PARTIES

The Plaintiffs are Nippon Steel & Sumitomoto Metal Corporation is a large steel producing company.

The Defendants Kishor D. Jain who is involved in the business of trading in steel

BRIEF FACTS

The plaintiff in the present case filed a suit for a permanent injunction against the defendants from using its trademark. The suit was filed on the basis of a complaint that the plaintiff received from a steel company in Saudi Arabia, which brought to the notice of the plaintiff that the defendants have been selling carbon pipes bearing the plaintiff’s trademark and logo, falsely representing the same to be emanating from the plaintiff.

On further inquiry, it was found that the supplies of the defendants were accompanied by fabricated inspection certificates issued in relation to the counterfeited goods.

ISSUE

Whether the acts of the defendants make them liable for counterfeiting the plaintiff’s trademark under the Trademarks Act, 1999?

APPLICABLE RULES

• Section 102 of the Trademark Act, 1999
• Section 103 of the Trademark Act, 1999.

ARGUMENTS

On such allegations of counterfeiting products by the plaintiff, the Court-appointed receivers to visit the premises of the defendants and report on their activities.

The reports of the receivers showed the defendants possessing several inspection certificates and a large quantity of branded and unbranded pipes on their premises.

The defendants submitted that after receiving pipes from the supplier, they had put the plaintiff’s logo on the pipes and thereafter had the inspection certificates fabricated so as to falsely represent that the goods originated from the plaintiff.

The plaintiff submitted that the goods in question are used in the oil industry and may result in dreadful accidents if they are fake and do not meet the required standards. The plaintiff also submitted that such acts of counterfeiting by the defendants, in addition to causing serious damage to the goodwill of the company, bring disrepute to the reputation of the country. On the basis of its submissions, the plaintiff pleaded before the Court to impose a heavy and unprecedented cost on the defendant.

The Court took into consideration the fact that the goods in question are used for compassionate purposes, and non-satisfaction of the safety requirements of such products were bound to have “disastrous consequences”

DECISION

In view of this fact, the Court took the stand to set an example and imposed a cost of five crore Rupees (5,00,00,000/-) on the defendants to act as a deterrent factor for all such entities undertaking counterfeiting activities. In addition to the heavy cost, the Court also ordered the defendants to furnish a personal undertaking stating that it would communicate with all the entities to which it supplied the counterfeited products and that it would also publish a Caution Notice in Saudi Arabia where the importer’s business is located.

The Bombay High Court took cognizance of the fact that industries are susceptible areas and apparatus that does not meet safety requirements may result in dreadful consequences; and hence, in order to set a deterrent for all such entities engaging in the selling of counterfeiting products, took strict penal action in the form of a high cost.

Author:  Niharika Sanadhya, Litigation Associate at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.