The Madras High Court dismissed a suit for trademark infringement and passing-off filed by Jolen Inc. against several defendants for non-prosecution, as the plaintiff failed to respond to emails regarding the need to prosecute the suit.
The suit and all connected applications were dismissed for non-prosecution. 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.831 of 2004
And O.A.Nos.878,879,880
&
A.Nos.4095,4321,4322,4323 of 2004 & 1305,1306,1307,5436 of 2005 &
3163 of 2006
C.S.No.831 And O.A.Nos.878,879,880&A.No.4095of 2004:-
Jolen Inc., 25, Walls Drive, Fairfield, Connceticut 06430, USA Rep.by its Constituted Attorney A.Arulselvan.
... Applicant/Plaintiff in O.A.Nos. 878 to 879& A.No.4095 of 2004
Vs.
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C.S.No.831 of 2004:-
Civil Suit Praying that this Hon'ble Court be pleased to pass a
judgment and decree on the following terms:-
(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 business/goods/services of the plaintiff by use of the corporate
name/trading style JOLEN International Ltd., JOLEN International Private Ltd., and domain names www.Jolenintl.Com or any other corporate name/trading style, domain name, Internet web site address, e- mail ID bearing he 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;
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(b) a permanent injunction restraining the defendants, their directors, servants, agents, legal representatives, successors-in-business, 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 creme bleach or any other cosmetic preparations which are identical to and/or deceptively similar to the trade dress in the plaintiff's JOLEN creme bleach carton having bluish green colour combination with white lettering and distinctive shaped JOLEN creme bleach containers for creme 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;
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(d) The defendants be ordered to surrender to the plaintiff for destruction all cosmetic products, cartons, containers, packaging, name boards, signage, labels, advertisement materials, circulars, posters, 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 to 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;
(g) for costs of the suit;
O.A.No.878 of 2004:-
Original Application praying that this Hon'ble Court be pleased to
grant interim injunction restraining he respondents, their directors,
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officers, servants, agents, legal representatives, successors-in-business, distributors, dealers, stockists, super stockists, assigns or any one claiming through or under them from passing off or enabling others to pass of the respondents business/goods/services as and for the business/goods/service of the applicant by use of the corporate name/trading style JOLEN International Ltd., JOLEN International Private Ltd., and domain names www.Jolenintl.Com or any other corporate name/trading style, domain name, Internet web site address, e- mail ID [email protected] or any other e-mail id bearing the trade mark/trade name JOLEN or any other mark deceptively similar to the applicants trade mark/trade name JOLEN and/or in any other manner whatsoever connected with the applicant, pending disposal of the suit.
O.A.No.879 of 2004:-
Original Application praying that this Hon'ble Court be pleased to grant interim injunction restraining the respondents, their directors, servants, agents, legal representatives, successors-in-business, 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 creme bleach or any other cosmetic preparations which are identical to and/or deceptively similar to
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the trade dress in the applicant's JOLEN creme bleach carton having bluish green colour combination with white lettering and distinctive shaped JOLEN creme bleach containers for creme and accelerator thereby passing off or enabling others to pass of their products as and for the applicant's products or in any other manner whatsoever, pending disposal of the suit.
O.A.No.880 of 2004:-
Original Application praying that this Hon'ble Court be pleased to grant interim injunction restraining the respondents, 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, pending disposal of the suit.
A.No.4095 of 2004:-
Application praying that this Hon'ble Court be pleased to grant leave to sue the respondent before this Hon'ble Court.
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A.Nos.4321,4322,4323 of 2004:-
...Applicants/Respondents/Defendants in O.A.Nos.878 to 879&A.Nos.4095, 4321to 4323 of 2004
Vs
Jolen Inc., 25, Walls Drive, Fairfield, Connceticut 06430, USA rep.by its Constituted Attorney A.Arulselvan.
...Respondent/Applicant/Plaintiff in O.A.Nos. 878 to 879 & A.No.4095, 4321to 4323 of 2004
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A.No.4321 of 2004:-
Application praying that this Hon'ble Court be pleased to vacate
the order of injunction granted on 20/10/2004 in O.A.No.878 of 2004 in C.S.No.831 of 2004.
A.No.4322 of 2004:-
Application praying that this Hon'ble Court be pleased to vacate
the order of injunction granted on 20.X.2004 in O.A.No.879 of 2004 in C.S.No.831 of 2004.
A.No.4323 of 2004:-
Application praying that this Hon'ble Court be pleased to vacate
the order of injunction granted on 20/10/2004 in O.A.No.880 of 2004 in
C.S.No.831 of 2004.
A.Nos.1305, 1306 & 1307 of 2005:-
Jolen Inc., 25, Walls Drive, Fairfield, Connceticut 06430, USA
... Petitioner in
A.Nos.1306&1307 of 2005 Vs.
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Director of Jolen International Limited, 36, Srinagar Colony, Ashok Vihar Road, Delhi – 110 052.
...Respondents in A.Nos.1306&1307 of 2005
A.No.1305 of 2005:-
Application praying that this Hon'ble Court be pleased to punish
the respondents with imprisonment and/or with fine for willfully and deliberately disobeying the orders of this Hon'ble Court dated 20th October 2004 made in O.A.No.878 of 2004 in C.S.No.831 of 2004 under order XXXIX Rule 2A of CPC and order attachment of property of the respondents and detain them in civil prison.
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A.No.1306 of 2005:-
Application praying that this Hon'ble Court be pleased to punish the respondents with imprisonment and/or with fine for willfully and deliberately disobeying the orders of this Hon'ble Court dated 20th October 2004 made in O.A.No.879 of 2004in C.S.No.831 of 2004 under Order XXXIX Rule 2A of CPC and order attachment of property of the respondents and detain them in civil prison.
A.No.1307 of 2005:-
Application praying that this Hon'ble Court be pleased to punish the respondents with imprisonment and/or with fine for willfully and deliberately disobeying the orders of this Hon'ble Court dated 20th October 2004 made in O.A.No.880 of 2004 in C.S.No.831 of 2004 under order XXXIX Rule 2A of CPC and order attachment of property of the respondents and detain them in civil prison.
A.No.5436 of 2005:-
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Delhi – 110 052.
...Applicants/Defendants
Vs
25, Walls Drive,
Fair Field, Connceticut 06430
...Respondent/Plaintiff
Application praying that this Hon'ble Court be pleased to
dismiss the above suit C.S.No.831 of 2004 as against the Applicants on
the ground of preliminary objection.
A.No.3163 of 2006:-
36, Srinagar Colony, Ashok Vihar Road, Delhi – 110 052.
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...Applicants/Defendants
Vs
Jolen Inc., Rep.by its Constituted Attorney 25, Walls Drive,Fairfield, Connceticut 06430, USA Rep.by its Constituted Attorney A.Arulselvan.
...Respondent/Plaintiff
Application praying that this Hon'ble Court be pleased to reject the plaint with exemplary cost to the defendants.
This Civil Suit with these applications connected along with C.S.No.397 of 2000 coming on this day before this court for hearing in the presence of Mr.Madhan Babu for M/s.Kurian and Kurian, advocates for the plaintiff in C.S.No.831 of 2004 and for the applicant in A.Nos.878 to 880 & 4095 of 2004 and 1305 to 1307 of 2005 and for the respondent in A.Nos.4321 to 4323 of 2004, 5436 of 2005 and 3163 of 2006 and Mr.Sanjay Ramasamy, advocate for the defendants in C.S.No.831 of 2004 and for the respondents in A.Nos.878 to 880 & 4095 of 2004 and 1305 to 1307 of 2005 and for the applicant in A.Nos.4321 to 4323 of 2004, 5436 of 2005 and 3163 of 2006 and upon reading the plaint filed in C.S.No.831 of 2004 and the Judge's Summons and the affidavit of A.Arulselvan filed in A.No.4095 of 2004 and the Judge's
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Summons and the affidavit of Gaurav Jain filed in A.No.5436 of 2005 and the Judge's Summons and the affidavit of Puran Chand Chawla filed in A.Nos.1305 to 1307 of 2005 and the order dated 08/02/2005 made in A.Nos.878 to 880 & 4321 to 4323 of 2004 and the order dated 31/07/2006 made in A.No.3163 of 2006 and the learned counsel for the plaintiff having submitted 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 response from the plaintiff and
it is ordered as follows:-
That the suit in C.S.No.831 of 2004 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.831 of 2004 And
O.A.Nos.878,879,880 & A.Nos. 4095, 4321, 4322, 4323 of 2004 &1305,1306,1307,5436 of 2005 & 3163 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 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.
36, Srinagar Colony, Ashok Vihar Road, Delhi – 110 052.
2.ShobanLal Jain
3.Vikas Jain
4.H.R.Personal Care (P) Ltd., Baddi – Nalagarh Highway, Village Malpur Himachal Pradesh
... Defendants
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 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 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 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 the suit should be dismissed due to lack of prosecution by the plaintiff.
Whether to direct costs against the parties.
2 provisions across 2 enactments
R.Subramanian
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
