Point of Law: Intellectual properties – Copyright - Power of confiscation / seizure of goods - no finality to the proceedings which are pending between the petitioners and respondent in respect of ownership of “TR” brand - Imported goods suspended from clearance will have to be released to the petitioners subject to the petitioners executing such bond

JUDGMENT :

MILIND N. JADHAV, J.

Heard Mr. Venkatesh Dhond, learned senior counsel for the petitioners; Mr. Vijay Kantharia, learned counsel for respondent Nos. 2 to 5; and Mr. Alankar Kirpekar, learned counsel for respondent No.6.

2. By the present petition filed under Article 226 of the Constitution of India, petitioners have prayed for a writ of mandamus to respondent no. 4 i.e. Deputy / Assistant Commissioner of Customs (Special Intelligence & Investigation Branch), Nhava Sheva - V, Tal Uran, District - Raigad to revoke the suspension of clearance of its consignment i.e. bearings imported by petitioner No.1 on 05.01.2021 having "TR" mark / brand.

2.1. Petitioner No.1 has filed 6 bills of entry, all dated 04.01.2021, with customs authorities i.e. respondent Nos. 2 to 5 for clearance. Petitioner asserts that without issuing any order of confiscation and in violation of the provisions of Rule 7 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (briefly referred to as "the IPR Rules" hereinafter) and the provisions of the Copyright Act, 1957 (for short 'the said Act') respondent Nos.2 to 5 have suspended clearance of the imported goods. Being aggrieved, petitioners have approached this Court for seeking release of its consignment.

3. Before we advert to the submissions made on behalf of the respective parties, it will be apposite to refer to the relevant facts briefly :-

3.1. Petitioner No.1 is a company incorporated under the Companies Act, 1956 and is engaged in import and wholesale trade of bearings, bearing units and housing for bearings. Petitioner No.1 is the importer and distributor of bearings (manufactured and marketed by petitioner No.2) in India under the trademark "TR". Petitioner No.2 is incorporated under the laws of the People's Republic of China having its office at Guan Tai Road, Dongguan City, P. R. China and carries on business of manufacturing and marketing of spherical outside surface ball bearing units, ball bearings, spherical roller bearings, etc. under the trademark "TR" since 1979. The trademark "TR" is registered in 18 countries across the world apart from India. In India the trademark "TR" is registered under the provisions of the Trade Marks Act, 1999 under TM No. 739266 dated 11.12.1996. This registration has been renewed from time to time and is valid and subsisting till 11.12.2026.

3.2. Petitioner No.1 filed 6 Bills of Entry Nos. 2220018, 2221281, 2224083, 2224577, 2224920 and 2225033, all dated 04.01.2021, for a total assesseable value of goods at Rs.2,31,39,344.00 with the customs authorities, Nhava Sheva port i.e. respondent Nos. 2 to 5 under the provisions of section 46 of the Customs Act, 1962 in respect of the imported goods i.e. bearings with trademark "TR" brand imported from petitioner No.2 in China.

3.3. On 05.01.2021, the customs authorities i.e. respondent Nos. 2 to 5 without passing any order suspended clearance of the goods imported by petitioner No.1 vide the 6 Bills of Entry.

3.4. On 05.01.2021 itself petitioner No.1 submitted all relevant documents evidencing registration of "TR" mark under the Trade Marks Act, 1999 under class 7 (Bearing Unit, Housing for Bearing) in the name of petitioner No.2 and documents relating to authorisation of petitioner No.1 by petitioner No.2 as its authorised importer and distributor of "TR" mark bearing in India to the customs authorities.

3.5. It may be mentioned that respondent No.6 had filed complaint dated 26.12.2020 with respondent Nos. 2 to 5 raising a "system alert" that the goods imported by petitioner No.1 are suspected to be goods infringing Intellectual Property Rights and such import is in contravention of the provisions of Rule 7 of the IPR Rules enacted under the Customs Act, 1962 and the Trade Marks Act, 1999.

3.6. On 05.01.2021 some samples of the goods imported were taken by the Special Intelligence and Investigation