Pravin Anand and Achuthan Sreekumar illustrate how limited information isn’t a barrier to stopping an infringing activity
In July 2018, the plaintiffs, through credible market sources, received information that a ship containing large quantities of counterfeit/infringing toothbrushes bearing the brand COLDENT/COLDENT Double Action Toothbrush had left the port of Ningbo, China, and was en route to India.The case, Colgate Palmolive Company & Anr v John Doe & Ors, was filed before Delhi High Court, and heard in the same month.
What was particularly peculiar about this situation was that the plaintiffs did not have clear information regarding the final destination, where the consignment of infringing toothbrushes was being sent to and the plaintiffs also did not know the names or the identity of the importers.This infringement case shows how a lack of information may not hinder its success before the courts.
Anand and Anand represented the plaintiffs and the matter was argued at length. The court was provided with various details such as the names of the ships, container numbers, port details, etc. After hearing the arguments, the court, through an ex-parte order dated 13 July 2018, made the following observations and directions:
- As per section 140 of the Trademarks Act, the proprietor or a licensee of a registered trademark may give notice in writing to the collector of customs to prohibit the import of any goods if such an import constitutes infringement under section 29(6)(c) of the act. Customs officials may require the importer of the goods, or his agent, to produce any documents in his possession relating to the goods and to furnish information qua the importer and exporter.
- Further section 2(33) of the Customs Act defines “prohibited goods” as importing or exporting any goods that is subject to any prohibition under this act or any other law for the time being in force. But it does not include any such goods in respect of which the conditions subject to which the goods are permitted to be imported or exported have been complied with. It includes exporting or importing goods, which are subject to any prohibition under the Customs Act or any other law for the time being in force, including the trademark or patent law etc, per Section 11(2)(n) of the Customs Act.
- Since the goods being imported are alleged to be spurious, hence the Secretary of the Central Board of Indirect Taxes and Customs and the Department of Revenue in the Ministry of Finance are directed to immediately freeze the contents of container No BMOU5917648 coming from Ningbo via the vessel called HS BAFFIN V 015W en route to Kolkata port, and to divulge the details of the goods, the details of the importer, the value and number of the goods, etc, to the plaintiffs and in case the importer is found by the customs, he/she be restrained from taking custody of the goods till the next date of hearing.
The plaintiffs thereafter took appropriate steps to inform the concerned government departments as well as the customs authorities. Finally, the consignments containing the infringing toothbrushes were seized and kept in the custody of customs authorities.
It was later known that the counterfeit toothbrushes were imported by certain entities in Nepal. The products were to be unloaded at Kolkata port and thereafter sent to Nepal by road.
It was argued that even though the infringing products were not for sale in India and was for Nepal, the goods would still be of an infringing nature and liable to be seized as the word “import” as contained in section 29 of the Trademarks Act, 1999, means not only bringing goods into India, but also includes importation for transit across the country.
The matter was finally settled with the importers giving an undertaking never to use the mark Coldent or any other mark or brand, which is in any manner similar to the well-known trademark Colgate. The importers further agreed to destroy the infringing goods, which were seized by and kept with the customs authorities. The matter was therefore decreed by the court vide the order dated 24 April 2019, in light of the said undertakings given by the importers.