposal of the suit, defendant by themselves, their proprietor/partners, servants, agents, distributors, dealers, assignees, stockists and all those connected with defendant in their business be restrained by an order and temporary injunction of this Hon'ble Court from storing, stocking, marketing, supplying, distributing, selling, offering for Gauri Gaekwad 9/14 901.IAL-5825-2020.doc sale and/or using in any manner whatsoever in relation to their cosmetic preparations and other like goods used in the cosmetic industry, the impugned counterfeit marks or any mark/s identical with and/or deceptively similar to plaintiffs' trade marks LAKME, LAKME NINE TO FIVE (9 to 5), L- Logo and the U-Logo, so as to infringe upon plaintiffs' aforesaid trade mark LAKME registered under Nos. 604703, 782606, 2188730, 631532, 744942, 874356, 1330997, 1500385, 1537007, 1678791, 1706559, 1706560, 1745477, 1754505, 1765977, 1950676, 2168389, 2168392, 2225490, 2225491, 2618511, 2618613, 2740511, 2946833, 2947708, 3090122, 3218639, 3406848, and 3707467, the trade mark LAKME NINE TO FIVE (9 to 5) registered under Nos. 1706560 and 2548745, the trade mark L-Logo registered under No. 2188730 and the trade mark U-
Logo registered under No. 1272187 all in class 03, respectively;
(b) pending the hearing and final disposal of the suit, defendant by themselves, their proprietor/partners, servants, agents, distributors, dealers, assignees, stockists and all those connected with defendant in their business be restrained by an order and temporary injunction of this Hon'ble Court from storing, stocking, marketing, supplying, distributing, selling, offering for sale and/or using in any manner whatsoever in relation to their cosmetic preparations and other like goods used in the cosmetic industry, the pirated artworks of LAKME NINE TO FIVE (9 to 5) and L-Logo (appended at Exhibit M to the plaint) bearing a colour scheme, lay-out, get- up, style, artwork, trade dress and representation or any other artwork/s which is identical with and/or is substantially/strikingly similar to plaintiffs' original artistic works of LAKME NINE TO FIVE (9 to 5) (appended at Exhibit G to the plaint) and L- Logo (appended at Exhibit H to the plaint), so as to infringe upon plaintiffs' subsisting copyrights as depicted on their LAKME NINE TO FIVE (9 to 5) and L-Logo labels;
(d) pending the hearing and final disposal of this suit, the Court Receiver, High Court, Bombay, or such other fit and proper person/s as this Hon'ble Court thinks fit, be appointed Receiver/s with all powers under Order XL Gauri Gaekwad 10/14 901.IAL-5825-2020.doc Rule 1 and Order XXXIX Rule 7 of the Code of Civil Procedure, 1908, to attend, enter upon with representative(s) of Plaintiffs and search the premises, offices, manufacturing units, factories, shops, warehouses, godowns, houses of defendant without notice to defendant, other premises wherever the goods viz. cosmetic preparations and other like goods used in the cosmetic industry, bearing the counterfeit marks or the pirated artworks or any other mark/s or artwork/s identical with and/or deceptively/substantially similar to the Plaintiff's registered LAKME trade marks, U -Logo and/or the pirated works/trade dress of LAKME NINE TO FIVE (9 to 5) and L-Logo label depicted on its label packaging, and/or any other mark/s or artwork/s, as may be found, stocked, sealed or are lying and to break open such locks with police assistance (if needed), make an inventory, seize and take possession/custody thereof by sealing the said goods, handing over possession of such seized goods to plaintiffs on superdari who would keep such inventory of seized goods at their premises under lock and key and also of all related items such as stationery, production registers, invoices, printing and packaging materials, screens, cylinders, blocks, moulds, dyes, stencils, machinery and master plates used to print the infringing packaging materials, lying at the premises, offices or factories, manufacturing units, godowns, warehouses of defendant or their agents or at any other place/s and defendant by themselves, their proprietor/partners, servants, employees, representatives be ordered and directed to deliver up all of the aforesaid to the Court Receiver or to such other fit and proper person as this Hon'ble Court thinks fit and the Court Receiver must carry out such search and seizure with local police assistance, if necessary, at no costs;
(e) pending the hearing and final disposal of the suit, this Hon'ble Court be pleased to order and direct defendant by themselves, their proprietor/partners from giving and/or making complete disclosure of documents on oath including revealing : (a) the name/s and address/es of the people/parties/ entities who are manufacturing the counterfeit goods as complained off and from whom defendant have purchased/bought such Gauri Gaekwad 11/14 901.IAL-5825-2020.doc goods, (b) the name/s and address/es of the people/parties to whom such goods have been sold, supplied and/or distributed (c) the name/s and address/ es of the people/entities who place such orders of the impugned goods and other like cosmetic preparations bearing the impugned counterfeit marks under pirated artworks as complained off hereinabove, [(d) defendant's assets; and pursuant to such disclosures being made, defendant be restrained from disposing of or dealing with their assets in any manner whatsoever including in a manner which may adversely affect plaintiffs from recovering damages, costs or other pecuniary remedies from defendant as this Hon'ble Court may award;] 13 In view of the current restrictions on travel and on gatherings, some special provisions are necessary. It is not possible for the Court Receiver to travel to defendant's location. Hence the following directions:
(a) Mr Bhagat has given me the names of advocates from Delhi and Uttar Pradesh who can be appointed as Additional Special Receivers to assist the Court Receiver attached to this Court.
(b) For this order, Mr.Aviral Tiwari, Mr. Adeel Ahmad, Mr. Rahul Gulati and Mr. Samrat Gupta Advocates, are appointed as the Additional Special Receivers to execute the order in terms of prayer clause (d). The fee of the Additional Special Receiver so appointed for executing the commission is fixed at Rs. 25,000/- each.
(c) It is made clear that the Court Receiver, High Court, Bombay, also stands appointed, and that the appointment of Mr.Aviral Tiwari, Mr. Adeel Ahmad, Mr. Rahul Gulati and Mr. Samrat Gupta is for convenience.
(d) Mr.Aviral Tiwari, Mr. Adeel Ahmad, Mr. Rahul Gulati and Mr. Samrat Gupta will submit their report by email to the Court Receiver, High Court, Bombay, at the following email ids: [email protected] with a cc to Gauri Gaekwad 12/14 901.IAL-5825-2020.doc [email protected].
(e) (1) Mr. Aviral Tiwari contact details are: Mobile:
9811758739 Email id: [email protected] (2) Mr. Adeel Ahmad contact details are Mobile:
9336869007 Email id: [email protected] (3) Mr. Rahul Gulati contact details are Mobile:
7985443138 Email id: [email protected] (4) Mr. Samrat Gupta contact details are Mobile:
9307165801 Email id: [email protected]
14 Execution and Implementation of the order in terms of prayer clause - (d) :
(a) The Additional Special Receivers Mr.Aviral Tiwari, Mr. Adeel Ahmad, Mr. Rahul Gulati and Mr. Samrat Gupta Advocates, are empowered and authorized, acting on a digitally signed copy of this order, to take the assistance of the local police authorities in the execution of this commission.
(b) Those police authorities are directed to act on production of a digitally signed copy of this order.
(c) The Additional Special Receivers are directed to seize and seal all infringing goods bearing the counterfeit marks and artworks, make an inventory and hand over the possession of such seized goods to plaintiffs on superdari.
(d) They may, if necessary, break open any locks with the assistance of the police.
Gauri Gaekwad 13/14 901.IAL-5825-2020.doc 15 This order is not to be uploaded on the server till such time as the Additional Special Receivers complete the execution of their commission.
16 Plaintiffs are to comply with the provisions of Order XXIX Rule 3 of the Code of Civil Procedure, 1908 within 14 working days of the Court Receiver/Additional Special Receivers completing and execution their commission under this order. They are permitted to serve the Plaint, the Interim Application, the Clause XIV petition and all other documents by email and, if possible, in hard copy through Mr.Aviral Tiwari, Mr. Adeel Ahmad, Mr. Rahul Gulati and Mr. Samrat Gupta, who will also file a soft copy of their affidavits (transmitted to this Court's Receiver by email), with a hard copy to follow when normal court working is restored. 17 Liberty to defendant to apply for variation, modification or recall of this order only after two working days' prior written notice to the Advocates for plaintiffs.
18 Defendant is to file an affidavit in compliance with the order in terms of prayer clause (e) within three weeks of service being effected, whether by email or in hard copy.
19 Considering that the above matter has been heard via Video Conferencing due to the COVID-19 pandemic, it will not presently be possible to sign a copy of this order. In these circumstances, this order will Gauri Gaekwad 14/14 901.IAL-5825-2020.doc be digitally signed by the Private Secretary of this Court and all concerned parties are directed to act on the digitally signed copy of this order. They will act on a production of a digitally signed copy sent by fax and/or email. 20 List this Interim Application for further ad-interim reliefs on 18th December 2020.
(K.R. SHRIRAM, J.)
Digitally signed
by Gauri A.
Gauri A. Gaekwad
Gaekwad Date:
2020.11.07
11:40:36 +0530
Gauri Gaekwad