Case Note & Summary
The petitioners, UPS Sales and Suzhou Dake Machinery Company Ltd., imported goods under Bill of Lading No. EXSH2310608. The customs authorities (respondents 2 to 7) refused to clear the goods on the ground that a trademark dispute between the petitioners and respondent no. 8 (Murtuza Gheewala) was pending before a civil court. The petitioners filed a writ petition under Article 226 of the Constitution seeking a writ of certiorari to quash the seizure direction and a writ of mandamus to direct release of the goods. The court examined whether customs authorities can refuse clearance based on a pending trademark dispute. The court noted that the Customs Act, 1962 does not empower customs to adjudicate trademark infringement; such disputes fall under the Trade Marks Act, 1999, which provides remedies in civil court. The court held that customs authorities must not withhold clearance of goods solely because of a private trademark dispute. The court directed the respondents to release the goods to the petitioners within two weeks, subject to compliance with customs formalities. The court clarified that this order does not affect the rights of respondent no. 8 to pursue remedies in the pending civil suit.
Headnote
A) Customs Law - Clearance of Goods - Trademark Dispute - Customs Act, 1962, Sections 11, 111(d) - The court considered whether customs authorities can refuse clearance of imported goods solely on the ground of a pending trademark infringement suit between the importer and a third party. Held that customs authorities are not empowered to adjudicate trademark disputes and must not withhold clearance based on such private disputes; the remedy lies in civil court under the Trade Marks Act, 1999. (Paras 1-12)
B) Intellectual Property Rights - Trademark Infringement - Jurisdiction - Trade Marks Act, 1999, Sections 29, 134 - The court held that a trademark dispute between private parties must be resolved by a civil court or the Intellectual Property Appellate Board, and customs authorities cannot refuse clearance of goods based on an alleged infringement when the goods are not prohibited under the Customs Act. (Paras 8-12)
Issue of Consideration
Whether customs authorities can refuse clearance of imported goods on the ground of a pending trademark dispute between the importer and a third party.
Final Decision
The court allowed the petition and directed the respondents to release the goods to the petitioners within two weeks, subject to compliance with customs formalities. The court clarified that this order does not affect the rights of respondent no. 8 to pursue remedies in the pending civil suit.
Law Points
- Customs authorities cannot refuse clearance of imported goods solely on the ground of a pending trademark dispute between private parties
- Customs Act
- 1962 does not empower customs to adjudicate trademark infringement
- remedy lies in civil court under Trade Marks Act
- 1999
Case Details
2023 LawText (BOM) (07) 93
Writ Petition (L) No. 18061 of 2023
G. S. Kulkarni, Jitendra Jain
Mr. Alankar Kirpekar a/w. Mr. Shekhar Bhagat, Ayush Tiwari, Rajas Panandikar, Chinmay Pagedar i/b. Shekhar Bhagat for the petitioners. Mr. J.B. Mishra a/w. Mr. Ram Ochani for respondent nos. 2 to 4. Mr. J.B. Mishra a/w. Ms. Sangeeta Yadav for respondent nos. 5 to 7. Mr. Hiren Kamod with Mr. Gautam Panchal i/b. Gautam & Co. for respondent no. 8.
UPS Sales and Suzhou Dake Machinery Company Ltd.
Union of India, Commissioner of Customs, Additional Commissioner of Customs (SIIB), Deputy/Assistant Commissioner of Customs (SIIB), Additional Commissioner of Customs (SIIB) Nhava Sheva, Deputy/Assistant Commissioner of Customs (SIIB) Nhava Sheva, Deputy/Assistant Commissioner of Customs Apprising Group V, Murtuza Gheewala
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Nature of Litigation
Writ petition under Article 226 of the Constitution of India challenging the refusal of customs authorities to clear imported goods on the ground of a pending trademark dispute.
Remedy Sought
Petitioners sought a writ of certiorari to quash the direction seizing the goods and a writ of mandamus to direct the respondents to release the goods.
Filing Reason
Customs authorities refused to clear goods imported by petitioner no. 1 on the ground that a trademark dispute between the petitioners and respondent no. 8 was pending before a civil court.
Issues
Whether customs authorities can refuse clearance of imported goods on the ground of a pending trademark dispute between the importer and a third party.
Submissions/Arguments
Petitioners argued that customs authorities have no jurisdiction to adjudicate trademark disputes and that the goods are not prohibited under the Customs Act.
Respondent no. 8 argued that the goods infringe its trademark and that customs authorities are justified in withholding clearance.
Ratio Decidendi
Customs authorities are not empowered to adjudicate trademark disputes; they cannot refuse clearance of imported goods solely on the ground of a pending trademark infringement suit between private parties. The remedy for trademark infringement lies in civil court under the Trade Marks Act, 1999.
Judgment Excerpts
The grievance of the petitioners is primarily on the action of respondent nos. 2 to 7 in not permitting the petitioners clearance of the goods imported by petitioner no. 1 on the ground of a trade mark dispute between the petitioners and respondent no. 8 is subjudice.
Customs authorities are not empowered to adjudicate trademark disputes; such disputes fall under the Trade Marks Act, 1999, which provides remedies in civil court.
Procedural History
The petitioners filed a writ petition under Article 226 of the Constitution of India before the High Court of Judicature at Bombay challenging the refusal of customs authorities to clear imported goods. The court heard the matter and delivered judgment on 11 July 2023.
Acts & Sections
- Constitution of India: Article 226
- Customs Act, 1962: Sections 11, 111(d)
- Trade Marks Act, 1999: Sections 29, 134
