There is a sufficiency in the world for man’s needs but not for man’s greed”. Opening with this quote from Mahatma Gandhi, in his judgment of April 15, 2019, Justice S. J. Kathawalla of the High Court of Bombay, set out to make an example of defendants who had admitted to selling counterfeit iron pipes by awarding record costs of INR 50 million (US$ 7,16,000). Remfry & Sagar had filed the lawsuit in question (Nippon Steel & Sumitomo Metal Corporation vs. Kishor D Jain & Anr.) on behalf of Nippon Steel through its solicitors in Mumbai.

The suit for permanent injunction against the defendants was based on a complaint by a Saudi Arabian company – YANBU Steel Company – regarding the quality of certain carbon seamless pipes for use in oil plants that it had sourced from the defendants, believing the same to have been manufactured by the plaintiff. The pipes supplied by the defendants were accompanied by forged and fabricated certificates purportedly issued by the plaintiff and bearing its trademarks and logos.

On March 26, 2019 the court passed an ex-parte ad-interim injunction restraining the defendants from infringing the plaintiff’s registered trademarks and appointed court receivers to visit the defendants’ premises. Pursuant to this, the court receivers submitted reports outlining seizure of numerous inspection certificates allegedly issued by the plaintiff, various branded and unbranded iron pipes as well as mirror copies of the defendants’ electronic records.

Upon such evidence of infringing activities, followed by an admission of wrongdoing by the defendants, the court directed the defendants to tender Affidavits. The said Affidavits were tendered and set out the extent of illicit activities undertaken by the defendants along with details of the vendors from whom the spurious products had been procured as well as details on how the certificates had been fabricated.

The court took cognizance of the fact that the plaintiff’s products are used in extremely sensitive areas where quality of apparatus is of utmost importance and that the defendants’ illicit activities were bound to have disastrous consequences. Going further, the court observed that the issue at hand was not confined to the damage of the plaintiff’s reputation and goodwill alone but that the defendants’ blatant disregard for ethics made for an “irreparable dent” to the repute of the nation. Determined to convey that the courts in India are no longer willing to tolerate such activities and shall deal with them with an “iron hand”, the judge awarded punitive costs of INR 50 million (approx. USD 7,16,000), which, at the plaintiff’s behest, were directed to be paid – and were paid out on April 23, 2019 – to a charitable organisation, viz. the Tata Memorial Hospital, Mumbai – a specialist centre for the prevention, treatment and research on cancer.

In addition to the award of costs, the court also directed the defendants to furnish several personal undertakings including, addressing communications to every entity to which spurious pipes under the plaintiff’s marks had been supplied along with fabricated certificates and publishing a Caution Notice in Saudi Arabia declaring that the defendants were neither associated with, nor will at any time in future be associated with, the plaintiff/its products in any manner whatsoever.