M/S.Micro-Pak Ltd v. Pranam Ji Creations
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated:21.03.2018
CORAM
THE HON'BLE MR.JUSTICE M.SUNDAR C.S.No.776 of 2017 & O.A.Nos.996 to 998 of 2017 & A.Nos.6184 and 6185 of 2017 1.M/s.Micro-Pak Ltd., Suite 2504, 25/F, Tower 6 The Gateway, Harbour City 9, Canton Road, TsimShaTsul Kowloon, Hong Kong Represented by its Power of Attorney Holder Mr.SateeshJadhav
2. M/s.Gantonde Leathers and Accessories P Ltd., Corium House, Alsa Garden Complex, A Block, V Floor 58, Harrington Road Chetpet, Chennai - 600 031 Represented by its Managing Director Mr.SateeshJadhav ... Plaintiff Vs Pranam Ji Creations 1124/11, Govind Puri Kalkaji, New Delhi Delhi-110 019 India ... Defendant Plaint filed under Order IV Rule 1 of Original Side Rules read with Sections 27, 134 and 135 of the Trademarks Act, 1999 read with Section 51, 55 and 62 of the Copyright Act, 1957 seeking perpetual injunction restraining the defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner infringing the 1st plaintiff's registered trademark "Micro-Pak" by manufacturing, selling, offering for sale, stocking, advertising, antimicrobial stickers, or any moisture management and mould prevention products or any other stickers or product or goods using the Trade mark
Micro-Pak or any other trade mark/s which is/are identical with or deceptively similar to the 1st plaintiff's resgistered Trade Mark "Micro-Pak" or in any other manner whatsoever; perpetual injunction restraining the defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner manufacturing, selling, offering for sale, stocking, advertising, anti-microbial stickers, or any moisture management and mould prevention products or any other stickers or product or goods under the trademark "Micropak" or any other trademark/s which is/are identical with or deceptively similar to the 1st plaintiff's Trade Marks, namely (i) Micro-Pak (word), (ii) Micro-Pak Green Label (filed as Plaint Document No.2) or (iii) Micro-Pak Trade Dress (filed as Plaint Document No.
3) so as to pass off the Defendant's products as and for those of the first plaintiff's products or in any manner connected with the plaintiffs; perpetual injunction restraining the defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner infringing the copyright of the first plaintiff by reproducing and/or using the plaintiff's said Artistic Works namely (i) Micro-Pak (word), (ii) Micro-Pak Green Sticker (filed as Plaint Document No.2) or (iii) Micro-Pak Trade Dress (filed as Plaint Document No.
3) or any other artistic works which are a substantial reproduction of the 1st plaintiff's said artistic works or in any other manner whatsoever; to direct the defendant to surrender to plaintiff for destruction of the defendant's Counterfeit products, packets, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the 1st plaintiff's said trademarks/artistic works or any other trademark/artistic work which is/are deceptively similar to that of the 1st plaintiff's; for a preliminary decree in favour of the 1st plaintiff directing the defendant to render account of profits made by use of plaintiff's said Trademarks /Artistic works and the trade marks/artistic works and a final decree be passed in favour of the 1st plaintiff for the amount of profits thus found to have been made by the Defendant after the latter have rendered accounts; to direct the defendant to pay to the plaintiff a sum of Rs.
25,01,000/- as damages for acts of passing off and infringement of copyright committed by the Defendant till date and for the costs of the suit. For Plaintiff : Mr.Madhan Babu For Defendant : Mr.
JUDGMENT
Mr.Madhan Babu, learned counsel on record is before this Commercial Division on behalf of both the plaintiffs. To be noted, there
are two plaintiffs in this suit.
2.On behalf of the sole defendant Mr.Shobhan M Padmanabhan, counsel on record for the sole defendant is before this Commercial Division.
3.With regard to the litigants, both plaintiffs are companies. While plaintiff No.1 is a Public Limited Company, Plaintiff No.2 is a Private Limited Company.
Both the companies are represented by Mr.SateeshJadhav, Managing Director of Plaintiff No.2 company and Power of Attorney holder of Plaintiff No.1 company. To be noted, Mr.SateeshJadhav, in these capacities, has also verified and signed the plaint. With regard to the defendant, I am informed that the sole defendant Pranam Ji Creations is a Proprietary concern and that sole proprietrix is Ms.Shikha Goel. Mr.Shobhan M Padmanabhan, learned counsel on record for sole defendant has filed a memo dated 19.03.2018 along with a Medical Certificate bring to notice of this Commercial Division that the aforesaid Ms.Shikha Goel has suffered a fracture in her leg and is immobilized for sometime. Learned counsel for defendant requests this Commercial Division to dispense with her presence for recording this Memorandum of Compromise. In the light of this memo and the request, I dispense with the presence of the sole proprietrix of Pranam Ji Creations (sole defendant Ms.Shikha Goel) from her presence before this Commercial Division.
4. Both the aforesaid learned counsel i.e, Mr.Madhan Babu and Mr.Shobhan M Padmanabhan submit that the parties have arrived at a compromise and have entered into a memorandum of compromise. A memorandum of compromise dated 08.03.2018 duly signed by both the plaintiffs and the sole defendant as well as their respective counsel has been placed before me. This memorandum of compromise dated 08.03.2018 shall henceforth be referred to as 'said MOC' for the sake of brevity, convenience and clarity.
5. The said MOC has been entered into by the parties after substantial hearing on merits in the matter. In other words, this matter was heard for some time before the parties arrived at a settlement and reduced the terms to said MOC. With regard to Clause 2 of said MOC, the same reads as follows:
"2.The Defendant acknowledges that the mark "MICROPAK", the Micropak Green Label and the Micropak Trade dress filed as Plaint Document Nos.2 and 3 and annexed hereto as Annexure -A and B are well known trademarks of the plaintiff as defined under Section 2(zg) of the Trademarks Act, 1999."
6. Clause 8 of the said MOC reads as follows: "8.The defendant agrees to pay a sum of Rs.50,000/- as token damages and cost to the plaintiffs."
7. Though the clause says that the defendant agrees to pay Rs.50,000/- as token damages and costs to the plaintiffs, I am informed
that the defendant has actually paid the same by way of Demand Draft drawn in favour of Plaintiff No.2 bearing No.765213 dated 17.02.2018 drawn on Allahabad Bank. Plaintiffs' counsel and representative of plaintiffs, who is present in Court, confirms receipt of the same.
8. Before I record the Memorandum of Compromise, I make it clear that this clause touches upon a right in rem qua the plaintiffs and therefore, it is made clear that this being an action in personem, this clause will be enforceable only against the sole defendant herein.
9. With the above clarifications, on the basis of the joint request made by both the learned counsel, on instructions, from their respective clients, I deem it appropriate to pass a decree in terms of said MOC. Said MOC reads as follows:
1.The terms plaintiffs and Defendant shall mean and include the heirs, legal representatives, executors, administrators, successors and assigns as applicable of each party.
2.The Defendant acknowledges that the mark "MICROPAK", the Micropak Green Label and the Micropak Trade dress filed as Plaint Document Nos.2 and 3 and annexed hereto as Annexure -A and B are well known trademarks of the plaintiff as defined under Section 2(zg) of the Trademarks Act, 1999. 3.The Defendant hereby agrees to stop sales of the infringing/counterfeit Micropak Sticker Rolls, all over India in any manner whatsoever including through its website www.pranamjicreation.in or under any other domain name. 4.The Defendant hereby admits and states that all the infringing/counterfeit Micropak Sticker Rolls earlier sold by the
Dependant and the remaining 4x packed cartons of counterfeit Micropak Sticker Rolls and the 7 individual Micro Pak Stickers Rolls, which were seized by the advocate commissioner appointed by this Hon'ble Court on 10.10.2017, were purchased from M/s.JVS Components, having its registered office at 8/3, Akhanand Anand, J.B.Nagar, Andheri (East), Mumbai- 400 059. 5.The Defendant further states that she had made only to purchases of the said infringing/counterfeit Micropak Sticker Rolls and that the same were procured from M/s.JVS Components on 26/8/17 vide Invoice No.JVS 104/17-18 and 20/9/17 vide invoice No.JVS 120/17-18.
6.The defendant submits to a decree as prayed for by the plaintiff in Paragraph 34 (A) to (C) of the plaint filed in C.S.No.776 of 2017.
7. The Defendant states that she has no further stocks of the said infringing /counterfeit Micro Pak Sticker Rolls.
8. The defendant agrees to pay a sum of Rs.50,000/- as token damages and cost to the plaintiffs.
9. In view of the above, the plaintiffs give up their relief as prayed for in Paragraph 34(D) to (E) of the plaint filed in C.S.No.776 of 2017.
10.The suit may be decreed in terms of the above. 11.Each party shall bear their own cost.
12.The suit shall be decreed on the basis of the present joint Memorandum of Compromise and the Joint Memorandum of Compromise shall form part of the decree."
10. There shall be a decree in terms of said MOC. Said MOC shall form part of the compromise decree along with self-attested photocopy of the Identity Card of the aforesaid representative of the plaintiffs and photocopy of the Demand Draft dated 17.02.108.
Suit decreed on above terms. Consequently, all connected interlocutory applications are closed.
21.03.2018 gpa
M.SUNDAR.J., gpa C.S.No.776 of 2017 & O.A.Nos.996 to 998 of 2017 & A.Nos.6184 and 6185 of 2017 21.03.2018