Asian Paints Ltd v. M P Paint Industry

IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMM. IP SUIT NO. 415 of 2022 Asian Paints Limited ) Plaintiff Vs. M.P. Paint Industry ) Defendant CONSENT TERMS

¶1The Plaintiff abovenamed has filed the present suit against the abovenamed Defendant praying inter alia for reliefs relating to infringement of its registered trade/label mark of TRACTOR emulsion and the copyrights subsisting in the original artistic works of its TRACTOR emulsion and TRACTOR SPARC advanced labels and for passing off the goods viz, emulsion, wall primer, paints and other like goods used in the paint industiy by the Defendant, by use of the impugned label marks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer depicted under impugned pirated artworks and trade dress and for other reliefs, as more particularly mentioned in the plaint.

¶2The Defendant hereby acknowledges the proprietary rights of the Plaintiff in its trade mark label of TRACTOR I emulsion and original artistic works depicted on its TRACTOR emulsion and TRACTOR SPARC advanced labels being used in relation to the goods as more particularly mentioned in the plaint.

¶3The Defendant agrees and undertakes that he shall not hereafter use the impugned label marks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer depicted under pirated artworks being identical with and/or deceptively similar to the Plaintiffs trade mark label of TRACTOR emulsion and substantially similar to the original artistic works depicted on its TRACTOR emulsion and TRACTOR SPARC advanced labels, nor shall he use any other marks or artworks which is identical with and/or deceptively/substantially similar to the Plaintiffs aforementioned registered trade marks and copyrights in the original artistic work thereof

¶4The 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, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, wall primer, paints and other like goods used in the paint industry, the impugned label marks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer or any mark/s identical with and/or deceptively similar to the Plaintiffs trade/label mark of TRACTOR, so as to infringe upon on the Plaintiffs said trade mark TRACTOR emulsion registered under No. 2130519, 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, selling and/or using in any manner whatsoever in relation to their emulsion, wall primer, paints and other like goods used in the paint industry, the impugned pirated artworks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer (appended at Exhibit K to the plaint) bearing a colour scheme, placement of features, lay-out, get-up, style, artwork and representation or any other artwork which is identical with and/or is substantially/strikingly similar as regards the colour scheme, placement of features, lay-out, get-up, style, artwork and representation to the Plaintiff's original artistic labels of TRACTOR (appended at Exhibit A to the plaint) and TRACTOR SPARC (appended at Exhibit F to the plaint), so as infringe upon the Plaintiff's subsisting copyrights therein; 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, wall primer, paints and other like goods used in the paint industry, the marks MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer depicted under the imugned trade dress or from using any mark/s or trade dress identical with and/or deceptively similar to the Plaintiff's distinctive trade/label marks and the distinctive trade dress of TRACTOR and TRACTOR SPARC, so as to pass off the Defendant's goods and business as and for those of the Plaintiff or in some way connected or associated therewith; %ç. d. the Defendant be ordered and decreed to deliver-up to the Plaintiff for destruction all such materials including emulsion, wall primer, paints and other like goods used in the paint industry, containers, pouches, labels, stickers, advertising and packaging materials, dyes, screens, blocks, moulds, papers, vouchers, bill books, carry bags, and other goods bearing the mark MAGIK under the impugned labels, trade dress and the impugned pirated artworks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer as complained off

¶5As regards prayer clause (d) above, the Defendant undertakes to deface the goods bearing the impugned label marks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer, all depicted under pirated artworks as seized and sealed by the Court Receiver at the Defendant's premises. The unbranded containers/buckets alongwith the contents thereof would then be duly returned to the Defendant for future use under different trade marks and artworks. The Defendant further agrees to destroy all such materials including shade cards, poly bags, pouches, labels, stickers, advertising and packaging materials, dyes, screens, blocks, moulds, papers, vouchers, bill books, carry bags bearing the impugned label marks of MAGIK emulsion, MAGIK exterior emulsion and MAGIK wall primer, all depicted under pirated artworks. The aforesaid destruction and defacement is agreed 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.

¶6As regards the Plaintiff's claim of damages mentioned in prayer clause (e) of the plaint, the Defendant hereby pays an amount of Rs. 60,000/- (Rupees Sixty Thousand Only) in favour of the Plaintiff, i.e. Asian Paints Limited, vide Demand Draft No. 74545 dated 18.08.2023 drawn on IndusInd Bank, Jaipur. The Defendant submits that the said Demand Draft issued in the Plaintiff's favour will be honored by his bankers.

¶7In 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.

¶8Copy of the Power of Attorney in favour of Mr. Sagar Patwardhan, being the Manager Legal and Constituted Attorney for the Plaintiff and a copy of the identity proof viz. Aadhar Card, of Mr. Vikas Jam, the Defendant abovenamed, are appended herewith as ANNEXURES A and B respectively. Dated this I -day of September 2023. Sagar Patwardhan (Manager Legal and Constituted Attorney of the Plaintiff) Advocates for the Plaintiff ANNEXURE -A I BS 865398 uir cciI, . 00000 10 NOV 2022 T 3TT L OTARIAL NOTARIAL NOTARIAL POWER OF ATFORNEY TO ALL TO WHOM THESE PRESENTS SHALL COME, I, R J Jeyamurugan, presently workmg as Chief Financial Officer and Company Secretary for Asian Paints Limited, a Company registered under the provisions of the Indian Companies Act, 1913, and governed by the provisions of the Companies Act, 2013, having its Registered Office at 6 A Shantinagar, Santacruz (East), Mumbai 400055 (hereinafter referred to as 'the Company') SEND GREETINGS: 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 empowereji to sub-delegate any or all of any powers delegated to me, to one or more Executives of the Company. I I do or purport to do or cause to be done lawfully by virtue of these present. EXECUTED ON TEllS Signed and Deliv within Shri. Chief Finan ompany S BEFORE M RAMDAS S. JAVLE B.Com., L.L.B. -Notiry ratr, .Uirn'I DF 9n RI I 2022. day of $ 1J. NOW KNOW TO ALL THAT I, R J Jeyamurugan, presently working as Chief Financial Officer and Company Secretary, am desirous of appointing some fit and proper person to act as an Attorney for and on behalf of the Company and I do hereby nominate, constitute and appoint Mr. Sagar Patwardhan, Asst. 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 :-

¶1To demand from all such party/parties the amount due and payable to the Company and for that purpose to engage lawyers, pleaders, solicitors, send notice, verify and sign plaints, vakalatnamas, affidavits, petitions, writs, revisions and applications of all kinds and to file them in any Court or Office of Law.

¶2To file and defend any suit and for that purpose to engage lawyers, pleaders, send notice, verify and sign written statements, affidavits, petitions, writs, revisions, consent terms and application of all kinds and to file them in any Court or Office of Law.

¶3To 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.

¶4To 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. 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, o acts, deeds or things done by him by virtue of these presents. vi THE COMPANY do hereby agree to ratify and confirm whatever the said Attorney al c Left Thumb impression Left Thumb impression Signature Signature Tfri tpof -ur Banö, LIt,. c , Sycfe Chamb,,, 1Sf. F ah.,' Rt,ad.Atnj/,en (Es .-4 •O6 3530 1 06285 E JAN 31 2022 Mo 1'%Q WO MO Mo RO 0005 OO!—PBSsO2 INDIA STAMP DUTY MAHAR*SHTaA POWER OF AUORNEY TO ALL TO WHOM THESE PRESENTS SHALL COME: ASIAN PAINTS LIMITED, a company incorporated under the provisions of the Conipariies Act, 1913, and is, inter a/ia, governed by the provisions of the Companies Act, 2013, and having its registered office at 6A, Shantinagar, Santacruz East, Mumbai-400055 (hereinafter called 'the Company') SEND GREETINGS: AND WHEREAS the Company has its Branches/Plants/Factories across India and the Company is desirous of appointing some fit and proper person to act as its true and lawful attorney for the matters and with powers hereinafter set out: AND WHEREAS the Company is desirous of appointing Shri R J Jeyamurugan, CFO & Company Secretary, as its true and lawful attorney for the matters and with the powers hereinafter set out in connection with the operations of the Company. NOW THESE PRESENTS WITNESSETH THAT the Company do hereby nominate, constitute and appoint Shri R J Jeyamurugan, CFO & Company Secretary, (hereinafter called 'the Attorney') its true and lawful attorney for and in the name and on behalf of the Company to do the following acts, deeds and things:

¶1To Sign, declare and affirm plaint, written statement, writ petitions, reply application, complaint, affidavit, affidavit in reply, affidavit in rejoinder, sur-rejoinder, statement of claim, arbitration application/s, statement of defence, counter claim/s. Memorandum of Appeal, Vakalatnama, Objection petition, or application, consent terms, settlement agreement and other necessary documents or writings in the name of the Company and on 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 proceedings appeal or inquiry relating to any of the matters, 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, Tribunal, forum PAN India including Supreme Court and before all Judicial or public officers or authorities as the Attorney shall think proper. ,. 2. 4: C) . los -7 ---' 2. To defend any suit and for that purpose to engage lawyers, pleaders, send notice, verify and sign written statements, affidavits, petitions, writs, revisions and application of all kinds and to file them in any Court or Office of Law.

¶3To apply for, appear, represent, submit plans and sign necessary documents in connection with licenses and / or securing registrations or transfer of registrations under the Factories Act 1948, Central Excise Act 1944, Customs Act 1962, Income Tax Act 1961, Sales Tax Act, Value Added Tax Act (if applicable), Goods and Services Tax Act, 2017 and to appear, represent before authorities and any other State and Central Legislations with regard to construction activity, erection, commissioning, administration, taxation, labour and factory administration as applicable.

¶4To apply for, obtain, all licenses, permits, registrations, sanctions and renewals thereof as may be necessary and appropriate for thepurposes of carrying on the business of the Company and for this purpose to make, execute, sign and submit all necessary applications, forms, returns, documents an other papers to the necessary authorities and appear before the concerned authorities/officers' if necessary, in connection with obtaining all such licenses, permits, sanctions etc.

¶5To sign all letters, papers, fOrms, documents including affidavits / undertakings / applications, appeal/s as may be necessary for and on behalf of the Company in connection with Securities and Exchange Board of India Act, 1992 (SEBl), rules and regulations thereof including appearing before SEBl and Securities Appellate Tribunal

(SAT), engaging lawyers to appear and represent the Company in such proceedings before SEBI, SAT and Supreme Court.

¶6To sign all letters, papers, forms, documents including affidavits / undertakings / applications, appeal/s as may be necessary for and on behalf of the Company in connection with the Competition Act, 2002 and rules thereof including appearing before the Competition Commission of India (CCI), engaging lawyers to appear and represent the Company in such proceedings before the CCI, Registrar of Companies, Regional Director, National Company Law Tribunal, National Ccmpany Law Appellate Tribunal and Supreme Court.

¶7To appear and represent the Company before Labour law Tribunals/ Courts, SEBI, Securities Appellate Tribunal, Registrar of Companies, Regional Director, National Company Law Tribunal, National Company Law Appellate Tribunal or any other forum, / to file petitions, return, applications, appeals and annual statements etc. and to do any other acts, deeds or formalities required under the various Labour Laws and rules applicable to all and any Plant/s of the Company located in India.

¶8To act as authorised representative of the Company in terms of Section 113 of the Companies Act, 2013, to attend, vote and appoint proxy(ies) at any General Meeting of members of the Investee Coriipany(ies) to be held from time to time. To further sub-de'egate in writing such power to any other person as the Attorney may deem fit.

¶9To apply, represent, sign necessary documents and submit the same for and on behalf of the Company / Plant before any Municipal Authorities, Government and Semi-Government Authorities, for availing / obtaining uninterrupted services of power, water, drainage clearance and any other connections as are required for Plants and its operations.

¶10To appear and represent and make applications for and on behalf of the Company / Plant before any Excise Authorities, Income Tax and Sales Tax Authorities, Value Added Tax Act Authorities (if applicable), GST Authorities, Legal Metrology Authorities, Service Tax Authorities, Tribunals, Courts, Judicial I Quasi Judicial Authorities, Municipal Authorities, Government and Semi-Government Authorities or any public officer or authority and to file petitions, returns and annual statement and to remit, to claim and receive draw backs, refund of taxes or moneys or for any other purpose as may be necessary and to give and sign receipt or discharge for the same and I or to do any other acts, deeds or formalities necessary under this act and rules.

¶11To enter into, make, sign, execute and do all such contracts, agreements, deeds, declarations and things as may in the opinion of the attorney be necessary for carrying on the business of the Company / Plant under this Power of Attorney.

¶12To execute refund applications, refund claims, refund vouchers, receipts of monies thereon and entertain the related correspondence thereto on the service tax paid to the Central Government.

¶13To demand from all such party / parties the amount due and payable to the Company / Plant and for that purpose to engage lawyers, pleaders, solicitors, send notices, verify and sign plaints, vakalatnamas, affidavits, petitions, writs, revisions and application of all kinds including sign consent terms, settlement agreement and to file them in any Court or Office of Law.

¶14To defend any suit filed against the Company / Plant and for that purpose to engage lawyers, pleaders, send notice, verify and sign written statements, affidavits, petitions, writs, revisions and application of all kinds and to file them in any Court or Office of Law.

¶15To 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 in respect of offences against the Company / Plant of the Company.

¶16To appoint Investigation agencies to undertake surveys to inquire, detect and to investigate against and all the organizati&is/individual for any violation/ infringement or unauthorized or unlawful use of the brand names, trade marks, copyright, Iogo/s, special packing and design thereof of the Company (registered in the name of the company and / or being used under License) and passing off substandard and even counterfeit products, existing and applied by them in respect of Company's products and to allow investigation agencies! individuals to file necessary criminal complaints with prior written approval from the Company against the said organization! individual for any such violation of the Company's intellectual property rights with the appropriate enforcement agency, courts, Department of Police or any special agency of the State for this purpose and to take all necessary action for and on behalf of the Company.

¶17To 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.

¶18To represent the Company and appear before any Government, Central or State, Income Tax, Sales Tax or other tax, Customs, Excise, Import and Export Control Licensing, Municipal, Local, judicial, quasi-judicial, revenue or any other public body, regulatory authority, officer or officers for any purpose connected with or relating to the business, affairs, activities, operations and properties of the Company as may be necessary or expedient and to make, sign, verify and file all returns, applications, documents, forms, petitions, pleadings, affidavits, declarations and other representations/writings on behalf of the Company to the Government or to the aforesaid Authorities or to Officers or any of them including defend the Company against any notices, proceedings filed against the Company.

¶19To sign Memorandum of Understanding, Letter of Intent, Expression of Interest, Lease Deeds, Leave & License Agreement, Sub-Lease Deed, Sub-License Agreement in respect of godown/warehouse to be taken on lease or license or for the renewal of the Lease Deeds with the previous permission of the Company as and when necessary in the name and on behalf of the Company I Plant and present appear, and admit execution of the document before the sub-registrar of the appropriate jurisdiction for registration and to do all other acts and things necessary to complete various transactions of lease and / or license in favour of the Company and to do and execute all assurances, deeds or do all such acts as may be necessary to effectuate the purpose under this clause lawfully PROVIDED that the said Attorney shall not be entitled to borrow any sum whether with or without security or to mortgage any part of the premises taken on lease basis and / or by way of license without previous permission of the Company having been obtained in writing and provided always that the said Attorney shall not sell or sub let the whole or any portion of the premises taken on lease or license basis without the prior written consent of the Company.

¶20To make, execute and effect all such Agreements / correspondence as are necessary for installation and / or shifting / surrendering o Telephone, Telex and Fax connections pertaining to any Office/s of the Company and Company's Flats and to do everything necessary and incidental for the said purpose. 21, For the better doing, performing & executing of all the matters and things aforesaid, the Company hereby further grants unto the said attorney, full power and authority to substitute and appoint in his own place and stead (on such terms and conditions) one or more attorney jointly or severally amongst the employees of the Company, to execute on behalf of the Company all powers hereby conferred and to revoke any such appointment from time to time and to substitute or appoint any other or others in place of such attorney, as he may time to time think fit, provided that the appointment contains a clause that the appointment will automatically terminate upon the said substituted attorney leaving the employment of the Company or on his transfer by the Company from his present place of employment for any reasons whatsoever.

¶22Generally to do all other acts, deeds, matters and things whatsoever in or about the affairs and business of the Company, Branches/Factories / Plant Division of the Company, (existing and/or future). IN GENERAL to do and execute all such other acts, deeds, matters and things as may be necessary for the purpose aforesaid as fully and effectually as the Company might do. the Board of Directors of the Company in their meeting held on 20th January, 2021 have u ' ously approved the issuance of this Power of Attorney in favour of Mr. R J Jeyamurugan, cid&\ompany Secretary, and the Company hereby ratifies and confirms and agrees from time to'timff and at all times hereafter to ratify and confirm whatsoever the Attorney shall lawfully d&5ause to be done by virtue hereof. ;. L: / PROVIDED ALSO THAT this Power of Attorney shall ipso facto stands terminated if the said Attorney esigns from the employment of Asian Paints Limited, or on his ceasing to be in such employment of Asian Paints Limited, or on his leaving such employment or on his transfer by Asian Paints Limited, from the present place of employment for any reason whatsoever. PROVIDED that the said Atto;'ney shall keep the Company informed, in writing, of all acts, deeds or things done by him by virtue of these presents. In witness hereof the Company has affixed the Common Seal of the Company hereto on this day of 2022 pursuant to the resolution of its Board of Directors of the Resolution of its Board of Directors of the Company at its meeting held on 20th January, 2022 in the presence of Mr. Bhavesh Haria Witness: BEFORE ME RAMDAS S. JAVLE B.Com., LL.B. Noary Greater. Mumbal 16 FEB 2022 RAMDAS S. JAVI

¶6Cern, LL.r3 ADVOCATE 1-IIG1-J COURT Notary Or. Murnbaj Govt. Of India Flat No. 4, Sadush, Smrulj Co.0p Hsg. Soc. Ltq Goliba, 4Th Road, Sail crljz (s), Mumbaj -400 055. Mab. tjo. 98Q47Q77 Left Thumb Impression Left Thumb Impression Signature Signature !\NN( UQE-P7 1Tr r4)I( GOVERNMENT OF INDIA T*9 Vikas Jam Father Babu Lala Jam T4/YearofBjrth: 1974 'q / Male 4961 4518 4021 3TJrr 4JIJ 31LT1 T 3T1144 'iidl'q ilI'c iii T1 3frrr UNIQUE IDENTIFICATION AUTHORITY OF IND!A qT: S/O T91T, 'Pt. '11 'Prr, ITT iwi1, 9TF, I'l1L1, 302019 Address: S/O Babu Lal Jam. E-238. Ram Path Shyam Nag ir, Near Shyam Vatlka, Ajmer Roac. Sodala, Jaipur, Shyam Nagar, Rajasthan, 302019 1947 1800 80 1947 help@uidal.gov.in www.uidai.gofl P.O. Boo No.1947. Bengaluru-560 001 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMM. IP SUIT NO. 415 OF 2022 Asian Paints Limited )... Plaintiff V/s. M.P Paint Industry )... Defendant CONSENT TERMS Dated this tZday of September 2023 VINOD A. BHAGAT 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