Background

“S.B. DEER BRAND” Sat Isabgol had its origin in India in the year 1943 which is owned by the family-run Kamal & Sons Group.  

Kamal & Sons was established way back in 1948 as a producer of quality psyllium (Ispaghula) products. With long and varied experience in business, trading and exports, the Firm started exporting quality Psyllium Seeds and Husks in the early 1950s and before long, it became one of the foremost and leading suppliers of Psyllium products to the European, U.S and Middle East markets.

Kamal’s trademark “S.B. DEER BRAND” in various formats stand registered and protected in India and the United Arab Emirates, among others. Being an original artistic work, its product labels are also protected under the Copyright laws.

Facts

Kamal & Sons started exporting its “S.B. DEER BRAND” Sat Isabgol products to the United Arab Emirates in the year 1984. The exports were done through various upcountry vendors. By 2011-2013, the exports had to be exclusively handled due to various regulatory requirements and accordingly, an exclusive agency, namely, MONARCH INTERNATIONAL (Monarch), Ahmedabad, India, was appointed to handle the UAE market.  Monarch has been exporting Kamal’s products for many years.  However, due to some suspicious activities being conducted by Monarch, differences arose between Kamal and Monarch.  Monarch used to buy goods from Kamal but since their relations were no longer cordial, Kamal had to stop supply of its “S.B DEER BRAND” original products to Monarch.  After this development, Monarch even threatened to launch their own products in the UAE market. Their   products then appeared in the UAE Market.  However, they did not have any manufacturer’s name on it and were sold by one DREAM STAR TRADING LLC (Dreamstar), a company based in the UAE.  It was found that the goods sold by Dream Star were packed in cartons similar to Kamal’s cartons and these goods were inferior in quality and sold at a lower price to harm Kamal’s business. A further investigation revealed that Monarch International had made a clandestine agreement with one GIRIRAJ ENTERPRISE (Giriraj), Unjha, India, to get the infringing products manufactured and packed by them for exports to U.A.E.  Giriraj manufactured and packed the products and supplied to Monarch that in turn exported to Dreamstar. Later on they changed the design of the old pack to make it look closely similar to Kamal’s “S.B DEER BRAND” product label. 

The Infringer had literally copied Kamal’s registered trademark and product label including the device of a Deer within an oval shape, colour scheme and general layout, and other unique and distinctive features of the “S.B DEER BRAND” trademark label.  They simply replaced the word ‘DEER’ with ‘STAG’, bearing in mind that the two words have the same meaning in the English dictionary. The Infringer imitated Kamal’s trademark so that the general appearance between Kamal’s trademark and the Infringer's mark looked similar, which would help them to deceive the consumers.

In December 2021, Kamal & Sons came to know that Monarch International, India, has exported huge quantities (80,000 pieces) of infringing products to Dreamstar, UAE. Based on few samples of counterfeits bought from Dreamstar by Kamal’s distributors in UAE, in the year 2021, R.K. Dewan & Co. assisted Kamal in lodging a trademark infringement Complaint against Dreamstar Trading LLC before the Dubai Department of Economic Development (DED) for infringement of their registered trademarks, S.B. DEER (logo) and S.B DEER SAT ISABGOL (label). Acting on Kamal’s complaint, although an inspection was conducted at the Infringer’s place, the DED officials found only one infringing item which ultimately led to the closure of the complaint by the DED.  This initial setback for Kamal was due to the fact that the infringer rather got some information or suspicion that the DED Officials would visit and inspect their place and therefore, they probably shifted the products/samples to a safer location to evade any action and conceal their infringement activity despite the fact that their counterfeit products were openly available in the Emirati market.

In the meantime, as a further follow-up of the Complaint filed with the DED, a detailed Technical Report on behalf of Kamal & Sons was prepared and submitted to the DED in an attempt to further convince them about the continuing infringement and sale of counterfeits by Dreamstar throughout the Emirates. However, DED decided to treat the matter as closed and did not act upon our request any further.

In February, 2022, Kamal & Sons came to know that yet another shipment of about 20,000 pieces of counterfeits were exported from India by Monarch International to Dreamstar, UAE. Following this information, it was decided to take a Criminal Action against trademark infringement in the U.A.E. In June 2022, by involving the Dubai Police, and our representative claiming as a dealer, fresh samples of counterfeits were bought from Dreamstar and at the same time expressing his desire to buy and order a large quantity of the counterfeit products for re-exporting to a neighbouring country.  After purchasing the samples, the same along with original samples of Kamal were submitted to the Forensic Laboratory to have their Opinion & Report regarding the imitation.  After receiving a positive report from the Forensic Laboratory confirming the imitation, our representative contacted Dreamstar again, confirming the purchase of a large Order and was able to visit the Store which confirmed that the counterfeit goods are very much lying there.  A Police Complaint was then lodged along with all supporting documents including proofs of infringement, original and counterfeit samples, Forensic Lab Report, trademark registration certificates and Copyright certificates, among others.  As per the local practice, a Prosecutor’s permit was issued by the Dubai Police to organise the raid. Simultaneously, our representative (as a dealer in disguise) also contacted the merchant and informed him of his desire to execute the Full Big Order on the scheduled day.

On June 29, 2022, the Store and surrounding area was monitored secretly since morning and finally in the afternoon, the full raid was undertaken in the presence of our representatives, Lawyer and Police.  The Police confiscated about 570 cartons comprising of about 114,000 pieces of counterfeit products, weighing about 7.41 tons.  The goods were confiscated and transported in three trucks to the shipping company, waiting for the further investigation and proceedings in accordance with the Criminal case.

Images of Raid and Confiscation of infringing “STAG Brand Isabgol Products at the Warehouse of Dream Star Trading LLC, Dubai

As per the local practice in connection with a Criminal Action of infringement, the Dubai Police conducted an investigation and after completing other procedures such as issuance of an Official Criminal Lab Report in Kamal & Sons’ favour, the Case was sent to the Public Prosecution and then to the Criminal Court for hearing and issuance of a Decision.

On 22^nd September 2022, the Court passed a Decision in favor of Kamal & Sons. The Court has also imposed a penalty of AED20000 (INR 4, 45,000 Approx.) to be paid by the Infringer and ordered the destruction of the seized goods. As of now, the adverse party has filed an appeal against this Decision and the Appeal is likely to come up before the Appellate Court in November 2022.