Full Judgment Text
$~33
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of decision: 29 July, 2019
+ CS (COMM) 144/2018, CC 23/2016, I.As. 21793/2015, 21794/2015,
24792/2015, 13229/2018 & 10092/2019
ME N MOMS PRIVATE LIMITED ..... Plaintiff
Through: Ms. Srideepa Bhattacharyya,
Advocate. (M:9981233675)
versus
MR SANDEEP GUPTA ..... Defendant
Through: Mr. Sanjeev Mahajan, Advocate.
(M:9811156437)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(oral)
1. The Plaintiff has filed the present suit seeking an injunction
restraining infringement of trademark, passing off, misrepresentation, unfair
competition, delivery up etc. The Plaintiff filed the suit on the basis that it is
engaged in the manufacture, import, export and retail of a wide variety of
infant and mother care products under the trademark “ MEE MEE ” and also
operates retail stores/outlets and departmental stores under the name “ Me N
Moms ”. The trademark “ MEE MEE ” is a registered trademark, and the
Plaintiff had filed the present suit on the basis that the Defendant was
involved in selling counterfeit goods under the trademark “ MEE MEE ”.
2. The Plaintiff’s allegation in the suit was that a customer had
complained regarding a baby cot bearing the trademark “ MEE MEE ”, which
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was purchased from the Defendant’s store on 8 April, 2015 and which had
some defects. The Defendant had then informed the said customer that the
CS (COMM) 144/2018 Page 1 of 10
product was imported from China, and that he would not give any after-sales
service in respect of the said product. Paragraph 19 of the plaint claims that
the impugned baby cot was not of the Plaintiff's origin and was, in fact, a
counterfeit product.
3. On the basis of these pleadings, the Plaintiff sought an ex parte
injunction against the use of its brand. The Plaintiff also sought appointment
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of a Local Commissioner. Vide order dated 14 October, 2015, the Court
directed as under:
“ 3. Learned counsel for the plaintiff argues that
plaintiff is the owner of the well known trademark
“Mee Mee” and various goods for infants, babies and
mother care products are sold under this trademark
including at the plaintiff’s retail outlets/departmental
stores under the name and style of “Me N Moms”. It
is argued that the plaintiff has in its portfolio about
600 premium quality baby care products and it has
1200 outlets and 400 stock keeping units in the
country. Plaintiff also is said to be selling its products
from its website www.meemee.in and the plaintiff’s
products are also available on online shopping portals
like Babyoye, Ebay, FirstCry, FlipKart Amazon etc.
4. It is argued that the trademark “Mee Mee” was
adopted by the plaintiff in the year 2005 and was
registered in favour of the plaintiff in terms of 12
different registrations mentioned in para 12 of the
plaint. 11 out of 12 registrations are of the year 2006.
5. It is argued that defendant is selling spurious
products by using the trademark "Mee Mee" and the
same amounts not only to infringement of the
trademark of the plaintiff, but the action of the
defendant amounts to counterfeiting products by the
same under the trademark "Mee Mee" and which
actions of the defendant in fact amount to an offence
CS (COMM) 144/2018 Page 2 of 10
and for which defendant has to be prosecuted in view
of Sections 102 to 105 of the Trademarks Act, 1999.
6. In view of the arguments urged on behalf of the
plaintiff, till further orders unless varied by the Court,
defendant is restrained from in any manner using the
trademark "Mee Mee' ' or from selling any products
using the trademark "Mee Mee”, especially the
products pertaining to infants, babies and mother care
products.
7……………….
8. I also appoint Mr. Subhiksh Vasudev,
Advocate (Mob:9810710871 as a Local Commissioner
to visit the premises of the defendant as stated in the
memo of parties i. e. Deepak Stores, E-23, Kamla
Nagar, Near Vaishno Chat Bhandar, New Delhi-
110007 and the Local Commissioner is directed to
make an inventory of the goods which are being sold
by the defendant under the trademark ''Mee Mee" and
seize the same. Local Commissioner after making an
inventory and seizing the infringing goods using the
trademark "Mee Mee" will return the same on
superdari to the defendant and defendant will be bound
to produce such goods before this Court or deal with
the same in terms of the directions which will be
hereinafter issued in the present suit. Fees of the Local
Commissioner is fixed at Rs. 65,000/- plus out of
pocket expenses. Local Commissioner will be entitled
to take police help for the purpose of execution of the
commission and the concerned SHO of the local police
station will give necessary police personnel to the
Local Commissioner for executing the commission. It
will be the personal responsibility of the concerned
SHO to ensure that secrecy of the present order is
maintained till the commission is executed otherwise
the SHO will be held personally answerable to this
Court. Two representatives of the plaintiff will
CS (COMM) 144/2018 Page 3 of 10
accompany the Local Commissioner and
representatives of the plaintiff will work under the
directions and supervision of the Local
Commissioner.”
4. Pursuant to the above order, the Local Commissioner executed the
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commission and submitted the report. On 3 December, 2015 the ld. Single
Judge, who was dealing with the suit, recorded that all the products, which
were seized from the Defendant’s premises, were in fact genuine products of
the Plaintiff and this fact was confirmed by the Plaintiff as well. Paragraphs
2 and 3 of the said order are set out herein below:
“ 2. During the proceedings before the Local
Commissioner the representative of the plaintiff
conceded that the goods which are found in the shop of
the defendant were not spurious/counterfeiting
products but were genuine products of the plaintiff. I
have put a specific query accordingly to counsel for the
plaintiff, inasmuch as if that is so then this is a very
serious issue, because if the defendant is not selling
spurious/counterfeiting products and is selling only
genuine products of the plaintiff, the injunction order
as a whole should be vacated forthwith today. Counsel
for the plaintiff, at this stage states that liberty be
granted to the plaintiff to file reply to this application,
however, for the time being, it is agreed that to the
extent the respondent has genuine goods of the plaintiff
bearing the trademark "Mee Mee" , the defendant no
longer need to act as superdar of the same, but can sell
the genuine products of the plaintiff with the trademark
"Mee Mee" making it clear that the products to be
sold are those which originated from the plaintiff. The
defendant will be entitled to open the seal of the
products which have been sealed in the proceedings of
the Local Commissioner and given on superdari to
defendant for being sold in terms of the present order.
CS (COMM) 144/2018 Page 4 of 10
3. Accordingly, defendant is held entitled to sell
original products of the plaintiff with the trademark
"Mee Mee" , making it clear that this is the limited
entitlement of the defendant that the defendant can only
sell genuine and original products of the plaintiff with
the trademark "MeeMee" .”
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5. Thus, since 3 December, 2015 the injunction stood modified and the
Defendant was permitted to sell the genuine products of the Plaintiff.
6. The Defendant has filed a counter claim on the ground that no cause
of action has been made out against him and further that the Plaintiff
brought a false case before this Court. Specific case of the Defendant is that
the Plaintiff concocted a false story of the Defendant having been sold the
counterfeit baby cot. The Defendant had given a categorical assurance that
he has never sold counterfeit and fake products, which are not manufactured
by the Plaintiff. Paragraph 4 of the counter claim is set out herein below:
“ 4. That the Defendant in the business of running shop
selling children toys and product from Kamla Nagar
for the last more than 30 years. Defendant has been
running the shop under the name Deepak Store selling
variety of children produces with different brand
names and is known for selling genuine products. The
Defendant has never sold any fake products or
products which are not manufactured from the
company. The Defendant has never used any
counterfeit trade mark or products which are not
genuine. However the Plaintiff's authorized dealer Toy
Fort has an exclusive counter of MEE MEE products
at the shop which is not doing good sales. The
Defendant has further been offering various incentives
and passing off discount which he get whereas the
Plaintiff's authorized dealer is not making any such
offer. Probably as a reason thereof, the Plaintiff with
CS (COMM) 144/2018 Page 5 of 10
the view to put the Defendant out of business and bring
him to disrepute has filed the present suit.”
7. The Defendant has, after denying the allegations of counterfeiting,
claimed damages in the following terms.
“ (a) Pass a decree of Rs. 10,00,000/- (Rupees ten lakhs
only) in favour of the defendant and against the
Plaintiff
(b) Award pendelite and future interest @ 18% p.a.”
8. Today, the Plaintiff has moved an application for withdrawal of the
suit under Order XXIII Rule 1. Ld. counsel for the Defendant submits that
there cannot be unconditional withdrawal and costs should be paid to the
Defendant, inasmuch as the Defendant has been put to enormous
embarrassment and loss due to the filing of the suit, execution of the
commission and seizure of the products as also legal costs.
9. The Court has heard ld. counsels for the parties.
10. It is true that in the present case, the Local Commissioner’s report
revealed that the products, which were seized, were in fact genuine. This
fact is also admitted in the reply to the application under Order XXXIX Rule
4 CPC in the following terms.
“ 2. That it is the modus operandi of the Defendant to
showcase genuine products on the shop floor to lure
customers who want to purchase authentic products
and also presents them with catalogues of genuine
products to choose from. However, he stocks
counterfeit MEE MEE products and delivers the same
to the unsuspecting consumers at their residence. Thus
no counterfeit MEE MEE products were found by the
local commissioner at the time of conducting the court
CS (COMM) 144/2018 Page 6 of 10
commission.
3. That vide Order dated October 14, 2015 the Hon'ble
Court was pleased to appoint a Local Commissioner
and directed the Local Commissioner to visit the
premises of the Defendant, make an inventory of the
goods being sold under the trade mark MEE MEE and
seize the same. The said order also clearly stated that
two representatives of the Plaintiff were to accompany
the Local Commissioner and who will work under the
"directions and supervision" of the Local
Commissioner. Thus only the Local Commissioner had
the power and authority to interpret the Order dated
October 14, 2015, decide as to the actions to be taken
in the premises of the Defendant during the execution
of the Court Commission and seize the genuine MEE
MEE branded products found in the possession of the
Defendant.”
11. Thus, there is no dispute insofar the seizure having been only of
genuine products. However, the stand of the Plaintiff till date continued to
be that the Defendant was indulging in clandestine sale of counterfeit
products.
12. Whenever an infringement case of this kind is to be filed before this
Court, the Plaintiff has the onus of conducting some investigation, as also
examination of the products before making an allegation that the products
are counterfeit. Ld. counsel for the Plaintiff submits that the Defendant was
being suspected of selling counterfeit products, though it was only stocking
genuine products in the shop.
13. During submissions, Ld. Counsel relies upon the notarial certificate
filed with the plaint to argue that the same is evidence of counterfeiting. A
perusal of the notarial certificate filed at the initial stage of the suit shows
CS (COMM) 144/2018 Page 7 of 10
that even the said certificate does not mention that the products were not
genuine/were counterfeit. The notarial certificate reads as under:
“NOTARIAL REPORT
Under instructions from the client, the undersigned
Mr. Sauraj Singh Tawra (Notary Public) along with
Mr. Suneel Dhanda S/o Shri R.L. Dhanda
representative of Delsai IP, 153 Block-C-1, Janak
Puri, New Delhi – 110058 had visited M/s Deepak
Stores located at E-23, Kamla Nagar, Near Vaishno
Chat Bandhar, Delhi-110007 on September 3, 2015 at
about 4:30 PM to purchase samples of baby toys and
accessories like milk powder container, musical toys,
baby quilts under the brand name MEE MEE.
Mr. Dhanda met at the counter of M/s Deepak Stores
one Mr. Sandeep Gupta who claimed to be the
owner/proprietor of the said shop. The shop was
stocked with a variety of products bearing different
brands like Chicco, Fisher Price, Lego, Pigeon,
Graco etc. On enquiry various products under the
brand name MEE MEE were also shown to Mr.
Dhanda.
Mr. Suneel Dhanda purchased a MEE MEE branded
baby quilt with printed images of Dora, whose
packaging had the trademark MEE MEE printed
thereon.
The said MEE MEE quilt was purchased from M/s
Deepak Stores’ premises, in my presence for a sum of
INR 1250.00 in cash. No cash memo for the said
purchase was issued by the said store.
The aforesaid sample purchased along with the
notarial report were handed over to Mr. Suneel
Dhanda.”
14. The above certificate does not say that the products are counterfeit.
Obviously, the Notary would have had no idea as to whether the product
was genuine or not and hence the Notary merely certified the purchase.
CS (COMM) 144/2018 Page 8 of 10
There ought to have been done some kind of examination by the technical
department of the Plaintiff, and some reasons given to support the allegation
of counterfeiting even at the prima facie stage. Without any examination or
investigation, it would not be permissible for any party to file a suit, obtain
an ex-parte injunction and also seek appointment of a Local Commissioner.
The pleading of counterfeiting has to have a basis. Execution of a local
commission in one’s premises can cause enormous embarrassment,
especially where shops and outlets are located in busy commercial areas.
The reputation of a shopkeeper could be adversely affected to a great extent.
Thus, while seeking an ex-parte injunction and appointment of a Local
Commissioner, the Plaintiff is to bear enormous responsibility by ensuring
that the allegation of counterfeiting or fake products is made on the basis of
some reports or investigation. A mere allegation could result in a situation,
as has been created in the present case, where at the initial stage also, the
allegation of counterfeiting was made in the plaint and in the execution of
the Commission, however, only genuine products were found. Thus, there
was no evidence to show that the product was counterfeit, except the
Plaintiff’s allegation, which resulted in the injunction being varied. The
Local Commissioner, in fact, ended up seizing genuine products, which the
Plaintiff admits now to be genuine. Such a situation ought not to have arisen.
15. The Plaintiff is the master of its litigation and the present proceedings
and is free to withdraw the suit. However, having obtained an ex-parte
injunction and having executed the commission at the Defendant’s premises,
there is no doubt that the Defendant would have incurred enormous legal
costs, expenditure of labour and capital as well as embarrassment due to the
execution of the Local Commission. Under these circumstances, while
CS (COMM) 144/2018 Page 9 of 10
permitting the Plaintiff to withdraw the suit unconditionally, the Defendant’s
counter claim is decreed for a sum of Rs. 2 lakhs as costs. The costs shall be
paid within six weeks. If in the future the Defendant is found selling any
counterfeit products or fake products, the Plaintiff is at liberty to file a fresh
suit, provided a cause of action is made out in law. No further orders are
called for.
16. All pending I.As. are also disposed of.
PRATHIBA M. SINGH
JUDGE
JULY 29, 2019/ dk
CS (COMM) 144/2018 Page 10 of 10