On Monday, a single-judge bench of the High Court of Delhi (“High Court”),
in two similar suits, had granted an ex-parte
injunctions in favour of the
Plaintiffs, proprietor of trademark ‘MARLBORO’
and ‘ROOF DEVICE’ (“suit trademarks”). While one dispute was related to sale of
infringing cigarette products in
Mumbai, other dispute was related to its sale in Kolkata. In both the actions,
the High Court restrained the defendants from selling counterfeit and grey versions
of the cigarette. In Philip
Morris Products S.A. & Anr. v. Sameer & Ors ("first suit") and Philip Morris Products S.A. & Anr. v. Anil Kumar Singh & Ors ("second suit") [both dated 10/03/2014],
the High Court had awarded damages of Rs. 10,000 against some of the
defendants and Rs. 5,000 against other. In reaching its judgment, the High Court also discussed
the principle of ‘international exhaustion’
with respect to section 30(3)(b) of The Trade Marks Act, 1999 (“TM Act”).Through both the suits, Plaintiffs had sought to restrain the defendants from using suit trademarks and had sought Rs. 20,00,000/- as damages (apart from punitive damages). The suit(s) were originally filed by Philips Morris Products S.A., the original proprietor of suit trademarks. Later, suit trademarks were assigned in favour of Philip Morris Brands Sarl – by virtue of this, the latter become the substituted Plaintiff No.1.
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Factual Background: Sometime in May 2010, it came to the knowledge of
the Plaintiffs that some retailers in Mumbai and Kolkata were selling, stocking
& distributing the counterfeit as
well as grey market versions of Plaintiff’s products (cigarettes). While grey market version products were not
meant for sale in India, counterfeit products
were duplication of Plaintiff’s products. That is, grey market version is imported
through another country, either legally or illegally (e.g., smuggling). On
becoming aware of these activities and finding the cigarette products to be infringing, Plaintiffs filed two suits
before the High Court. The defendants, in both the proceedings, preferred not
to appear or file written statement. As a result, the High Court, apart from considering
Plaintiff’s evidence ex-parte, also
allowed their application for passing an ex
parte decree.
In both the suits, the
High Court had appointed two commissioners to inspect the premises of the defendants. With respect to second
suit, concerned commissioner found substantial
amount of infringing products in the premises of defendant no. 7.
(9660 cigarettes); certain amount of
infringing product was also found in the premises of defendant no.5.
However, in the premises of some of the other defendants (defendants no. 1,2&4
in first suit and defendants no. 1,3,5 & 6), not much infringing product(s) were found. In the premises of the remaining defendants, nothing incriminating was
found. Among all the defendants, only defendant no.7 maintained books of
accounts, ledger etc.
