2022 (9) TMI 1307 - HC - Customs

Maintainability of suit for permanent injunction - restraining infringement of trademark copyright trade dress etc. against unknown Defendants - HELD THAT - The import of goods which violate Intellectual Property Rights is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 (IPR Rules). As per the said rules import of any counterfeit products or products which violate IP rights of trademark owners copyright owners etc. is not permissible. The customs authorities have to upon complaint received from any IP owner or on its own accord form an opinion qua the infringement of the IP rights. Upon forming an opinion the import or sale of products which violate rights of IP owners including trademark copyright etc. would have to be stopped by the customs authorities. The import having been stopped by the customs authorities ld. counsel for the Plaintiffs does not press for any further relief in this matter. However if there are any details available with the Customs Department in respect of importer seller or manufacturer as per the bill of lading or any other documents the same may be intimated to the Plaintiffs upon request - The Defendant No. 2 having not permitted imports of the impugned products paragraph 5 of the prayer clause stands satisfied. None of the goods bearing the impugned mark in the said container no. ECNU4006477 have been allowed to enter India. Accordingly the injunction is also not required to be passed in view of the statement made in the written statement by the customs authorities. The Plaintiffs are free to take action in accordance with law either in India or in other foreign jurisdictions. The present suit is disposed of.

Summary

Issues Involved:
1. Infringement of trademark, copyright, and trade dress.
2. Importation of infringing goods.
3. Role of customs authorities in preventing the import of infringing goods.
4. Reliefs sought by the Plaintiffs.

Detailed Analysis:

1. Infringement of Trademark, Copyright, and Trade Dress:
The Plaintiffs, Colgate Palmolive Company, USA, and Colgate Palmolive (India) Ltd., filed a suit for permanent injunction to restrain the infringement of their trademark, copyright, and trade dress against unknown defendants and the Central Board of Indirect Taxes & Customs (CBITC)/Defendant No. 2. The Plaintiffs are renowned manufacturers of oral health care products under the well-known mark 'COLGATE'. They possess several registered trademarks, including 'COLGATE', 'COLGATE MAX FRESH', and others, which are distinctive and have gained significant reputation. The Plaintiffs argued that the use of any deceptively similar mark or trade dress would violate their rights and cause confusion among consumers.

2. Importation of Infringing Goods:
The Plaintiffs discovered that a container bearing number ECNU4006477, containing approximately 3,600 pieces of infringing toothpaste marked 'CONAETE COOL-ICE', was shipped from China to Mundra Port, India. The Plaintiffs tracked this container and found that the packaging and trade dress of the infringing products were nearly identical to their 'COLGATE MAX FRESH' product. The Plaintiffs provided photographic evidence of the infringing products and the container.

3. Role of Customs Authorities in Preventing Import of Infringing Goods:
The Plaintiffs sought the involvement of Defendant No. 2, which controls customs and ports across India, to restrain the import of the infringing goods. They relied on the Supreme Court judgment in Gramophone Company Of India Ltd. vs Birendra Bahadur Pandey & Ors, which held that importation of infringing goods, even for transit, violates the rights of the IP owner. The Plaintiffs requested the customs authorities to freeze the contents of the container and divulge details of the goods, importer, and related documents.

4. Reliefs Sought by the Plaintiffs:
The Plaintiffs sought permanent injunctions to restrain the manufacture, sale, export, and import of the infringing goods. They also requested the customs authorities to freeze the container and provide details about the goods and importer. The court issued summons to Defendant No. 2, and upon verification, the customs authorities assured that the import of the infringing goods would not be allowed. This assurance was recorded in the court's order.

Subsequent Developments:
The customs authorities filed a written statement confirming that the import of the infringing goods had not been permitted. The court noted that the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, govern the import of goods violating IP rights. The customs authorities are required to suspend the clearance of such goods upon receiving a complaint or on their own initiative. The court acknowledged that the customs authorities had complied with these rules and stopped the import of the infringing goods.

Conclusion:
The court concluded that the import of the infringing products had been stopped, and the Plaintiffs did not press for further relief. The court directed that any details available with the customs authorities regarding the importer, seller, or manufacturer should be provided to the Plaintiffs upon request. The court disposed of the suit, binding the customs authorities to comply with the enforcement of IPR Rules in the future. All pending applications were also disposed of.