Delhi High Court: In a suit filed by Colgate Palmolive Company (‘plaintiff’) seeking permanent injunction, restraining infringement of trademark COLGATE, copyright, trade dress etc. against unknown Defendants who are responsible for importing a container in India having products bearing marks which are deceptively/ confusingly similar to the Plaintiffs’ mark, Prathiba Singh, J., denied injunction in view of the statement made by the Central Board of Indirect Taxes & Customs (CBITC) Defendant 2 having not permitted imports of the impugned products in India.
The Plaintiffs are the manufacturers and sellers of oral health care, personal care, household surface care and fabric care products including toothpaste under the well-known mark ‘COLGATE’, which was adopted in 1806. ‘COLGATE’ is one of the leading products in the oral healthcare segment, across the world, as also, in India.
The grievance of the Plaintiffs is that, in October, 2021, a container containing approximately 3,600 pieces of infringing toothpaste, bearing the mark/name ‘CONAETE COOL-ICE’ had been shipped from Yiwu City to Ningbo Port (China), and finally the container was to be discharged at Mundra Port, India It is averred that the products in the said container were named as ‘CONAETE COOL-ICE’, and are nearly identical or confusingly/deceptively similar to the Plaintiffs’ product – ‘COLGATE MAX FRESH’, as also the carton Packaging. The distinctive colour scheme, blue and red colour combination with a white cap, bold font, as also the placement of the various features, has been copied.
The Court noted that on 30-11-2022, Defendant 2, had assured that the customs department would not allow the import of the impugned goods found in the impugned container. Defendant 2 while the hearing of the present suit submitted that the import of the contents of the said container into India, has not been permitted by the custom authorities.
The Court observed that the import of goods which violate Intellectual Property Rights is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (hereinafter “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 a 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 the rights of IP owners including trademark, copyright, etc., would have to be stopped by the customs authorities.
Thus, the Court held that in view of the import had been stopped by the customs authorities, the injunction is also not required to be passed, but the Plaintiffs are free to take action in accordance with law, either in India, or in other foreign jurisdictions.
[Colgate Palmolive Company v. John Does, 2022 SCC OnLine Del 3105, decided on 26-09-2022]
Advocates who appeared in this case :
Mr. Pravin Anand, Mr. Saif Khan,Mr. Achuthan Sreekumar and Mr. Rohil Bansal, Advocates, for the Plaintiff;
Mr. Anurag Ojha, Sr. Standing counsel and Mr. Deepak Somani, Advocates, for the D-2.
*Arunima Bose, Editorial Assistant has put this report together.
