3M Company vs Mr. A. Patel and Others

Rajiv Sahai Endlaw, J.—The plaintiff, a company incorporated under the laws of United States of America, has instituted this suit for permanent injunction restraining the defendants from manufacturing, selling, advertising or dealing in stationery items and similar goods bearing the trademark 3M and/or POST-IT and/or POST-IT logo or any other trademark or logo deceptively similar thereto.

The plaintiff, as a proprietor of the said mark, claims infringement and has also sued for injunction against passing off. Ancillary reliefs of delivery, rendition of accounts, recovery of damages and costs have also been prayed.

The suit was instituted against Mr Ashok Patel as proprietor of M/s Standard Xerox and Stationers as defendant no.1, against M/s Sundaram Marketing through its partners Mr Lakhan Patel and Mr Valji Patel as defendant No.2 and against Mr Ashok Kumars as defendants No. 3 to 5 on the John Doe principle, held applicable to India. However, during the pendency of the suit, none else was brought on record, hence, the suit is treated as against defendants No. 1 and 2 only.

Vide ex parte order dated 14th September, 2006, the defendants were restrained from manufacturing or selling or dealing in counterfeit /infringing stationery items and similar goods bearing the trademark/trade name 3M and/or the trademark POST-IT and/or the POST-IT logo and/or any other deceptively similar trademark or logo. On application of the plaintiff, Court Commissioners were also appointed to visit the premises of the defendants No. 1 and 2 and to make an inventory and seize all the products bearing the trademark/trade name 3M, POST-IT etc. The Commissions have been executed.

None appeared for the defendants in spite of service. Vide order dated 22nd November, 2006 the defendants were ordered to be proceeded against ex parte and the interim order was made absolute during the pendency of the suit. However, thereafter on 7th February, 2007, 10th May, 2007, 6th July, 2007, 18th July, 2007 and 6th December, 2007 the counsel for the defendants appeared. IAs 7914- 7917/2007 were also filed by both the defendants. The defendants along with the said applications also filed their written statements. The applications were for setting aside the ex parte order, condonation of delay in filing the written statements and for setting aside of the order making the ex parte order absolute during the pendency of the suit. However, the defendants again stopped appearing and the said applications were dismissed for non prosecution on 30th May, 2008 and the plaintiff directed to lead its ex parte evidence. The defendants remain ex parte. The plaintiff has filed affidavits by way of examination in chief of its constituted attorney Ms Sadhna Kaul and of Mr. Sanjeev Sharma, Chartered Accountant.

It is the case of the plaintiff and in evidence that the plaintiff is the registered proprietor of the trademark/trade name 3M and trademark POST-IT in India in respect of sheet material, paper etc. The said registrations have been proved as Exhibit P3 to Exhibit P8. The plaintiff claims similar registrations in USA and UK also. The defendants were found by the plaintiff to be engaged in the business of marketing and selling stationery items and were further found to be selling counterfeit stationery items bearing the plaintiff�s trademark and trade name 3M and POST-IT. An independent investigator Ms Vaishali on behalf of the plaintiff made purchases from the defendants of the said material and which was found to be counterfeit; the same was offered for sale at much lower price than the goods of the plaintiff. Even though the said independent investigator Ms Vaishali has not been examined but I find the deposition of the constituted attorney of the plaintiff to be believable. The said witness of the plaintiff has also deposed as to the differences between the original and the counterfeit. The suit was filed to prevent such sale of counterfeit goods of the plaintiff.

The said actions of defendant definitely amount to infringement of the registered trademark/trade name of the plaintiff. The written statement of the defendants, although not taken on record, is of bare denial. As aforesaid, the commissions ordered by this Court were executed and the commissioners have filed their report. The commissioners deputed to visit the premises of the defendants have reported seizure of counterfeit goods of the plaintiff. The defendants have, in their written statements/applications as aforesaid filed, even though not pursued, not given any explanation whatsoever as to the seizure of counterfeit goods from their premises. In fact, it was, inter alia, the case of the defendants that they were willing to suffer a decree for injunction as claimed by the plaintiff and the plaintiff had agreed to give up its claim for delivery and damages against the defendants.

In the circumstances aforesaid, the plaintiff has become entitled to a decree for injunction. No purpose would be served in ordering rendition of accounts against the defendants inasmuch as trader�s dealing in counterfeit goods are not known to keep accounts thereof. However, notwithstanding the defendants having not contested the suit and there being no grievance of violation of interim order of this Court, following the principles laid down in Microsoft Corporation Vs. Mr. Yogesh Papat and Another, and in Time Incorporated Vs. Lokesh Srivastava and Another, ), and on the basis of conservative view of the deposition of Mr. Sanjeev Sharma, witness of plaintiff, it would not be fair to let the defendants go scot free. Punitive damages of Rs 2 lacs inclusive of costs of the suit are decreed against each of the defendants 1 and 2. There was no dispute that Mr Ashok Patel is the proprietor of M/s Standard Xerox and Stationers and Mr Lakhan Patel and Mr Valji Patel were the partners of M/s Sundaram Marketing. The punitive damages would thus be recovered from them as aforesaid. The suit of the plaintiff is thus decreed against the defendants 1 and 2 for the relief of permanent injunction as claimed in para 32 (a)(b) and (c) and for recovery of Rs 2 lacs from each of the defendants 1 and 2 inclusive of costs.

The decree sheet be drawn up accordingly.