Export under section 107A of Indian Patent Act, 1970

Introduction:

It always has been a well-known fact that the markets in India are targeted by a large number of counterfeit products/goods. Popular brands like LV, GUCCI, Burberry, Armani, Hermes inter alia; are frequently pirated in local commercial markets. Among others, the most popular counterfeit products in the market include hardware, software, clothing, watches, writing instruments.

At that backdrop, the Indian system is striving hard to deal with the menace caused by counterfeit products in the market which not only endangers the country’s reputation and goodwill but also affects the country’s financial market. Indian judiciary has timely made its presence felt bypassing landmark judgments with various issues the Indian market is facing. Recently, Hon’ble Delhi Court passed orders in one such case which dealt with counterfeit issues.

Facts of the case:

Delhi High Court in its recent judgment dated January 04, 2017, in the matter of Montblanc Simplo GmbH vs. Gaurav Bhatia & Ors. CS (OS) 2563/2013, The Court has restrained an electronic commerce web portal functioning under the Trade name “www.DIGAA.com”. Defendant’s impugned website was alleged dealing with the manufacturing, selling, and advertising of counterfeit Montblanc products that are registered under the Trademark of the Plaintiffs.

Background of the case:

Plaintiff: A German company incorporated under the laws of the country having its registered office at Hamburg. The registered company named “Montblanc Simplo GmbH” has its workers engaged in the manufacturing,

A German company incorporated under the laws of the country having its registered office at Hamburg. The registered company named “Montblanc Simplo GmbH” has its workers engaged in the manufacturing, distribution, and sales of pens & other writing instruments under the registered Trade name MONTBLANC MEISTERSTUCK,. The plaintiff’s company Trademark also includes “The Star Device” which is a white stylized six-pointed star with circular edges and the “The three-ring Device” comprised of three metallic bands located close to the middle of the body of the pen cap. The plaintiff’s company claims its product registered under proprietors’ names within India as well as other countries across the world.

In July 2013, the plaintiff through its office in India came to know that the said defendant was selling counterfeit products at a lesser rate from the original product of the plaintiff. The defendant represented his product as the original product of the Plaintiff Company. Hence, the present suit was filed.

Submission by the parties:

Plaintiff’s Submission:

Plaintiff claimed that his company is losing the reputation and trust of his clients because of the defendant’s counterfeited products. Plaintiff claimed to be suffering loss and demanded damage worth INR 2,005,000.
Plaintiff stated the price of original MEISTERSTUCK CLASSIQUE is INR 30,000 whereas the defendants were selling similar counterfeit products for INR 6,860.
The plaintiff in his submission stated that they purchased a writing instrument, namely, the MEISTERSTUCK CLASSIQUE from the website defendant was using to sell the products, which were being sold at a discounted price and falsely represented as a product of the plaintiff upon examination that the product was a counterfeit.
It was submitted by the plaintiff that the defendant’s product is of inferior quality; also the refill used in the Defendants instrument was different than that of the original product. Defendant’s instrument has a different color combination than that of the plaintiff. Also, the tip of the refill of the defendant’s writing instrument has a plastic ball that is different than that of the plaintiff’s original product. The serial numbers on the product were also fabricated by the defendant.
The defendants after filing their Written Statement stopped appearing in court and the suit was preceded Ex-parte.

Observation by the Hon’ble court:

The court observed some of the consumer’s complaints filed against the defendant including one customer who purchased counterfeited products from the defendant and suffered subsequently lodged a complaint before the cyber cell of Chandigarh Police under section 420 & 406 of Indian Penal Code and section 66A of Information Technology Act.
Plaintiff’s brand name MONTBLANC is a well-known mark having goodwill and reputation in its market. It is also proved that the public identified the plaintiff’s product from its trade dress which includes “The Star Device” and “The Three Ring Device”.
Plaintiff also proved on record its notice published in India and related information from the defendant’s web portal displaying counterfeit products of the plaintiff’s Trademark, They also attached the invoice alongside the purchased products and photographs of counterfeit products and their warranty card.
The court observed that the plaintiff had proved that the defendant was counterfeiting its goods and thereby, infringing its Trademark.
Held:

The Hon’ble Court, in view of the above case, granted relief of permanent injunction against the Defendants as sought by the plaintiff and also passed a restraining order against them to restrain them from Passing-off their counterfeit products as that of plaintiff’s. However, the claim for damages was rejected by the court on the ground that the Plaintiffs have not produced sufficient evidence to show the extent of actual damage suffered by the company. Hence, the judgment was in the favor of the plaintiff. Pertinently, it is important to note that in order to claim damages proper and sufficient evidence must accompany to get monetary relief against damages suffered.

About the Author: Mayank Srivastav, an intern at Khurana & Khurana, Advocates, and IP Attorneys. Email: support@ipandlegalfilings.com

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