ITC trounces WILLS SPORTS counterfeiters

In ITC Ltd v Sodhi Garments (Cases 2016, 2017 and 2018 of 2003), the Delhi High Court issued a search and seizure order against a number of defendants based outside the State of Delhi. The execution of the order resulted in the discovery of a large amount of counterfeit goods.

In 1999 ITC Ltd, the Indian subsidiary of British American Tobacco Company, set up a lifestyle division to develop and market, among other things, branded clothing under the ITC and WILLS SPORTS marks and logos. The WILLS SPORTS mark is a pending registration but ITC has spent considerable time and effort in developing and promoting the mark.

In October 2003 ITC noticed that a large volume of counterfeit clothing goods had appeared on the market bearing the ITC logo and the WILLS SPORTS mark and logo. After careful investigation, it identified a number of manufacturers, wholesalers and retailers involved in the counterfeiting of its brand.

To control the flow of counterfeit products, ITC lodged three simultaneous actions with the Delhi High Court against nine parties based outside the State of Delhi, seeking (i) an interim injunction, and (ii) the appointment of eight court commissioners/receivers to carry out a search of the various defendants' premises and seize any counterfeit goods.

The court accepted ITC's request, and directed the police to assist the court commissioners in the execution of the search and seizure order. Simultaneous raids carried out at the premises of eight parties lead to the recovery of huge quantities of counterfeit goods.

It is interesting to note that all the defendants were based outside the State of Delhi; outside the territorial jurisdiction of the Delhi High Court. However, the court agreed with ITC's contention that it had jurisdiction on the basis of Section 134 of the newly amended Trademarks Act, whereby a suit can be brought in the court where the plaintiff has its place of business.

Ranjan Narula, Rouse & Co International, Dubai