Delhi District Court
M/S Laboratoire Garnier & Cie vs . Gulzar Collection & Ors. on 7 June, 2018
M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
IN THE COURT OF DR. AJAY GULATI, ADDL. DISTRICT JUDGE,
SAKET COURTS, SOUTH DISTRICT, NEW DELHI
In the matter of
TM No.42/2016
Filing No.28984/2010
CNR No. DLST010003102010
1. M/s Laboratoire Garnier & CIE
281, Rue Saint, Honore, 75008,
Paris, France
2. M/s L'Oreal
14, rue Royale,
75008, Paris, France
................Plaintiffs
Versus
1. Gulzar Collection
Shop No.19, Aman Complex,
MohallaSabnigran,
Near Bij Bhandar, Najibabad,
Bijnor, UP
2. Siraj Enterprises
Mohalla Sabnigran
Najibabad, Bijnor, UP
3. Surjeet General Store
Chowk Bazar, Bereilly, UP
4. Sona General Store
Shastri Market,
Bereilly, UP
.............Defendants
TM No.42/2016 Page No. 1 of 13
M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
Date of Institution : 06.09.2010
Date of reserving the judgment: 07.06.2018
Date of pronouncement : 07.06.2018
Decision : Dismissed
SUIT UNDER SECTION 134 & 135 OF TRADE MARKS ACT, 1999
AND UNDER SECTION 51 OF COPYRIGHT ACT 1957 FOR
PREMANENT INJUNCTION RESTRAINING INFRINGEMENT;
PASSING OFF; RENDITION OF ACCOUNTS ETC.
JUDGMENT
1. The present suit has been filed by the plaintiff seeking permanent injunction against the defendants for restraining them from infringing the registered trademark of the plaintiff or from using any other deceptively similar mark/s in respect of the goods being sold/marketed by them. In addition, ancillary reliefs of restraining the defendants from passing off their goods as those of the plaintiffs' and rendition of accounts of the defendants has also been sought.
BRIEF FACTS
2. As per the averments of the plaint, the plaintiff TM No.42/2016 Page No. 2 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
company was founded by Mr. Alfred Amour Garnier in the year 1870 and is engaged in the business of manufacturing and marketing of wide range of toiletries, personal care, hair care, scalp care and cosmetic products. By the end of First World War, Garnier Laboratories was set up in the year 1929, which is now known as M/s Laboratories Garnier & CIE. After commercial acquisition and merger of plaintiff's corporation with M/s L'Oreal, it now operates as a subsidiary of M/s L'Oreal.
3. The plaintiff has been in exclusive, honest and bonafide commercial use of the trademark "GARNIER" which forms a key and material part of its trade/ and corporation name. Plaintiff uses the trademark "GARNIER" individually as well as in combination with other formative marks and has obtained trademarks registrations in various countries including India under No.491768, 1041162 and 1335359, all in class 3. The trademark "GARNIER" has been created by the plaintiff in an artistic and creative manner and the same is an original work within the meaning of Copyright Act, 1957. Plaintiff has been continuously and commercially reproducing and using its said artistic work within the meaning of Section 14 of the Copyright Act, 1957 and which is protected in India by virtue of Berne Convention to which India is one of the TM No.42/2016 Page No. 3 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
signatories. In addition, plaintiff has built a globally valuable trade as well as goodwill and reputation for itself.
4. Plaintiff has also promoted and advertised its goods under the said trademark/name through different means and modes which includes print, electronic media and internet etc. across the globe. "GARNIER" is the most prominent and valuable trademark/name of the plaintiff. Being the proprietor of the same, plaintiff has invested huge money in research and development of its products under the trademark/name "GARNIER" and as such plaintiff has exclusive proprietary rights, both statutory and common law over the same. Nobody has the right or liberty to use the same or any mark/name similar or identical to it in any manner whatsoever without the leave of the plaintiff.
5. It was the grievance of the plaintiff that defendants, who are engaged in the business of trading of cosmetics, toiletries, hair care products and other allied/related goods, have adopted and started using the trademark/name "GARNIER" in relation to their goods. In fact, defendants have indulged in sale of counterfeit of the products of the plaintiff company thereby violating plaintiff's statutory and common law rights. The mark "GARNIER" which has been adopted and being used by defendants is phonetically, visually, and TM No.42/2016 Page No. 4 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
structurally identical to the plaintiff's registered trademark/name. Defendants, despite not being the proprietors of the registered trademark/name, have been using the same in respect of their products and have also been reproducing it on their labels and packaging materials etc. without seeking due authorization from the plaintiff. Consequently, defendants are infringing the plaintiff's trademark which has been duly registered under No.491768, 1041162 and 1335359 (all in class 3). In the 3 rd week of August, 2010, plaintiff came to know that defendants have been using the infringing trademark/name in relation to their goods. They are not only making retail sales but also supplying the infringing goods to various dealers/shopkeepers/retailers in South Delhi. Consequently, the present suit was filed seeking a decree of permanent injunction restraining the defendants themselves and also their agents, assigns, successors, distributors and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner, dealing in or using the trademark "GARNIER" or any other word/mark identical or deceptively similar to plaintiff's trademark "GARNIER" in respect of their goods and business of cosmetics and other allied/related products. Alongwith, prayer was also TM No.42/2016 Page No. 5 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
made for passing a decree for delivery up of all the infringing finished and unfinished goods/materials bearing the registered trademark/tradename of the plaintiff, as well as decree for rendition of accounts of profits earned by defendants from their illegal trade activities.
6. It is pertinent to mention here that vide order dated 07.09.2010, exparte interim injunction was granted to the plaintiff, and defendants, their agents, assigns, representatives, etc. were restrained till further orders from selling, exporting, advertising, soliciting, displaying their goods under the plaintiff's trademark "GARNIER" or any other trade mark identical to or deceptively similar to the plaintiff's trade mark. Vide the same order, 2 local commissioners were also appointed to visit the premises of the defendants to seize the infringing products and to make inventory of the same. Local Commissioners were further directed to release the seized goods to the plaintiff on superdari, after making an inventory.
7. As per report of Local Commissioner in respect of defendant No.1 & 2, on inspection no counterfeit/duplicate products of the plaintiff's goods were found at the premises of defendant No.1 & 2. However, no report of Local Commissioner in respect of defendant No.3 & 4 was placed on record.
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8. Thereafter, vide order dated 22.12.2010 an application under Order I Rule 10 (2) of the Code of Civil Procedure, 1908 was allowed and defendant No.3 was deleted from the array of parties.
9. Despite service of summons by way of publication in the newspaper "Amar Ujala" Bareilly (U.P.) Edition dated 09.02.2013, defendants did not appear before the Court and consequently, vide order dated 13.03.2013, defendants were proceeded against exparte. However, it is pertinent to mention here that vide order dated 09.01.2013, order with regard to the substituted service of the defendants by way of publication in the newspaper having wide circulation in the places where defendants ordinarily work for gain, was passed. Out of 4 defendants, addresses of 2 defendants are of Bijnor, UP while other 2 defendants are residents of Bareilly, UP. No publication report or copy of newspaper edition with regard to substituted service of defendant No.1 & 2 (residence of Bijnor) has been filed.
10. Subsequent thereto, on 27.05.2013, an application moved on behalf of M/s L'Oreal under Order I Rule 10(2) of the Code of Civil Procedure, 1908 for its impleadment as plaintiff No.2 was allowed.
TM No.42/2016 Page No. 7 of 13M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
EVIDENCE ADDUCED
11. Plaintiff, in support of its suit prayers, examined its Authorized Representative, Ms. Meena Bansal as PW1 and Sh. Ankit Garg as PW2.
12. PW1 tendered her evidence by way of affidavit Ex.PW1/A and relied on the following documents:
1. Trademark/label of plaintiff as Ex.PW1/1 to Ex.PW1/4;
2. Trademark/label of defendants as Ex.PW1/5 to Ex.PW1/7;
3. Details of worldwide registrations/pending application of plaintiff as MarkA;
4. Certificate of registration with respect to the plaintiff's trademark Nos. 491768B, 1041162 and 133539 in class 3 as Ex.PW1/8 [already exhibited as Ex.PW2/1 (colly.)];
5. Copies of various Trademark application No.1041162 of the plaintiff as published in the Trademark Journals as Ex.PW1/X [already exhibited as Ex.PW2/1 (colly.)];
6. Downloads from the plaintiff's website as Ex.PW1/Y [wrongly mentioned as MarkC (colly) in TM No.42/2016 Page No. 8 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
the affidavit];
7. Copies of various advertisements and other sales promotional literature of the plaintiff as published and circulated in India as Ex.PW1/Z (colly.) (wrongly mentioned as MarkD in the affidavit);
8. Copies of some sales invoices of the plaintiff's subsidiary/associate company in India as MarkE (colly);
9. Copy of memorandum & Articles of Association of the plaintiff's company as MarkF;
10. Power of Attorney in favour of Ms. Surbhi Bansal as Ex.PW1/9A (OSR);
11. Power of attorney in favour of Ms. Meena Bansal as Ex.PW1/9B (OSR);
12. Copy of memorandum and articles of association as MarkB (colly.);
13. License agreement between Laboratories Garnier & CIE and L'Oreal India Pvt Ltd. as Mark G;
14. Invoices of the plaintiff's Agency Anand Enterprises in South Delhi as MarkH (colly.);TM No.42/2016 Page No. 9 of 13
M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
15. Copy of VAT invoices of the plaintiff issued by its South Delhi Division M/s Navbharat Enterprise as Ex.PW1/10 (colly.) (OSR);
16. Copy of documents in support of address of the plaintiff as MarkI;
17. Deed dated 28.11.2011 as Ex.PW1/11 (OSR);
16. Original Hindi Newspaper "Amar Ujala"
Bareilly edition dated 09.02.2013 as Ex.PW1/12; and
17. Report of Local Commissioner as Ex.PW1/13.
13. PW2 Sh. Ankit Garg was a summoned witness, who proved the legal proceedings certificates for Trademark "GARNIER" bearing Nos.473298, 477223, 1493028, 1493024, 1714865, 1778491, 1832958, 1836274, 1887201 & 499858 all in class 3; and 1832961 in class 18 as Ex.PW2/1 (colly.).
14. PW1 deposed on the lines of the plaint. The oral testimony as well as documentary evidence adduced by the plaintiff has gone unrebutted as the defendants were proceeded against exparte and the plaintiff witnesses were not cross examined.
TM No.42/2016 Page No. 10 of 13M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
FINDINGS
15. The Court gave a patient hearing to the arguments addressed on behalf of the plaintiff, and has also minutely gone through the material available on record and the evidence adduced.
16. I have considered the unrebutted testimony of PW1 and the uncontroverted documentary evidence placed on record by the plaintiff as well as provisions of Trade Mark Act, 1999.
17. Section 29 Sub Section 2 & 3 of the Trade Mark Act, 1999 which describes an act of infringement, reads as under:
"29. Infringement of registered trade marks -
(1) ...................
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or TM No.42/2016 Page No. 11 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public."
18. PW1 has exhibited trademark registrations issued by the competent authorities in favour of the plaintiff in respect of the word "Garnier" as well as the Local Commissioner Report in respect of inspection carried at the premises of defendant No.1 & 2. Reports of local commissioner with regard to inspection carried out at premises of defendant No.1 & 2 are on record. As per these reports, no fake/duplicate products were found at the premises of defendant No.1 & 2.
19. Perusal of the documents on record clearly shows there is no infringement by the defendant No.1 & 2 of the registered trademark owned by the plaintiff. The report of Local Commissioner is very specific to this effect. In so far as TM No.42/2016 Page No. 12 of 13 M/s Laboratoire Garnier & CIE vs. Gulzar Collection & Ors.
defendant No.3 & 4 are concerned, there is no report of the local commissioner with regard to the infringement being indulged in by defendant No.3 & 4. Plaintiff has not placed on record any documentary evidence to prove that defendants have been carrying on the infringement activities in respect of plaintiff's registered trademark.
20. In view of the above discussion, the suit of the plaintiff is dismissed since the material issue of infringement of plaintiff's registered trademark has not been proved. Parties are left to bear their own costs. Decree sheet be prepared accordingly. Thereafter, file be consigned to record room after due compliance.
ANNOUNCED IN THE OPEN (DR. AJAY GULATI)
COURT ON 07.06.2018 ADDL. DISTRICT JUDGE02
SOUTH, SAKET COURTS,
NEW DELHI
Digitally signed
AJAY by AJAY GULATI
Date:
GULATI 2018.06.07
15:55:34 +0530
TM No.42/2016 Page No. 13 of 13