Dr. Ashok M. Bhat v. Harichand Nagpal & Ors.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section 151Section 35Section Order XXXIX Rule 2A

Copyright Act, 1957

Section 45

Trade Marks Act, 1999

Section 12Section 124(4)Section 28(3)Section 29Section 30(2)(e)

Provisions considered: Order XXXIX Rule 2A, Sections 35 and 151 of the Code of Civil Procedure, 1908, read with the Commercial Courts Act, 2015; Sections 12, 28(3), 29, 30(2)(e) and 124(4) of the Trade Marks Act, 1999; Section 45 of the Copyright Act, 1957.

Brief facts

The Plaintiff owns the mark NOVA and a registered artistic label for brilliantine hair cream (copyright Nos. A-13658/75 and A-13659/75). On finding Respondent No. 1 selling counterfeit NOVA goods, he sued and by order dated 24 November 2010 obtained an injunction restraining use of NOVA, any deceptively similar mark, and any label infringing his copyright in the artistic work. In 2013 the Plaintiff found the same product sold as NONI, carrying substantially his artistic work, and filed the first contempt application. In 2025 a Court Receiver found NOVA MINI and NONI goods at Respondent No. 1's premises, where his son, Respondent No. 3, called himself proprietor. A second contempt application followed. The defence was that NONI is Respondent No. 1's own registered mark (No. 235004, 1966, user from 1958), that the injunction covered only the NOVA label, that the IPAB had dismissed the Plaintiff's rectification in 2012, and that NOVA MINI labels were affixed by an employee by mistake.

Issues before the Court

1. Whether the order of injunction dated 24 November 2010 relates only to the impugned label mark NOVA, or whether it also covers the NONI label.
2. Whether use of Respondent No. 1's registered mark NONI amounts to wilful disobedience of the order of injunction.
3. Whether the Applicant is entitled to claim that use of the registered label mark NONI is infringement of copyright, trade mark or passing off, having regard to Sections 28(3), 29 and 30(2)(e) of the Trade Marks Act, 1999.
4. Whether the Applicant is estopped from alleging infringement given the IPAB order dated 4 May 2012 and Section 124(4) of the Trade Marks Act, 1999.
5. Whether rights under the Copyright Act, 1957 are to be read de hors the Trade Marks Act, 1999 and binding orders of the IPAB, having regard to Section 45 of the Copyright Act, 1957.

Court's findings

The Court held the breach wilful, deliberate and calculated. An enquiry under Order XXXIX Rule 2A asks only whether a subsisting order was disobeyed; the Respondents offered only pleas of justification, which are impermissible. On comparison, the NONI label reproduced the same green scheme and geometric design as the registered artistic work. Awareness was established by the Respondents' own conduct: they had sought a clarification from the Division Bench that the injunction did not cover NONI, which was refused on 16 January 2014, and the injunction was never modified. The IPAB order and the NONI registration were no shield against a later injunction. The 'mistaken employee' explanation was disbelieved. Respondent No. 1 admitted sales of about Rs. 83.46 lakhs from 2019 but withheld earlier figures, though he had filed sales of about Rs. 1,31,67,485 for 1993-2006 before the Registry. Respondent No. 3 never appeared or denied the allegations and was held complicit. Scope was read from the prayer clauses in which the injunction was granted, particularly the copyright prayer, rather than from the product name. Selective disclosure fed into the finding of mala fides and the quantum of exemplary costs.

Decision

The application was allowed in terms of prayers (a), (b) and (d). Imprisonment was declined given Respondent No. 1's age. Costs of Rs. 32,42,868 and exemplary costs of Rs. 50,00,000 were awarded, with full disclosure of sales on oath in four weeks, failing which the defence stands struck off. Stay refused.

Keywords

Contempt of Injunction Counterfeiting Exemplary Costs Order XXXIX Rule 2A Registered Artistic Work Safe Distance Rule