India: Delhi High Court Revisits John Doe Type Of Order

Last Updated: 25 March 2009

John Doe orders are passed to enable the seizure of infringing goods wherever they may be located and operate against any potential defendant, who is subsequently identified as the counterfeiter/infringer. The real significance of these orders is the extent to which it impacts the persons who might be infringing or inclined to infringe, even though their identities are not yet known. The rationale has been adopted by American, English, Canadian and Austrian courts and which, was held to be applicable and justified to Indian Courts as well. In the case of Taj Television & Anr v Rajan Mandal & Ors [IA NO. 5628/2002 in CS (OS) 1072/2002] John Doe orders were granted in India for the first time, whereby the Commissioner was empowered to enter the premises of any cable operator illegally airing the football World Cup 2002.

A John Doe type of order was also passed vide the ex parte order directed in respect of the case of Ardath Tobacco Co. Ltd. v. Munna Bhai and Ors. [CS (OS) 141/2004, 2009 (39)PTC 208 (Del.)] Ardath Tobacco Company Ltd. engaged in the business of manufacture and sale of internationally known cigarettes STATE EXPRESS 555, instituted a suit to restrain Munna Bhai and his co-defendants vendors/ stockists of cigarettes at Calcutta and Delhi from dealing in cigarettes under the label PEACOCK, but the packaging and trade dress whereof is identical or deceptively similar to that of Ardath' cigarettes. Ardath also sought an order in the nature of "John Doe" while some of the defendants were impleaded with the Ashok Kumar order.

Munna Bhai and co-party were, vide an ex parte order restrained from manufacturing, selling, stocking or dealing in cigarettes under a label, carton or packaging material deceptively similar to the label, carton and packaging material and artistic work as of the STATE EXPRESS 555. Munna Bhai appeared through counsel and also filed a counter affidavit in this court. However, subsequently the ex parte order was proceeded against. Other defendants also failed to appear in spite of service and were also proceeded against ex parte. One of the defendants died during the pendency of the suit and his legal heirs were ordered to be substituted. Some of the defendants and the legal heirs of the deceased defendant compromised the matter with Ardath Tobacco and decrees in terms of the said compromise were passed against them. The suit now survived against the parties who conducted business in Calcutta.

The ex parte order had ordered the appointment of two court commissioners, one for visiting the premises of the defendants situated in Delhi and the other for visiting the premises of the defendants in Calcutta as well as any other premises as where the impugned goods were suspected to be stocked. The Court Commissioners appointed to visit the premises at Calcutta, found the infringing goods in the premises of the defendants as also in the neighborhood premises and took possession of all the infringing goods and delivered the same to Ardath Tobacco.

In spite of the Court Commissioner having found infringing goods in the premises of Munna Bhai his counter affidavit filed earlier did not deal at all with the visit by or the report of the Court Commissioner. He merely averred that he did not deal in the infringing goods; no objections were filed to the report of the Court Commissioner which Ardath tendered as part of its ex parte evidence. The counsel for Ardath in his affidavit by way of examination in chief by way of ex parte evidence proved the trademark registrations of Ardath Tobacco and the device i.e., WORD MARK 555 of the device of a sunburst medallion with 555 engrossed therein as exhibits, hence proving himself to be the registered proprietor of the aforesaid word/device inter alia, in relation to cigarettes.

The Court on perusal of the exhibits found that the cigarettes marketed/stocked by Munna Bhai and others had copied the trade dress of Ardath Tobacco. Comparing the packaging of the two parties the Court stated that although Ardath' product did not bear the numerals 555 and the mark/name STATE EXPRESS but an unwary customer was likely to be mistaken by the packaging.

The Court opined that the sale of cigarettes in India was different from the Western countries. In Western Countries sale of loose cigarettes is not the norm, while in India sale of loose cigarettes is a common practice. Any action for infringement of trademark in relation to cigarettes in this country was stated to be viewed/tested in this light. It was also stated that customers normally did not get to see the packet or the whole of it but may get to see only the colour or the trade dress of the packet and identify the brand. The individual cigarettes was observed to be devoid of the trade name or the manufacturer's name boldly. In such circumstances, the colour of the packaging and the trade dress was stated to assume special significance. The Court stated that the cigarettes being marketed by the defendants may not fool or deceive a buyer of a packet but that the same had the potential to deceive or confuse the buyer of loose cigarettes, who constitute a large section of the buyers of the said product. In this light, an attempt to pass off or sell the goods as those of Ardath was said to have been made out.

The Court noted that Munna Bhai and his co-parties were stockists or vendors of the said cigarettes and not manufacturers. The said cigarettes were averred by Ardath to have been are manufactured in Myanmar and smuggled into India through the border and in violation of other laws. The Court stated that for this reason Ardath was allowed to prohibit their sale in India by the vendors/stockiest but was not in a position to act against the manufacturers.

The Court reiterated that in the plaint reliance was also placed on 'John Doe' order in pursuance whereto the premises of which the search and seizure was conducted and that since apart from the defendants to this suit, no other person against whom the order may be extended had been brought forth, till the disposal of the suit, the same had been decreed against the defendants only for the relief of permanent injunction in terms of the plaint. A decree for recovery of damages in the sum of Rs 25,000/- from each of the defendants was also passed in favour of Ardath. Ardath was also held to be entitled to proportionate costs of the suit from Munna Bhai and others.

© Lex Orbis 2009

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