Allowed

M/s.Micro-Pak Ltd. v. Unicorn Chemicals Co.

Madras HC11 Aug 2021CS/569/2015

Case brief

AI extract

What is this about?

This court decreed a suit for infringement of trademark and copyright. The court found the defendant guilty of counterfeiting the plaintiff's moisture-absorbing stickers and attempting to pass them off. The court granted perpetual injunctions, ordered surrender of counterfeit materials, accounted for profits, and awarded damages.

What did the court decide?

Perpetual injunction against manufacturing/selling counterfeit stickers; surrender of counterfeit materials; accounting of profits; damages of Rs. 25,01,000.

M/s.Micro-Pak Ltd. Vs Unicorn Chemicals Co. — Intellectual Property | Madras HC (2021)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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(ORDINARY ORIGINAL CIVIL JURISDICTION)

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WEDNESDAY, THE 11TH DAY OF AUGUST 2021

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THE HON'BLE MR. JUSTICE R.SUBRAMANIAN

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C.S.No.569 of 2015

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1.M/s.Micro-Pak Ltd., Suite 2504, 25/F, Tower 6, The Gateway, Harbour City,

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9, Canton Road, TsimSha Tsui, Kowloon, Hong Kong, Represented by its Power of Attorney holder, Mr.SateeshJadhav

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2.M/s.Gaitonda Leathers and Accessories Pvt. Ltd.,

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Corium House, Aisa Garden Complex, A-Block, V Floor, 58, Harrington Road, Chetpet, Chennai – 600031. Represented by its Managing Director, Mr.SateeshJadhav ... Plaintiffs

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-Versus-

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Unicorn Chemicals Company, 726, Vivekananda Nagar, Madhyamgram, Kolkata – 700129.

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... Defendants

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C.S.No.569 of 2015

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Civil Suit praying that this Hon'ble Court be pleased to pass a

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judgment and Decree against the Defendants:

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a) a perpetual injunction restraining the Defendant, its

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distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner manufacturing, selling, offering for sale, stocking, advertising the Impugned Stickers filed

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https://hcservices.ecourts.gov.in/hcservices/

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as Plaint Document No.8 or any other product using the plaintiff's said trade

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marks namely:-i) Micro-Pak (word), (ii) Micro-Pak Green Label (filed as

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Plaint Document No.2) or (iii) Micro-Pak Trade Dress (filed as Plaint

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Document No.3) or any / or other trade mark/s which is/are identical with or deceptively similar to the plaintiff's said trademarks so as to pass off the Defendant's Impugned Stickers (filed as Plaint Document No.10) as and for those of the first plaintiff's' Micro-Pak Stickers (filed as Plaint Document No.1) or in any manner connected with the Plaintiff.

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b) a perpetual injunction restraining the Defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner infringing the copyright of the first plaintiff by reproducing and / or using the plaintiff's said artistic works namely (i) Micro-Pak(word), (ii) Micro-Pak Green Label (filed as Plaint Document No.2), (iii) Micro-Pak Trade Dress (filed as Plaint Document No.3), or any other artistic works which are a substantial reproduction of the plaintiff's said artistic works or in any other manner whatsoever;

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c) the defendant be ordered to surrender to plaintiff for destruction all the defendant's counterfeit products, packets, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the plaintiff's said Trademarks/Artistic works;

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https://hcservices.ecourts.gov.in/hcservices/

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d) a preliminary decree be passed in favour of the plaintiff

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directing the Defendant to render account of profits made by use of plaintiff's said Trademarks/Artistic works and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts;

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e) the defendant be ordered and decreed to pay to the plaintiff a sum of Rs.25,01,000/- as damages for acts of passing off and infringement of copyright committed by the Defendant till date.

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f) for costs of the suit.

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This civil suit coming on this day before this court for hearing in

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the presence of Ms.R.Devi for Mr. Madhan Babu, Advocates for the plaintiff herein and the defendant herein not appearing in person or by advocate and upon reading the plaint filed herein and the other exhibits therein referred to and upon perusing the evidence adduced therein and this court having observed that from the evidence on record and particularly, the documents produced namely, the material objects No.1 & 2, this court is convinced that the defendant is guilty of attempting to pass off its products as the products of the plaintiff by counterfeiting the products of the plaintiff and this court find that the plaintiff have made out a case for grant of injunctive reliefs and for relief of accounting and it is ordered and decreed

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as follow:-

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https://hcservices.ecourts.gov.in/hcservices/

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That Unicorn Chemicals Company, the defendant herein, its

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distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them be and are hereby restrained by an order of perpetual injunction from in any manner (a) manufacturing, selling, offering for sale, stocking, advertising the Impugned Stickers filed as Plaint Document No.8 or any other product using the plaintiff's said trade marks namely:-i) Micro-Pak (word), (ii) Micro-Pak Green Label (filed as Plaint Document No.2) or (iii) Micro-Pak Trade Dress (filed as Plaint Document No.3) or any / or other trade mark/s which is/are identical with or deceptively similar to the plaintiff's said trademarks so as to pass off the Defendant's Impugned Stickers (filed as Plaint Document No.10) as and for those of the first plaintiff's' Micro-Pak Stickers (filed as Plaint Document No.1) or in any manner connected with the Plaintiff and (b) infringing the copyright of the first plaintiff by reproducing and / or using the plaintiff's said artistic works namely (i) Micro-Pak(word), (ii) Micro-Pak Green Label (filed as Plaint Document No.2), (iii) Micro-Pak Trade Dress (filed as Plaint Document No.3), or any other artistic works which are a substantial reproduction of the plaintiff's said artistic works or in any other manner whatsoever;

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That the defendant herein, be and is hereby directed to surrender to the plaintiff herein for destruction all the defendant's https://hcservices.ecourts.gov.in/hcservices/ counterfeit products, packets, labels, dyes, blocks, moulds, screen prints,

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https://hcservices.ecourts.gov.in/hcservices/

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packing materials and other materials bearing the plaintiff's said

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Trademarks/Artistic works.

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That the defendant herein, be and is hereby directed to render account of profits made by use of plaintiff's said Trademarks/Artistic works and directed to pay the amount of profits thus found to have been made by the defendant after the letter here rendered accounts.

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That the defendant herein do pay to the plaintiffs herein a sum of Rs. 25,01,000/- (Rupees Twenty Five Lakhs and One Thousand only) as damages for acts of passing off and infringement of Copyright committed by the defendant till date.

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That the defendant herein do pay to the plaintiffs herein the costs of this suit as and when taxed by the taxing officer of this court and noted in the margin thereof.

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WITNESS, THE HON'BLE MR.JUSTICE SANJIB BANERJEE, CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 11ST DAY OF AUGUST 2021

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Sd/-

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ASSISTANT REGISTRAR (Comm. Cases)

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//Certified to be true copy// Dated at Madras this the day of 2021.

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COURT OFFICER(O.S.) From 25th Day of September 2008 the Registry is issuing certified copies https://hcservices.ecourts.gov.in/hcservices/ of the Orders/Judgments/Decrees in this format.

28.10.2021

C.S.No. 569 of 2015

DECREE

DATED 11/08/2021

THE HON'BLE MR.JUSTICE R.SUBRAMANIAN

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FOR APPROVAL: 29/12/2021

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APPROVED ON: 05/01/2022

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https://hcservices.ecourts.gov.in/hcservices/

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IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 11.08.2021

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CORAM:

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THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN

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C.S.No.569 of 2015

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1.M/s.Micro-Pak Ltd., Suite 2504, 25/F, Tower 6, The Gateway, Harbour City,

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9, Canton Road, TsimSha Tsui, Kowloon, Hong Kong, Represented by its Power of Attorney holder, Mr.SateeshJadhav

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2.M/s.Gaitonda Leathers and Accessories Pvt. Ltd.,

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Corium House, Aisa Garden Complex, A-Block, V Floor, 58, Harrington Road, Chetpet, Chennai – 600031. Represented by its Managing Director, Mr.SateeshJadhav ...Plaintiffs

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Vs.

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Unicorn Chemicals Company, 726, Vivekananda Nagar, Madhyamgram, Kolkata – 700129. ...Defendant

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Prayer: Plaint filed under Order IV Rule 1 of the Original Side rules r/w. Sections 27, 134 & 135 of the Trademarks Act, 1999 r/w. Sections 51, 55 and 62 of the Copyright Act, 1957, praying as follows:-

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a) a perpetual injunction restraining the Defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under them from in any manner manufacturing, selling, offering for sale, stocking, advertising the Impugned Stickers filed

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as Plaint Document No.8 or any other product using the plaintiff's said trade https://hcservices.ecourts.gov.in/hcservices/ marks namely:-i) Micro-Pak (word), (ii) Micro-Pak Green Label (filed as

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Plaint Document No.2) or (iii) Micro-Pak Trade Dress (filed as Plaint Document No.3) or any / or other trade mark/s which is/are identical with or deceptively similar to the plaintiff's said trademarks so as to pass off the Defendant's Impugned Stickers (filed as Plaint Document No.10) as and for those of the first plaintiff's' Micro-Pak Stickers (filed as Plaint Document No.1) or in any manner connected with the Plaintiff.

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d) a preliminary decree be passed in favour of the plaintiff directing the Defendant to render account of profits made by use of plaintiff's said Trademarks/Artistic works and the trade marks / artistic works and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts;

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e) the defendant be ordered and decreed to pay to the plaintiff a https://hcservices.ecourts.gov.in/hcservices/ sum of Rs.25,01,000/- as damages for acts of passing off and infringement

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of copyright committed by the Defendant till date.

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f) for costs of the suit. For Plaintiffs : Ms.R.Devi for Madhan Babu

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J U D G M E N T

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The plaintiffs seek the reliefs of perpetual injunction restraining

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the defendant from manufacturing, selling, offering for sale, stocking, advertising the impugned stickers filed as Plaint Document No.8 or any other product using the plaintiff's trademarks namely:-(i) Micro-Pak (word), (ii) Micro-Pak Green Label or (iii) Micro-Pak Trade Dress or any other trademarks, which are identical with or deceptively similar to the plaintiffs' Trademark and the Trade Dress, a perpetual injunction restraining the defendant from infringing the copyright of the 1^st plaintiff in the artistic works, words and design of the label, mandatory injunction for surrender of counterfeit products, packets, labels, dyes, blocks, moulds, screen prints, packing materials and other materials as well as a decree for accounting.

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2.According to the plaintiffs, the 1^st plaintiff is a manufacturer of

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the stickers, which are capable of obsorbing moisture and preventing odour in packaged items and footwear particularly, shoes. The 2^nd plaintiff is the Indian distributor of the said product. The product of the plaintiff is rolled

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up and packed in aluminium foil with the label and name printed in green https://hcservices.ecourts.gov.in/hcservices/ colour. The plaintiffs would claim that their stickers have got a wide market

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and they are used in packaging of goods as well as shoes, because of their extradinary ability to obsorb moisture and prevent odour in packaged items.

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The plaintiffs would claim that their product has got extensive market in India.

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3.According to the plaintiffs, the defendant had counterfeited not only the product of the 1^st plaintiff but also copied the packaging and the labels etc., in order to sell the same as the product of the plaintiffs. The infringement by the defendant came to light when the defendant offered to appoint the 2^nd plaintiff as its dealer in India to sell the counterfeit product. On the above pleadings, the plaintiffs sought for the injunctive reliefs and relief of accounting stated supra.

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4.Though the defendant was served as early as on 11.03.2016, it

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has not chosen to enter appearance through a counsel to contest the proceedings. Hence, the defendant was set exparte on 19.07.2021 and the matter was posted before the learned Additional Master of this Court to record evidence.

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5.One Sateesh Jadhav has been examined as P.W.1 and Exs.P1 to https://hcservices.ecourts.gov.in/hcservices/ P14 have been marked. The actual product of the plaintiff has been

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produced as MO1 and that of the defendant has been produced as MO2. A look at these material objects would celarly establish that the product of

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the defendant is actually the counterfeit of the product of the plaintiff. From the evidence of P.W.1 and the documents produced, it is clear that the 1^st plaintiff is the prior user and it has also earned reputation in the market and the defendant has clearly counterfeited the product of the plaintiffs and attempted to sell the same as the product of the plaintiffs.

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6.From the evidence on record and particularly, the documents produced namely, the Material Objects No.1 and 2, I am convinced that the defendant is guilty of attempting to pass off its products as the products of the plaintiff by counterfeiting the products of the plaintiff. I find that the plaintiffs have made out a case for grant of injunctive reliefs and for relief

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of acccounting. Hence, this suit is decreed as prayed for with costs.

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S d/- R.S.M.J. 11/08/2021

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List of witness examined on the side of the plaintiffs:

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Sateesh Jadhav - P.W.1

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List of documents filed on the side of the plaintiffs:

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*S.No.*	*Description of Documents*	*Exhibit*
1	The original authorization letter on 03.08.2021	Ex.P1
2 rts.gov.in	The photograph of the plaintiff's Micro-Pak sticker Roll and photograph of an individual sticker taken from the roll. /hcservices/	Ex.P2
3	The original Micr-Pak Green Label	Ex.P3

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https://hcservices.ecourts.gov.in/hcservices/

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S.No.
4

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*S.No.*	*Description of Documents*	*Exhibit*
4	The photograph of the distinctive packaging of the first plaintiff's Micro-Pak Trade Dress	Ex.P4
5	The photocopy of sample bills and invoices evidencing the sales of the plaintiff's good under the plaintiff's said trade marks.	Ex.P5
6	The photocopies of sample advertisements of the plaintiff's goods under the plaintiffs said trade marks.	Ex.P6
7	The original invoice of the defendant company selling the impugned product.	Ex.P7
8	The printout of E-mail from the first defendant to the second plaintiff.	Ex.P8
9	The photographs of the Trade Dress of the first plaintiff as copied and used by the defendant	Ex.P9
10	The printout of a representation of on individual counterfeit / imitation sticker sold by the Defendant and a photograph of the roll of the counterfeit Micro-Pak stickers sold by the Defendant.	Ex.P10
11	The photo of comparison of the packed product of the plaintiff and defendant.	Ex.P11
12	The photo of comparison of the rolls of the plaintiff and Defendant.	Ex.P12
13	The photocopy of few sample copies of policies and guidelines of reputed international brand owners and importers.	Ex.P13
14	The photocopy of order copies in OA.No.856 and 857 of 2014 and O.A.Nos.220 and 221 of 2015.	Ex.P14
15	The sealed cover of plaintiff's packed product.	Mo.1
16	The sealed cover of Defendant's packed product.	Mo.2

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List of witness and documents filed on the side of the defendant:

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Nil

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S d/- R.S.M.J. 11/08/2021 //Certified to be true copy// Dated at Madras this the day of 2021.

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COURT OFFICER(O.S.) From 25th Day of September 2008 the Registry is issuing certified copies https://hcservices.ecourts.gov.in/hcservices/ of the Orders/Judgments/Decrees in this format.

M/s.Micro-Pak Ltd. v. Unicorn Chemicals Co.

Case brief

What is this about?

What did the court decide?

M/s.Micro-Pak Ltd. v. Unicorn Chemicals Co.

Case brief

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What did the court decide?

What the court decided

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