Counterfeit cigarette case confirms efficiency of John Doe orders

India

In Ardath Tobacco Company Limited v Bhai (Case 141/2004), the Delhi High Court has extended its practice of using John Doe orders in counterfeiting cases. These orders are particularly efficient as they allow court commissioners to search the premises of the defendant as well as those of any other party suspected of infringement.

Interlocutory orders against unknown or John Doe defendants were unknown in India in civil actions until Taj Television v Rajan Mandal (Case 1072/2002). In that case, the Delhi High Court issued an Anton Piller order pursuant to its inherent powers under Section 151 of the Code of Civil Procedure 1908. The order empowered the court commissioner to enter Rajan Mandal's premises, as well as those of any unknown cable operator, to look for, inspect and take away any infringing items and documents relating to the defendant's infringing acts amounting to infringement of copyright. Going beyond the traditional notion of John Doe orders, the court did not limit the order to a geographical area or number of parties, and authorized the commissioner to issue warnings against infringing parties in the form of, among other things, notices in newspapers.

The courts, in particular the Delhi High Court, realized that such orders could be particularly efficient in IP piracy and counterfeiting cases. The courts were also soon granting court commissioners additional powers, ranging from the power to witness a 'trap' purchase (IBM v Kamal Dev Suit 231 of 1993 before the High Court of Delhi) to lock-breaking powers (Levi Strauss Cases Suit 250 of 2003 before the High Court of Delhi). More recently, the Delhi High Court has as a matter of routine also started issuing orders to local police to assist in the enforcement of a civil court's order. These additional orders have become the norm and were given a legislative status in the Trademarks Act 1999, which came into force last autumn (see New law introduces simplified procedures and broader rights).

In the case at hand, Ardath Tobacco Company Limited, owner of the STATE EXPRESS 555 mark and part of British American Tobacco Ltd, became aware that a large number of counterfeits of its STATE EXPRESS 555 branded cigarettes were on the market. The Delhi High court appointed court commissioners to seize the infringing goods from the defendant's warehouses as well as from any other place where infringing goods were suspected of being stocked. The court did not limit the number of John Does in the order. The raids also allowed the discovery and seizure of counterfeits of another brand. Raids were carried out in Delhi and Kolkata.

Ameet Datta, Anand & Anand, New Delhi

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