This judgment dismisses two civil suits for non-prosecution after the court confirmed that the plaintiff failed to respond to an email notice sent to prosecute the actions. Connected applications were subsequently closed with no costs awarded.
Dismissal of civil suits for non-prosecution; closure of connected applications; no costs awarded.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
(ORDINARY ORIGINAL CIVIL JURISDICTION)
MONDAY, THE 09TH DAY OF AUGUST 2021
THE HON'BLE MR. JUSTICE R.SUBRAMANIAN
C.S.No.397 of 2000
And
A.No.77 of 2006
C.S.No.397 of 2000:-
Jolen Inc., 25, Walls Drive, Fairfield, Connecticut, USA. Rep. by its Constituted Attorney A.Arulselvam.
...Plaintiff
Vs
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Civil Suit Praying that this Hon'ble Court be pleased to grant the following reliefs:-
a. an order of permanent injunction restraining the Defendants, their heirs, assigns, successors-in-business, servants, agents, distributors, dealers, stockists or any of them from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in cosmetics preparations including creme bleach in packaging which is identical to or a colourable imitation/substantial reproduction of the Plaintiff's JOLEN creme bleach packaging, including the carton and container thereof, amounting to infringement of the Plaintiff's copyright in the artistic work JOLEN creme bleach carton, container and JOLEN written in distinctive script.
b. an order of permanent injunction restraining the Defendants, their heirs, assigns, successors-in-business, servants, agents, distributors, dealers, stockists or any of them from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in cosmetic preparations including creme bleach bearing the Trade Mark JOLEN or any mark deceptively similar thereto, cartons and containers which are a colourable imitation of the Plaintiff's JOLEN creme bleach carton and
container in colour scheme, get up and lay out, or from doing any other
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thing amounting to passing-off or enabling others to pass off the
Defendants goods as and for goods of the Plaintiff.
c. an order for rendition of accounts of profits earned by the Defendants by the use of the Trade Mark JOLEN carton, container identical or similar to Plaintiff's copyright in the artistic work JOLEN creme bleach carton, container and JOLEN written in distinctive script, and a decree be passed in favour of the Plaintiff for the amount so ascertained.
d. an order for delivery-up by the Defendant, of all packaging material including products, containers, cartons, labels and stationery/advertising material including blocks, dies, pamphlets, brochures and other literature bearing the Trade Mark JOLEN or any mark deceptively similar thereto, to the Plaintiff or its authorised representative for the purposes of destruction/erasure;
e. for costs of the suit.
A.No.77 of 2006:-
https://hcservices.ecourts.gov.in/hcservices/ Delhi – 110 052.
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Jolen Inc., 25, Walls Drive, Fairfield, Connecticut, USA. Rep. by its Constituted Attorney A.Arulselvam. ...Respondent/Plaintiff
Application praying that this Hon'ble Court be pleased to reject the plaint and award costs of the proceedings to the defendants.
This Civil Suit with application connected along with C.S.No.831 of 2004 coming on this day before this court for hearing in the presence of Mr.Madhan Babu for M/s.Kurian & Kurian, advocates for the plaintiff in C.S.No.397 of 2000 and for the respondent in A.No.77 of 2006 and Mr.Sanjay Ramasamy, advocate for the defendants 1,3&4 in C.S.No.397 of 2000 and for the applicants 1,3 & 4 in A.No.77 of 2006 and Mr.Jayesh B.Dolia, advocate for the 2nd defendant in C.S. No.397 of 2000 and for the 2nd applicant in A.No.77 of 2006 and upon reading the plaint filed in C.S.No.397 of 2000 and the Judges Summons and the affidavit of Gaurav
https://hcservices.ecourts.gov.in/hcservices/ Jain filed in A.No.77 of 2006 and the learned counsel for the plaintiff
having submitted that they have informed the plaintiff in United States
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regarding the need for prosecuting these suits by way of e-mail on
12.07.2021 and till date there has been no response from the plaintiff,
and it is ordered as follows:-
That the suit in C.S.No.397 of 2000 be and is hereby dismissed for
non-prosecution.
WITNESS THE HON'BLE MR. JUSTICE SANJIB BANERJEE, CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 9TH DAY OF AUGUST 2021.
Sd./-
ASSISTANT REGISTRAR(Comm.Cases) //Certified to be true copy//
Dated at Madras this the day of 2021.
COURT OFFICER(O.S.)
From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments.
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VSP 13/09/2021
C.S.No.397 of 2000 And A.No.77 of 2006
ORDER
DATED : 09.08.2021
THE HON'BLE MR. JUSTICE R.SUBRAMANIAN
FOR APPROVAL: 01/10/2021
APPROVED ON: 04/10/2021
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 09.08.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.Nos.397 of 2000 and 831 of 2004 and
A.No.77 of 2006 in C.S.No.397 of 2000 and
A.Nos.878, 879, 880, 4095, 4321, 4322, 4323 of 2004 and 5436, 1305, 1306, 1307 of 2005 and 3163 of 2006 in C.S.No.831 of 2004
C.S.No.397 of 2000:
Jolen Inc., 25, Walls Drive, Fairfield, Connecticut, USA rep. by its Constituted Attorney A.Arulselvan
...Plaintiff
.Vs.
1.ShobanLal Jain
2.Hindustan Rimmer, C-2/7, Shopping Complex, Ashok Vihar, Delhi – 110 052.
3.Jolen International Private Limited, C-2/7, Shopping Complex, Ashok Vihar, Delhi – 110 052.
4.Vikas Jain
... Defendants
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Plaint filed under Order VII Rule 1 of the Code of Civil Procedure and Order IV Rule 1 of the Original Side Rules read with Sections 27, 105 and 106 of Trade and Merchandise Marks Act, 1958 and Sections 51, 55 and 62 of the Copyright Act, 1957 praying for judgment and decree granting:
(a) an order of permanent injunction restraining the defendants, their heirs, assigns, successors-in-business, servants, agents, distributors, dealers, stockists or any of them from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in cosmetics preparations including crème bleach in packaging which is identical to or a colourable imitation/ substantial reproduction of the plaintiff's JOLEN crem bleach packaging, including the carton and container thereof, amounting to infringement of the plaintiff's copyright in the artistic work JOLEN crème bleach carton, container and JOLEN written in distinctive script;
(b) an order of permanent injunction restraining the defendants, their heirs, assigns, successors-in-business, servants, agents, distributors, dealers, stockists or any of them from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in cosmetics preparations including crème bleach bearing the Trade Mark JOLEN or any mark deceptively similar thereto, cartons and containers which are a colourable imitation of the plaintiff's JOLEN crème bleach carton and container in colour scheme, get up and lay out, or from doing any other thing amounting to passing-off or enabling others to pass off the defendants' goods as and for goods of the plaintiff.
(c) an order for rendition of accounts of profits earned by the https://hcservices.ecourts.gov.in/hcservices/ defendants by the use of the Trade Mark JOLEN carton, container identical or similar to plaintiff's copyright in the artistic work JOLEN
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crème bleach carton, container and JOLEN written in distinctive script, and a decree be passed in favour of the plaintiff for the amount so ascertained.
(d) an order for delivery-up by the defendant, of all packaging material including, products, containers, cartons, labelsa and stationery/ advertising material including blocks, dies, pamphlets, brochures and other literature bearing the Trade Mark JOLEN or any mark deceptively similar thereto, to the plaintiff or its authorised representative for the purposes of destruction/ erasure and
(e) for costs of the suit.
For Plaintiff : Mr.Madhan Babu for M/s.Kurian & Kurian
For Defendants : Mr.Jayesh B.Dolia for D2 Mr.Sanjay Ramasamy for D1, 3 and 4
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C.S.No.831 of 2004:
Jolen Inc., 25, Walls Drive, Fairfield, Connecticut, USA rep. by its Constituted Attorney A.Arulselvan
...Plaintiff
.Vs.
1.Jolen International Private Limited, 36, Srinagar Colony, Ashok Vihar Road, Delhi – 110 052.
2.ShobanLal Jain
3.Vikas Jain
Plaint filed under Order IV Rule 1 of the Madras High Court Original Side Rules and Order VII Rule 1 of the Code of Civil Procedure read with Sections 27, 134 and 135 of the Trademarks Act, 1999 praying for judgment and decree granting:
(a) a permanent injunction restraining the defendants, their directors, officers, servants, agents, legal representatives, successors-inbusiness, distributors, dealers, stockists, super stockists, assigns or any one claiming through or under them from passing off or enabling others to pass of the defendants business/ goods/ services as and for the https://hcservices.ecourts.gov.in/hcservices/ business/ goods/ services of the plaintiff by use of the corporate name/
trading style JOLEN International Ltd., JOLEN International Private
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Ltd., and domain names www.Jolenintl.com or any other corporate name/ trading style, domain name, internet web site address, e-mail ID bearing the trade mark/ trade name JOLEN or any other mark deceptively similar to the plaintiff's trade mark/ trade name JOLEN and /or in any other manner whatsoever connected with the plaintiff;
(b) a permanent injunction restraining the defendants, their directors, officers, servants, agents, legal representatives, successors-inbusiness, distributors, dealers, stockists, super stockists, assigns or any of them from adopting and using, for the purpose of manufacture and sale, cartons having bluish green colour combination with white lettering and distinctive shaped containers for their OLINA crème bleach or any other cosmetic preparations which are identical to and/or deceptively similar to the trade dress in the plaintiff's JOLEN crème bleach carton having bluish green colour combination with white lettering and distinctive shaped JOLEN crème bleach containers for crème and accelerator thereby passing off or enabling others to pass off their products as and for the plaintiff's products or in any other manner whatsoever;
(c) a permanent injunction restraining the defendants, their, directors, servants, agents, legal representatives, successors-in-business, distributors, dealers, stockists, super stockists, assigns or any one claiming through them either from advertising, displaying, communicating or making publicity that JOLEN has been changed or renamed as OLINA or any message, circular, advertisement, announcements, notices, posters, strips, fliers etc., making any reference to trademark JOLEN in any manner whatsoever;
(d) The defendants be ordered to surrender to the plaintiff for https://hcservices.ecourts.gov.in/hcservices/ destruction all cosmetic products, cartons, containers, packaging, name boards, signage, labels, advertisement materials, circulars, posters,
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danglers, brochures, pamphlets, literature and all other materials bearing the trade mark/ trade name JOLEN as well as relating to other issues that are complained of by the plaintiff in the suit;
(e) A preliminary decree be passed in favour of the plaintiff directing the defendants to render true and faithful accounts of profits made by them on account of the continuous violation of the trade mark/ trade name JOLEN by use of trade name JOLEN International P.Ltd., or JOLEN International Ltd., domain name jolenintl.com, using similar trade dress and other acts and a final decree be passed in favour of the plaintiff for the amount of profits so ascertained;
(f) the defendants be ordered to pay the plaintiff a sum of Rs.10,05,000/- as liquidated damages for committing continuous acts of violation of the plaintiff's trade mark/ trade name JOLEN in various manner and
(g) for costs of the suit.
For Plaintiff : Mr.Madhan Babu for M/s.Kurian & Kurian
For Defendants : Mr.Sanjay Ramasamy for D to D4
C O M M O N J U D G M E N T
The learned counsel for the plaintiff would submit that they have
informed the plaintiff in United States regarding the need for prosecuting these suits by way of e-mail on 12.07.2021 and till date there has been no https://hcservices.ecourts.gov.in/hcservices/
response from the plaintiff.
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2. In view of the same, the suits are dismissed for non-prosecution.
No costs. Consequently, the connected applications are closed.
Sd./-R.S.M.J 09.08.2021
List of the witnesses examined on the side of the plaintiff : Nil List of Exhibits marked on the side of the plaintiff : Nil List of the witnesses examined on the side of the defendants: Nil List of Exhibits marked on the side of the defendants: Nil
Sd./-R.S.M.J 09.08.2021
//Certified to be true copy// Dated at Madras this the day of 2021.
COURT OFFICER(O.S.)
From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.
2 issues framed by the court
Whether civil suits filed for infringement of trademarks and copyright should be proceeded with when the plaintiff failed to respond to an email notice to prosecute the suits.
What is the appropriate disposition of pending civil suits when the plaintiff is unresponsive to a summons to appear.
5 provisions across 5 enactments
Jolen Inc.
ShobanLal Jain
Hindustan Rimmer
Jolen International Private Limited
Vikas Jain
R. Subramanian
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
