India: Contempt In An Intellectual Property Dispute Can Land One In Prison

Last Updated: 4 June 2019
Article by Smriti Yadav and Sunaina Brahma

Most Read Contributor in India, August 2019

In Cargil India Private Limited v M/s. M.M. Oil Enterprises (Notice of Motion No 1107 of 2019 in COMIP No. 425 of 2017), the Bombay High Court (Court) has once again passed a notable order whereby the Court imposed a sentence of 8 weeks simple civil imprisonment upon the proprietor of M/s. M.M. Oil Enterprises (Defendant) who was found in contempt of the orders passed by the Court.


In March 2017, Cargil India Private Limited (Plaintiff) filed a suit along with a Notice of Motion against the Defendant who was infringing the Plaintiff's copyright subsisting in the label mark/trade dress 'GEMINI-Refined Sunflower Oil'. The Plaintiff also alleged that the Defendant had committed an act of 'passing off' by adopting a deceptively similar impugned mark/packaging material 'GENUINE-Refined Sunflower Oil' as against the Plaintiff's label mark/trade dress 'GEMINI-Refined Sunflower Oil'. The pictorial comparison of the rival products is reproduced hereinbelow:

Plaintiff's MARK defendant's IMPUGNED MARK

By an ex parte order dated 23 March 2017, the Court restrained the Defendant from infringing the Plaintiff's copyright subsisting in its label mark/trade dress and from 'passing off'. The Court also appointed a Court Receiver to search and seize the impugned goods/packaging materials bearing the impugned mark. Accordingly, on 6 April 2017, the Court Receiver seized and sealed the impugned goods/packaging materials of the Defendant. At this time, the Defendant had executed an Undertaking/Indemnity Bond to preserve the material sealed by the Court Receiver. Later, as the Defendant failed to appear before the Court the Notice of Motion was made absolute vide order dated 12 April 2017. Resultantly, the receivership of the sealed goods was to continue till the disposal of the suit.

In January 2019, the Plaintiff learnt that the Defendant, in contravention of the Court's earlier order dated 12 April 2017, had recommenced manufacturing, packaging and selling of the impugned goods bearing the impugned mark/packaging. Hence, the Plaintiff filed another application under Order 39, Rule 2 A of the Code of Civil Procedure, 1908 (CPC) seeking various reliefs including search and seizure of the impugned goods/packaging materials, punishment and detention of the Defendant in civil prison, attachment of the Defendant's machinery, plants, fixtures, etc. Upon being prima facie satisfied of the contemptuous act of the Defendant, the Court passed an order dated 1 April 2019 whereby a Court Receiver was once again appointed for search and seizure of the impugned goods/packaging materials of the Defendant.

Interestingly, when the Court Receiver was executing the order dated 1 April 2019 and making an inventory of the impugned goods, the Defendant interfered with the execution and despite being warned went ahead and emptied the goods (oil) contained in the impugned packaging which were inventoried by the Court Receiver. Post the execution of the order dated 1 April 2019, the Court Receiver also took inspection of the previous inventory seized pursuant to the earlier order dated 12 April 2017. Surprisingly, the previous inventory was not found at the same location and this was duly recorded by the Court Receiver in its report.

During the course of the hearing, the Defendant made a host of false statements such as falsely claiming that that the sealed impugned goods were destroyed/eaten away by rats, blaming the Defendant's erstwhile lawyer that he had not kept track of the matter, that pursuant to the earlier order, the Defendant had stopped manufacturing and selling the impugned goods since 2017. Upon interrogation by the Court all these claims were found to be false. Towards the end of the proceeding, the Defendant accepted his contemptuous act and tendered an unconditional apology for breaching the aforesaid orders of the Court. The Court relied on Mulk Raj v State of Punjab (1972 3 SCC 839) and T.N. Godavarman Thirumulpad through the Amicus Curiae v Ashok Khot and Another (AIR 2006 SC 2007) and rejected the unconditional apology as the same was lacking contrition and thus, failed to meet the requirement of law.


The Court held the Defendant guilty of disobedience on two counts, viz: (i) the Defendant has admittedly sold goods under the impugned mark/trade dress even after the Court's earlier order dated 12 April 2017; (ii) the Defendant had disposed the impugned goods that were sealed by the Court Receiver on 6 April 2017, which were in custodia legis.

The Court observed that Defendant who is guilty of blatant disobedience of the orders of the Court cannot be left scot-free or shown any leniency in sentencing. The lenient sentence in this case would mean and send a message to society at large that the Court itself is not outraged by the flagrant disregard shown by the Defendant and that the Court is adopting 'forgive and forget' policy.

Thus, relying on the jurisdiction conferred upon the Court under Section 94 (c) read with Order 39, Rule 2 A of CPC, the Court sentenced the Defendant to eight weeks simple imprisonment in a civil prison.


This is one of the rare orders passed by the Court. Such orders will certainly serve as a deterrence to the parties who brazenly defy Court's orders. This decision also sets a valuable precedent for the plaintiffs seeking effective relief against offenders who habitually violate their intellectual property rights.

The content of this document do not necessarily reflect the views/position of Khaitan & Co but remain solely those of the author(s). For any further queries or follow up please contact Khaitan & Co at

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions