MACLEODS PHARMACEUTICALS LIMITED v. M/S SKYNET PLACEMENTS & ORS.

1. The plaintiff alleges infringement, by Defendants 1 to 4, out of whom Defendants 3 and 4 are former employees of the plaintiff, of the word mark MACLEODS and the device mark.

2. Defendants 1 and 2 are placement agencies who have been created by Defendants 3 and 4 through whom, according to the allegations in the plaint, Defendants 3 and 4 are luring unsuspecting candidates with the promise of obtaining jobs with the plaintiff and, in the process, using the plaintiff’s registered trade mark.

3. As the suit is uncontested, it is not necessary to delve in detail into all assertions of facts contained in the plaint. Suffice it to state that, predicated on the allegations contained therein, the plaintiff seeks, by the suit, a decree of permanent injunction restraining Defendants 1 to 4, their directors, principal officers, assignees and all others acting for and on their behalf from rendering services, offering for sale or in any other manner advertising, using or promoting the trade mark MACLEODS and the device mark, or any other mark identical or deceptively similar to the said marks, in respect of any product or services, apart from delivery-up, rendition of accounts, costs and damages.

4. At the time of issuance of summons on 5th October 2021, this Court restrained Defendants 1 to 4 and all others acting on their behalf, ex parte, from rendering services, offering for sale, advertising, using or promoting the mark MACLEODS and the device mark. Additionally, directions to the concerned ICICI Bank and HDFC Bank to freeze the bank accounts of Defendants 3 and 4 were also passed.

5. Despite issuance of summons, Defendants 1 to 4 have continously remained absent. Their right to file written statement was closed vide order dated 31st May 2022, and they were set ex parte on 20th January 2023. Today, too, there is no representation on behalf of the said defendants.

6. In these circumstances, the plaintiff has moved I.A. 4166/2023 under Order VIII Rule 10 of the CPC, seeking that the suit be decreed, as there is no such contested issue as would require leading of evidence. Reliance is placed, for this purpose, on the judgments of this Court in Disney Enterprises Inc. v. Balraj Muttneja & Co.1, S. Oliver Bernd Freier Gmbh & Co. KG v. Jaikara Apparels[2] and United Coffee House v. Raghav Kalra[3]. I, too, have had occasion to express the same view in Exxon Mobil Corporation v. Sajal Banik[4].

7. Having heard learned Counsel for the plaintiff and Defendants 5, 8 and 9 who are not contesting the prayer for decreeing of the suit, I am of the opinion that, following the example laid down in Disney Enterprises[1], S. Oliver Bernd[2] and United Coffee House[3], in the present case, the suit may be decreed without requiring any filing of affidavit in evidence by the plaintiff.

8. The assertions in the plaint clearly make out a case of infringement, by Defendants 1 to 4, of the registered mark MACLEODS and the device mark.

9. Additionally, as, by using the said marks, Defendant 1 to 4 are holding themselves out to be the agents of the plaintiff who offer job positions in the plaintiff’s establishment, a case of passing off is also made out. Where a case of infringement and passing off is made out, injunction has necessary to follow.

10. Ms. Sahadeva presses for costs, though her client is not seeking damages in the facts and circumstances of the case.

11. The prayer clause in the suit reads as under: “62. The Plaintiff, therefore, prays that the following reliefs be granted in its favour: 2014 SCC OnLine DEL 781 (2014) 210 DLT 381 2013 (55) PTC 414 (Del) 2022 SCC OnLine 4282 a) A decree of permanent injunction restraining the Defendants, their directors, proprietors, principal officers, assignees, family members and anyone acting for and on their behalf from rendering services, offering for sale, advertising or promoting under the trade mark MACLEODS or any other mark which is either identical to or deceptively similar to the Plaintiff’s registered trade marks viz.

MACLEODS causing infringement of the registered trade marks in respect of any products or services whatsoever; b) A decree of permanent injunction restraining the Defendant, their directors, executives, partners, proprietors, principal officers, assignees, family members and anyone acting for and on his behalf from rendering services, offering for sale, advertising or promoting under the trade mark MACLEODS or any other mark which is either identical to or deceptively similar to the Plaintiff’s registered and well-known trade mark MACLEODS, thereby resulting in passing off; c) A decree of permanent injunction restraining the Defendant, their directors, executives, partners, proprietors, principal officers, assignees, family members and anyone acting for and on his behalf from rendering services, offering for sale, advertising or promoting the the trade mark MACLEODS/ which is in violation of the Plaintiff’s copyrights in the artistic works in label/trade dress packaging, causing infringement of Copyright. d) For an order of Rendition of Account of profits/ Decree of Damages to the tune of Rs. 2,00,00,000/illegally earned by the Defendants by use of the Trade Mark/ trade dress/ label MACLEODS or any other similar mark and a decree for the amount so found due be passed in favour of the Plaintiff. If this Hon'ble Court directs a Rendition of accounts, the Plaintiff undertakes to pay further court fees once the sum is ascertained on the Defendants rendering true and proper accounts. e) An order of delivery up of all material relating to services offered under the MACLEODS marks by the Defendants, namely offer letters, infringing labels, business cards, visiting cards, brochures, promotional material, letter heads, cash memos, signage, sign posts, leaflets, or any other items of whatsoever description and nature, bearing the trademark/tradename MACLEODS f) Costs of the suit be awarded to the Plaintiff. g) Any other order this Hon'ble Court may deem fit and proper in the light of the above-mentioned facts.”

12. The suit stands decreed in terms of prayers (a), (b), (c) and (f) in para 62 of the plaint. The entitlement to costs would be at actuals.

13. To assess the costs expended by the plaintiff, let the plaintiff file a certificate of costs before the concerned officer in the Registry who would assess the costs and award accordingly. List before the concerned officer on 25th April 2023 for the said purpose.

14. The suit stands decreed qua defendants 1 to 4 in the abovesaid terms. The suit also stands disposed of qua Defendants 5 to 9 against whom the plaintiff does not have any independent cause of action.