Delhi High Court - Orders
M/S Blue Heaven Cosmetics Pvt Ltd vs M/S T.R.N. Corporation Through: Its ... on 22 October, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 523/2021
M/S BLUE HEAVEN COSMETICS PVT LTD ..... Plaintiff
Through: Mr. Sanjay Aggarwal, Advocate.
versus
M/S T.R.N. CORPORATION THROUGH: ITS PROPRIETOR SH.
DEEPAK NIMESH ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 22.10.2021 [VIA HYBRID MODE]
I.A. 13667/2021 (for exemption from exhausting the remedy of pre-institution mediation)
1. In the facts of the present case, the exemption sought from attempting pre-institution mediation, is allowed.
2. Accordingly, the application stands disposed of. I.A. 13666/2021 (for seeking extension of time for filing the court fee)
3. Counsel for the Plaintiff states that he will make up the deficiency in the Court Fees, within a period of three days from today. Taking the said statement on record, the application is allowed and disposed of. I.A. 13665/2021 (for declaration of the copies of the documents filed along with the plaint)
4. The exempted documents shall be filed positively within a period of one week from today, in strict compliance with the practice rules of this CS(COMM) 523/2021 Page 1 of 9 Court.
5. With the aforesaid direction, the present application is allowed and disposed of.
I.A. 13664/2021 (under Order 11, Rule 1(4) of the Commercial Courts Act, 2015 r/w Section 151 of the Code of Civil Procedure, 1908 ['CPC'] seeking leave to file additional documents)
6. This is an application seeking leave to file additional documents at a later stage under the Commercial Courts Act, 2015.
7. The Plaintiffs', if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.
8. Accordingly, the application stands disposed of. I.A. 13663/2021 (for exemption from filing certain documents, clear copies and English translation)
9. Allowed, subject to just exceptions.
10. The exempted documents shall be filed within a period of one week from today, in strict compliance with the practice rules of this Court.
11. With the aforesaid direction, the present application is allowed and disposed of.
CS(COMM) 523/2021
12. Let the plaint be registered as a suit.
13. Upon filing of the process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within thirty days from the date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/ denial of the documents of the Plaintiff, without CS(COMM) 523/2021 Page 2 of 9 which the written statement shall not be taken on record.
14. Liberty is given to the Plaintiff to file a replication within fifteen days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/ denial of documents of the Defendant, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
15. List before the Joint Registrar for marking of exhibits on 23 rd December, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
16. List before the Court for framing of issues on 09th March, 2022.
I.A. 13662/2021 (under Order XXXIX Rules 1 and 2, CPC)
17. The Plaintiff has filed the present suit, inter alia, seeking permanent injunction restraining infringement of trademark/ copyright/ trade-dress/ writing style/ colour combination/ overall get-up; passing off; rendition of accounts; damages; delivery-up, and other ancillary reliefs.
18. The case as set out in the Plaint is as follows: Plaintiff is a private limited company dealing in manufacturing and marketing of goods falling in Class-03. It is the prior adopter and owner of trademarks " " (word/ formative marks) in several classes - including Classes- 03 and 35, which is the subject matter trademark of the present suit. The Plaintiff is the registered proprietor of " " (word/ formative marks) in India, details of which are provided in para 8 of the Plaint. The Plaintiff adopted the CS(COMM) 523/2021 Page 3 of 9 trademark "BLUE HEAVEN" (word/ formative marks) and " " in 1972 and the same have been in use continuously till date. By virtue of its adoption more than sixty years ago and extensive use thereof, the trademarks - "BLUE HEAVEN" and " ", is the sole and exclusive intellectual property of the Plaintiff. The trademarks - "BLUE HEAVEN"
and " " not only act as source identifiers, but also as symbols of purity and authenticity - it is the most essential and prominent feature of the Plaintiff's trademarks. The goods of the Plaintiff are widely sought by the trade as well as the general public and are sold/ advertised through various websites belonging to the Plaintiff, as well as through various e-commerce portals. The sales of the Plaintiff run in crores of rupees. Plaintiff has also applied for registration of various other marks/ trade-dress including " " and " " which is the subject matter of the suit.
19. Mr. Sanjay Aggarwal, counsel for the Plaintiff states that the products/ goods of the Plaintiff-Company are available on various online/ e-commerce portals such as - Amazon, Flipkart, Shopclues, IndiaMart, etc. Screenshots of the same have been annexed to the Plaint. In September 2021, the Plaintiff found Defendant's product [ " "] in a shop in CS(COMM) 523/2021 Page 4 of 9 Chandrapur Town, Mumbai. Upon further investigation, the Plaintiff learnt that Defendant has a registered mark for the trademark " ". However, the Defendant is using the said registered mark along with its trade-dress and writing style in a completely different manner than their registration. Defendant is selling their products with a trade-dress that is closely identical/ similar to the Plaintiff - viz. " ". The said mark is deceptively similar to the trademark/ copyright/ colour combination/ writing style/ overall get-up to the Plaintiff's prior used and registered marks of " ". The Defendant's trade-dress - " " is also deceptively similar or rather an exact replica of Plaintiff's trademark and trade-dress of the Plaintiff. Further, the Defendant is actively promoting/ advertising/ soliciting for the impugned products on various third-party e-commerce portals such as - INDIAmart and Flipkart. Such online usage by the Defendant is clearly causing damage to the Plaintiff, as well as diluting the well-known mark of the Plaintiff. A comparison of the Plaintiff's and Defendant's trademark/ label/ trade-dress, as reproduced in para 24 of the Plaint, is as follows: -
PLAINTIFF's DEFENDANT's
TRADEMARK/PRODUCT TRADEMARK/PRODUCT
CS(COMM) 523/2021 Page 5 of 9
The aforesaid presentation clearly indicates that the Defendant, in order to pass-off its inferior goods as that of the Plaintiff, adopted not only a similar but same trade-dress/ label/ packaging. Defendant has not only adopted an identical mark but has also copied the entire trade dress and packaging of the Plaintiff's products.
20. Mr. Aggarwal also draws the attention of this Court to several orders passed by this Court, wherein injunction was granted in somewhat similar circumstances. Further, Mr. Aggarwal states that the Plaintiff does not have CS(COMM) 523/2021 Page 6 of 9 any objection to the Defendant using the label mark " " - in terms of the registration in their favour. However, they cannot be permitted to adopt deceptively similar trade-dress/ overall get-up/ packaging similar to the Plaintiff's. The Plaintiff's objection is with regard to overall similarity in trade dress/ design/ colour combination scheme/ font and stylization - which creates confusion in the minds of unwary consumers of average intelligence.
21. In view of the above, the Plaintiff has established a prima facie case in its favour. The balance of convenience also lies in favour of the Plaintiff and irreparable loss would be caused to the Plaintiff in case an ex-parte injunction is not granted. Accordingly, till the next date of hearing: -
(a) the Defendant and/ or their principal officers, directors, partners, agents, franchisees, servants, licensees, and all others acting for and/ or on their behalf are restrained from making, selling, offering for sale, advertising and in any manner dealing in - Non-Medicated Cosmetics Nail Enamel Remover/Nail Polish Remover/Thinner And Toiletry Preparations;
Non-Medicated Dentifrices; Perfumery, Essential Oils; Bleaching Preparations And Other Substances For Laundry Use; Cleaning, Polishing, lipsticks, foundation, eye liner, face powder, kajal, maskara, sindoor, nail polish, nail polish remover, all type of cream, Vaseline, hair oil, eau de perfume, body spray, deodorant, bindi, kumkum, facial kits, rose water, cleaning milk, moistening lotion, hair remover, eye shadow, blusher, pen cake, pen stick, lip gloss, massage gel, hair gel, hair color, heena, lip liner, talc powder, face wash, scrub, make up brush, soap, included in class-03 and services thereof in class-35 or any other goods using the trademark/ CS(COMM) 523/2021 Page 7 of 9 trade dress/ colour combination/ writing style/ packaging/ label/ overall get-up " ", or any other trademark/ trade dress/ colour combination/ writing style/ packaging/ label/ overall get-up, which is identical or deceptively similar to the Plaintiff's registered trademark/ trade dress/ colour combination/ writing style/ packaging/ label/ copyright/ overall get-up and from doing any other thing, whereby directly or indirectly infringing the Plaintiff's registered trademark/ trade dress/ colour combination/ writing style/ packaging/ label " " and " "
(word as well as formative marks), and
(b) the Defendant is directed to remove all third-party listings of their products under the impugned mark " " or any other similar mark from all or any third-party websites, including through its agents, retailers, wholesalers and stockiest, etc.
22. It is clarified that the Defendant is permitted to use the device/ label -
" ", strictly in terms of their registration.
CS(COMM) 523/2021 Page 8 of 923. List before the Court on 09th March, 2022.
24. Let the provisions of Order XXXIX Rule 3 of the CPC be complied with within a period of one week from today.
SANJEEV NARULA, J OCTOBER 22, 2021 nk CS(COMM) 523/2021 Page 9 of 9