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2014 DIGILAW 960 (DEL)

CATERPILLAR INC. v. SURESH DUA

2014-03-20

RAJIV SAHAI ENDLAW

body2014
Judgment Rajiv Sahai Endlaw, J. 1. The suit had been instituted by the plaintiff for permanent injunction restraining the seven defendants from manufacturing and selling counterfeit footwear in violation of the plaintiff’s statutory and common law rights and for other ancillary reliefs of delivery-up, rendition of accounts and damages, pleading: (i) that the plaintiff is a corporation organized and existing under the laws of the State of Delaware, United States of America and the exclusive proprietor of the trade marks CATERPILLAR, CATERPILLAR logo, CAT and CAT logo with respect to which it has secured registrations or has pending applications in over 100 countries all over the world; (ii) that the plaintiff has several registrations in India as well for the trade marks CATERPILLAR logo and CAT logo under several classes and more particularly under class 25, in relation to footwear; (iii) that there is a substantial recognition of the said trade marks as being distinctive of the plaintiff’s goods and they have come to acquire the status of well-known trade marks; (iv) that the plaintiff sometime in the month of October 2010, learnt of counterfeit footwear being sold by the defendants and upon initiation of investigation it was revealed that defendant no. 4 Anil Kumar and defendant no. 5 Shyam Prakash were manufacturing the counterfeit footwear and supplying the same to defendant defendant no. 1 Suresh Dua and defendant no. 2 Sunny Gulla - who were the wholesale distributors of the counterfeit footwear in Delhi, along with defendant no. 3 who was the retailer of the said counterfeit footwear in Delhi, as well as defendant no. 6 M/s Kempford Shoes and defendant no. 7 Rais Ahmed who were found to be the wholesale distributors of the counterfeit footwear in Agra; (v) that since the aforesaid trade marks found upon the footwear being manufactured and sold by the defendants are universally identified and associated in the public mind with the products and business of the plaintiff alone, the adoption by the defendants of the same is actuated with mala fide intention to misappropriate the plaintiff’s reputation/goodwill and constitutes infringement and dilution of the plaintiff’s registered trade marks as well as passing off of the defendants’ goods as that of the plaintiff’s. 2. This Court issued summons in the suit to the defendants on 04.01.2011 and vide order of the same date granted an ex-parte ad-interim injunction in favor of the plaintiffs. This Court issued summons in the suit to the defendants on 04.01.2011 and vide order of the same date granted an ex-parte ad-interim injunction in favor of the plaintiffs. This Court, at the request of the plaintiff, also appointed seven Local Commissioners to inspect the respective premises of the defendants. The Local Commissioners, in compliance of the orders of this Court, have submitted their reports. 3. The claims in the suit were subsequently settled with defendants no. 1, 3, 4, 5, 6 and 7 and decrees drawn as per separate compromise applications filed by the respective parties before this Court in that regard. This Court thereafter upon being satisfied of due service to defendant no. 2, the lone surviving defendant in the suit, vide order dated 18.04.2012 proceed ex-parte against the defendant No.2 and directed the plaintiff to file its affidavit by way of ex-parte evidence. 4. Accordingly, the plaintiff has filed the affidavit of Mr. James B. Buda, Senior Vice President and Chief Legal Officer of the plaintiff, and tendered, inter-alia, the following documents in evidence: (i) True Copies of the certificates of registration of trade marks CATERPILLAR logo and CAT logo, exhibited as PW1/7 and PW1/8 respectively; (ii) Affidavit of Mr. Pankaj Gupta, Independent Investigator appointed by the plaintiff prior to filing of the suit along with photographs corroborating the averments made in the plaint, exhibited as PW1/13 to PW1/16; (iii) Affidavit of Mr. Kishore Kumar, Independent Investigator appointed by the plaintiff subsequent to the ex-parte ad-interim injunction order passed by this Court, to prove violation thereof by the defendant no. 2 by continuing to offer the counterfeit footwear for sale, and exhibited as PW1/18; and (iv) Notary Report evidencing the purchase by Mr. Kishore Kumar, Independent Investigator of the counterfeit footwear sold by defendant no. 2 in defiance of the ex-parte ad-interim injunction order, exhibited as PW1/19. 5. The Local Commissioner appointed by this Court to inspect the premises of defendant no. 2 has also reported discovery of “39 pairs of CAT/CATERPILLAR shoes and 6 individual pieces of CAT/CATERPILLAR shoes”. The photographs enclosed with the Report also reveal near identity of the mark affixed on the footwear sold by the defendant no. 2 with the registered trade marks of the plaintiff. 6. 2 has also reported discovery of “39 pairs of CAT/CATERPILLAR shoes and 6 individual pieces of CAT/CATERPILLAR shoes”. The photographs enclosed with the Report also reveal near identity of the mark affixed on the footwear sold by the defendant no. 2 with the registered trade marks of the plaintiff. 6. In light of the unrebutted averments in the plaint, cogent evidence on record and the clinching report filed by the Local Commissioner, I have no hesitation in holding that the defendant no. 2 is guilty of blatant infringement of the plaintiff’s registered trade marks as well as of passing off his own goods as that of the plaintiff’s. Accordingly, a decree of permanent injunction restraining the defendant no. 2 from using marks upon its goods which are identical or deceptively similar to the trade marks of the plaintiffs, as well as of delivery-up to the plaintiff of all infringing materials in possession of defendant no. 2, is passed forthwith. 7. The plaintiff has also pressed for damages and placed reliance for the said purpose on the judgments of this Court in Time Incorporated Vs. Lokesh Srivastava 116 (2005) DLT 599, Malhotra Book Depot Vs. Mata Basanti Devi School of Biosciences & Biotechnology 195 (2012) DLT 514 and Kee Pharma Ltd Vs. Big M Healthcare 189 (2012) DLT 644. 8. In my opinion, the flagrant violation by the defendant no. 2 of the intellectual property rights of the plaintiff warrants award of damages. It cannot be lost sight of that the while the other defendants had entered appearance and have willfully suffered decrees against them, the defendant no. 2 has chosen not to appear and which has led to wastage of time, money and resources of the parties as well as this Court. Lastly, it must be noted that IA 20123/2011 under Order 39 Rule 2A of the CPC filed by the plaintiff upon finding the defendant no. 2 to be in violation of the ex-parte ad-interim injunction order of this Court and in which notice was issued vide order dated 19.12.2011, is also pending before this Court. The documents filed along with the application, being the Report of the Independent Investigator as well as the Notary Report, exhibited in evidence as PW1/18 and PW1/19 supra, certainly suggest the factum of violation of Court’s orders by the defendant no. 2. The documents filed along with the application, being the Report of the Independent Investigator as well as the Notary Report, exhibited in evidence as PW1/18 and PW1/19 supra, certainly suggest the factum of violation of Court’s orders by the defendant no. 2. Though I do not deem it appropriate to pass any further orders on the contempt application of the plaintiff in light of the reliefs already granted above, I have considered the same to be a relevant factor in deciding the entitlement and quantum of damages. 9. Accordingly, a decree for recovery of punitive damages is also passed in favor of the plaintiffs for a sum of Rs. 1,50,000. The suit is decreed in favor of the plaintiff and against the defendant no. 2 in the aforesaid terms along with costs. Counsel’s fees assessed at Rs. 20,000. Decree sheet be drawn up.