Asian Paints Limited v. Neeta Paints

Judgment

#1. The Plaintiff abovenamed has filed the present suit against the abovenamed Defendant praying inter alia for reliefs relating to infringement of its registered and Well-known trade marks ROYALE, UTSAV, TRACTOR SHYNE, ASIAN and ASIAN PAINTS and the Device of GATTU being a Boy holding a brush in his hand, infringement of the copyright in the original artistic work of its UTSAV and TRACTOR SHYNE labels and for passing off the goods viz, emulsion, distemper, • primer, cement paint, paints and other like goods used in the

paint industry, by the Defendant, by use of the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASIANCEM and 1 the Device of a Boy holding a brush in his hand and the impugned pirated artworks and trade dress depicted on the Defendant's CLASSIC UTSAV and DIAMOND labels and for other reliefs, as more particularly mentioned in the plaint.

#2. The Defendant hereby acknowledges the proprietary rights of the Plaintiff in its tTade marks ROYALE, UTSAV, TRACTOR SHYNE, ASIAN/ASIAN PAINTS, GATTU Device and in the original distinctive artistic labels of UTSAV and TRACTOR SHYNE which are being used in relation to its aforementioned goods and as more particularly mentioned in the plaint. 3, The Defendant agrees and undertakes that it shall not hereafter use the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASIANCEM and the Device of a Boy holding a brush in his hand nor shall it use the impugned pirated artwork and the impugned trade dress as complained off by the Plaintiff on its CLASSIC UTSAV and DIAMOND labels being deceptively similar to the Plaintiff's trade marks ROYALE, UTSAV, TRACTOR SHYNE, ASIAN, ASIAN PAINTS and the Device of GATTU being a Boy holding a brush in his hand and' substantially similar to the original artistic works of the Plaintiff's UTSAV and TRACTOR SHYNE labels nor shall it use any other mark/s or artwork/s which is/are identical with and/or is/are deceptively/substantially similar to the Plaintiff's 2 aforementioned registered trade marks and original artistic works.

#4. The Defendant accordingly submits to a Decree in favour of the Plaintiff in terms of prayers .(a), (b), (c) and (d) of the plaint, which reads as under :- a. the Defendant by themselves, their proprietor/partners, servants, agents, stockists, distributors, assignees and all those connected with the Defendant in their business be restrained by a perpetual order and injunction of this Hon'ble Court from manufacturing, rnarketihg, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, distemper, primer, cement paint, paints or other like goods used in the paint industry, the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASTANCEM and the Device of a Boy holding a brush in his hand, or any mark/s identical with and/or deceptively similar to the Plaintiff's trade marks ROYALE, UTSAV, TRACTOR SHYNE, ASIAN/ASIAN PAINTS and GATTU Device, so as to infringe upon on the Plaintiffs trade mark the trade mark ROYALE registered under Nos. 904263, 904264, 944265, 1994716, 1994718, 1994719, 1994721, 1994723, 1994724, 3259458, 3286762, 355954; the trade mark UTSAV registered under Nos. 588219, 579838, 1670416, 1670417, 1670418, 1670421, 1670425, 1670426, 1670428, 1670429, 1670437 and 2000952; the trade mark TRACTOR SHYNE registered under No. 4636208; the trade mark ASIAN PAINTS registered under •Nos. 904237, 904238, 965439, 1055654, 1154822, 1154823, 1154824, 1154825, 1154827, 1154831, 1154832, 1154834, 1154835, 1154836, 1154837, 1587298, 1587301, 1609251, 1609252, 1609253, 1609254, 1609255, 1609256, 1609257, 1609258, 1609259, 1650391, 1670431, 1670433, 1743551, 1743552, 1743553, 1743555, 1847163, 1994707, 1994709, 1994711, 1994714, 1994717, 1994725, 2318178 and the trade mark GATTU Device registered under Nos. 904246, 523716, 904265, 944267, all in class 02; b. the Defendant by themselves, their proprietor/partners, servants, agents, stockists, distributors, assignees and all those connected with the Defendant in their business be restrained by a perpetual order and injunction of this Hon'ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, distemper, primer, cement paint, paints or other like goods used in the paint industry, the impugned pirated artworks depicted on its CLASSIC UTSAV and• DIAMOND labels (appended at Exhibits BB hereinabove) bearing colour schemes, lay-out, get- up, style, representation and artworks or any other artwork/s which is/are identical with and/or is/are substantially/strikingly similar as regards the colour scheme, lay-out, get-up, style, representation and artworks to the Plaintiff's original artistic labels of UTSAY (appended at Exhibit 0 hereinabove) and TRACTOR SHYNE (appended at Exhibit U hereinabove), so as infringe upon the Plaintiff's copyright in the UTSAV label registered under 'No. A-5 1167/91 dated 27.08.1991 and the subsisting copyright in the TRACTOR SHYNE label; c. the Defendant by themselves, their proprietor/partners, servants, agents, stockists, . distributors, assignees and all those connected with them in their. business be restrained by a perpetual order and injunction of this Hon'ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, distemper, primer, cement paint, paints or other like goods used in the paint industry, the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASIANCEM and the Device of a Boy holding a bruh in his hand and the impugned, trade dress in respect of its CLASSIC UTSAV and DIAMOND labels or from using any mark/s or trade dress identical with and/or deceptively similar to the Plaintiff's distinctive trade marks ROYALE, UTSAV, TRACTOR SHYNE, ASIAN/ASIAN PAINTS and GATTU Device as also the trade dress depicted on the Plaintiff's UTSAV and TRACTOR SHYNE labels, so as to pass off the Defendant's business and goods as and for those of the Plaintiff or in some way connected or associated therewith; 5 d. the Defendant be ordered and decreed to deliver-up .to the Plaintiff for destruction all such materials including emulsion, distemper, primer, cement paint, paints or other like goods used in the paint industry including• containers, shade cards, poly bags, pouches, labels, stickers, advertising and packaging materials, dyes, screens, blocks, moulds, papers, vouchers, bill books, carry bags, and other goods bearing the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASIANCEM and the Device of a Boy holding a brush in his hand and the impugned trade dress in respect of its CLASSIC UTSAV and DIAMOND labels as complained off,

#5. As regards prayer clause (d) above, the Defendant undertakes to deface the goods bearing the impugned marks ROYAL, CLASSIC UTSAV, DIAMOND, ASIANCEM, the Device of a Boy holding a brush in his hand and the impugned pirated artworks and trade dress of CLASSIC UTSAV and DIAMOND as seized by the Court Receiver. The unbranded containers/buckets alongwith the contents thereof would then be duly returned to the Defendant for future use under different trade mark and artwork; The Defendant further agrees to destroy all such materials i;e. shade cards, poly bags, pouches, labels; stickers, advertising• and packaging materials, dyes, screens, blocks, moulds, papers, vouchers, bill books, carry bags and other goods bearing the aforementioned impugned marks and pirated artworks. The aforesaid destruction is agreed 6 by the parties to be undertaken in the presence of the Plaintiff's representative and within a period of 2 weeks from the date of execution of this consent terms.

#6. As regards the Plaintiff's claim of damages mentioned in prayer clause (e) of the plaint, the Defendant hereby pays an amount of Rs. 5,00,000/- (Rupees Five Lakhs Only) in favour of the Plaintiff, i.e. Asian Paints Limited, vide Demand Draft No. 998424 dated 05.11.2022 drawn on Union Bank of India. The Defendant submits that the said Demand Draft issued in Plaintiff's favour will be honored by their bankers.

#7. In case the Defendant is found to violate the above terms, then the Defendant would be guilty of contempt of this Hon'ble Court's order and shall be liable to pay an amount of Rupees One Crore as and by way of damages to the Plaintiff. This would be in addition to all other legal remedies which the Plaintiff would then be legally entitled to institute against the Defendant abovenamed.

#8. Copy of the Power of Attorney in favour of Ms. Namrata Sharma, Manager Legal and Constituted Attorney for the Plaintiff, and a copy of the identity proof viz. Aadhar Card of Mr. Mahesh Vasantrao Saste, proprietor of the Defendant 7 abovenamed, are appended herewith as ANNEXURES A and respectively. Dated this 22T1 day of November 2022. Namrata Sharma (Manager-Legal and Constituted Attorney for the Plaintiff) MahelT Vasantrao Saste (Proprietor of the Defendant) Advocales for the Plaintiff Advocate for the Defendant B I MAHARASHTRA C 2021 C BM 732190 WTT Icp ci*e4, (.00000 21 JUL 2022 Tl 3R5T POWER OF ATIORNEY TO ALL TO WHOM THESE PRESENTS SHALL COME, I, R J Jeyamurugan, presently working as Chief Financial Officer and Company Secretaiy for M/s. Asian Paints Limited, a Company registered under the provisions of the Companies Act, 1913, and governed by the applicable provisions of the Companies Act, 2013, having its Registered Office at 6 A Shantinagar, Santacruz (East), Mumbai 400055 (hereinafter preferred to as 'the Company') SEND GREFI1NGS: WHEREAS I am the duly constituted Attorney of the Company by virtue of the Power of Attorney dated February, 16th 2022 and as such as per Clause 21 of the said Power of Attorney, I am empowered to sub-delegate any or all of any powers delegated to to one or more Executives of the Company. 'U ?'r'r'- ;j,1 n,yfor t9 uun 8(AN PAH4T5 UMITED •m• Pip. Uni La'* 'aiim. 11 ___ - *: £d.iö• 5 Jer: . 3 ?/I'. 3T* rr y ak4i/.ow)r iiii If* "r 's; i 3fl. 2 7 U12 OW KNOW TO ALL THAT I, R J Jeyamurugan, presently working as Chief Financial fficerand Company Secretary, am desirous of appointing some fit and proper person to at as an Attorney for and on behalf of the Company and I do hereby nominate, conitute and appoint Ms. Nanirata Sharma, Manager -Legal, to act in the name and on behalf of the Company and to lawfully do and execute all or any of the following acts, deeds, matters and things in respect of the aforesaid branch of the Company that is to say

#1. To Demand, sue for, enforce payment of all money securities for money debts, goods, chattels, interest and things of that nature or description whatsoever which now are or at any time or times hereafter shall or may become due or owing or payable toor recoverable by the company.

#2. To Take or defend any legal proceeding touching any matter in which the company is or may hereafter be interested or concerned and compromise or abandon any such proceeding and to resist, settle compromise or submit to arbitration any accounts, debts, claims, demands and disputes touching any matters which are now subsisting or may hereafter arise between the company or any other person or person or corporation or between the Agents and any other person or person or corporation and to engage Solicitors, Pleaders, Advocate or Counsels as he may deem necessary.

#3. To Sign, declare and affirm plaint, written statement, writ of any nature, reply application, complaint, affidavit, Memorandum of Appeal, Vakalatnarna, Objection Petition, or application and other necessary documents or writing in the name of the company an on the behalf of the company and to Appear/let in evidence, before any judge, Magistrate, court, or other officer empowered by law to hear any suit or proceeding appeal or inquiry relating to any of the matter, relating to the company or in which the company may be interested and to accept service of any Writ or Summons, Notice, Rule or other process and to appear for the company and to represent the company in any court and before all Judicial or public officers or authorities as the Attorney shall think proper.

#4. To defend any suit and for that purpose to engage lawyers, pleaders, send notice, verify and sign written statements, affidavits, petitions, writs, revision and application of all kinds and to file them in any court or office of law.

#5. To Appear and represent the company before any income tax Authorities, Sales Tax Authorities, VAT Authorities, GST Authorities, Legal Metrology Authorities, Tribunal, Courts, Judges, Municipal Authorities, Government and Semi- Government Authorities or any public officer or authority and to claim and receive drawbacks, refund of taxes or money for any other purpose as may be necessary and to give and sign receipt or discharge for the same or any thereof.

#6. To file criminal complaints to the Magistrate or to Police Authorities and/or to file civil suits and to initiate and follow up legal proceedings in any court or before any authority against any person and to do all acts, deeds and things necessary or incidental for the protection of Company's Trade Marks and/or Copy Rights and in respect of similar offences against the Company.

#7. To hear any suit or proceedings, appeal or inquiry relating to any of the matter relating to the Company or in which the Company may be interested and to accept service of any writs of summons, notice, rule or other process and to appear for the company and on behalf of the Company before all judicial or Public Officers or authorities as the Attorney shall think proper and to give evidence and/or to produce evidence oral or documentary as the attorney may deem think fit.

#8. To hear any suit or proceedings, appeal or inquiry relating to matter pertaining to Customs, Excise, Sales Tax, VAT, Legal Metrology and GST in which the Company may be interested and to file returns, annual statements and to submit such Officer or authority appointed or named by the Government either State or Central, any documents, deeds or writings as the said attorney may deem fit and necessary. PROVIDED ALSO that this Power of Attorney shall ipso facto stand terminated if the said Attorney resigns from the Company's employment or on his ceasing to be in such employment or on his leaving such employment or on his transfer by the Company from the present place of employment for any reason whatsoever. PROVIDED that the said Attorney shall keep the Company informed, in writing, of all acts, deeds or things done by him by virtue of these presents. THE COMPANY do hereby agree to ratify and confirm whatever the said Attorney shall do or purport to do or canse to be done lawfully by virtue of these present. E)(ECUTED ON THIS_6tday of22. Signed and Delivered by the ) within named ) Shri. RJJeyamurugan, ) Chief Financial Officer and ) Company Secretary , ...v - - . —. 1' b3E1ORE M J- RAOASSAVE ).T.J---- Hta G' Auc 2022 fMDAS S. JAV L 8 - - -- — U v r GrMj:.j (.r -t. Of Fta N 4, Sa!h, S4:r; Co-op. Hsg. Soe. tt r-J:r 4tn Rod, Santacrcjz (E). umbai -400055. Mob. No. 9820487077 Sect1 No. "L— t / ,v. Left Thumb impression Signature Signature ILl EXHIBIT B • •qd'uc 't1tc Mahesh Vasantrao Saste 13f3I 008 22105/1982 Male 9781 9385 7696 31ThR 3T 3iIJ T 31T t Utiquo dentifica!icin Authority of lnc, SF0: Id 415523 Address; Sf0: Vasantrao Saste, nirgud, Nirugudi. Nfrgudi, Satara, Maharashlia, 415523 9781 9385 7696 _________ 1947 10903001947 • h&pidgO IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMM. IP SUIT NO.30 OF 2022 SUIT FOR INFRINGEMENT OF TRADEMARKS, COPYRIGHTS AND FOR PASSING OFF ACT CODE NOS. 77 & 87 CATEGORY CODE NOS. 1017 & 1018 Asian Paints Limited )... Plaintiff V/s. Neeta Paints )... Defendant CONSENT TERMS Dated this 22 day of November 2022 G.S. Hegde and V.A. Bhagat Advocates for the Plaintiff C/o. Arjun T. Bhagat & Co. Advocates for the Plaintiff. 132/1, Shaheen Apartments, Mody Street, Fort, Mumbai — 400 001. Tel: '(91-22) 22696729/22693717/18 Email: legal@atbhagatandco.com Enrollment No. MAH/1403/1990