Delhi High Court - Orders
Mcnroe Consumer Product Pvt. Ltd vs Idam Natural Wellness Pvt. Ltd. & Anr on 29 January, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~47
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 79/2024
MCNROE CONSUMER PRODUCT PVT. LTD. ..... Plaintiff
Through: Mr. Anirudh Bakhru, Ms. Bitika
Sharma, Mr. Rishi Bansal,
Mr. Vibhor Sethi, Mr. Manakaran
Singh and Mr. Rishabh Gupta,
Advocates.
versus
IDAM NATURAL WELLNESS PVT. LTD. & ANR. ..... Defendants
Through: None for D-1.
Mr. Neel Mason, Advocate for D-2.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 29.01.2024 I.A. 1999/2024 (for seeking exemption from filing original clear copies, English translations of vernacular documents and documents with proper margins)
1. Exemption is granted, subject to all just exceptions.
2. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Application is disposed of.
I.A. 1998/2024 (seeking leave to file additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
CS(COMM) 79/2024 Page 1 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:34
5. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
6. Disposed of.
I.A. 2000/2024 (seeking exemption from invoking pre-institution mediation)
7. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
8. Application is disposed of.
I.A. 2001/2024 (seeking leave to file and place on record videographic evidence via CD/pen drive)
9. Plaintiff seeks the leave of the Court to place on record a video recording, which forms the subject matter of the present suit. Rule 24 of Chapter XI of the Delhi High Court (Original Side) Rules, 2018 makes it clear that electronic records can be received in CD/DVD/Medium encrypted with a hash value. The said Rule is extracted below:
"24. Reception of electronic evidence -A party seeking to tender any electronic record shall do so in a CD/ DVD/ Medium, encrypted with a hash value, the details of which shall be disclosed in a separate memorandum, signed by the party in the form of an affidavit. This will be tendered along with the encrypted CD/ DVD/ Medium in the Registry. The electronic record in the encrypted CD/ DVD/ Medium will be uploaded on the server of the Court by the Computer Section and kept in an electronic folder which shall be labeled with the cause title, case number and the date of document uploaded on the server. Thereafter, the encrypted CD/ DVD/ Medium will be returned to the party on the condition that it shall be produced at the time of admission/denial of the documents and as and when directed by the Court/ Registrar. The memorandum disclosing the hash value shall be separately kept by the Registry on the file. The compliance with this rule will not be construed as dispensing with the compliance with any other law for the time being in force including Section 65B of the Indian Evidence Act, 1872."1
2023 SCC OnLine SC 1382.
CS(COMM) 79/2024 Page 2 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:34
10. Thus, the Registry may receive electronic record on CD-ROM so long as it is encrypted with a hash value or in any other non-editable format. The video recording contained in CD-ROM be placed in the electronic record of the present suit in a format which is non-editable, so that the same can be viewed by the Court during hearing.
11. Application is disposed of.
CS(COMM) 79/2024
12. Let the plaint be registered as a suit.
13. Issue summons. Mr. Neel Mason, counsel, accepts summons on behalf of Defendant No. 2. He confirms the receipt of the paper-book and waives the right to formal service of summons. Written statement on behalf of Defendant No. 2 be filed within 30 days from today. Upon filing of process fee, issue summons to Defendant No. 1 by all permissible modes. Summons shall state that the written statement shall be filed by Defendant No. 1 within 30 days from the date of receipt of summons.
14. Along with the written statement, the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
15. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) 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.
CS(COMM) 79/2024 Page 3 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:34
16. Mr. Mason points out that the that the relevant party for the present suit is Google LLC, and not YouTube (Google LLC), as mentioned in the array of parties. Mr. Anirudh Bakhru, counsel for Plaintiff, states that they will look into this issue and take appropriate steps in this regard.
17. List before the Joint Registrar for marking of exhibits on 15th March, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
18. List before Court for framing of issues thereafter.
I.A. 1997/2024 (seeking an ex-parte ad interim injunction)
19. In addition to the advance service effected through e-mail, as disclosed in the documents annexed with the plaint, Mr. Bakhru submits that Defendant No. 1 has also been served through speed post and WhatsApp modes and the receipts/ proof of service shall be filed today itself.
20. Mr. Bakhru makes the following submissions:
20.1. The Plaintiff, Mcnroe Consumer Products Pvt. Ltd., is a leading fast-
moving consumer goods manufacturer, having presence in all SAARC nations, Middle-East, and South-East Asia. The Plaintiff first adopted the mark "SECRET TEMPTATION" in 2002 for its deodorant range, which was registered in its favour w.e.f. 02nd March, 2007. Thereafter, Plaintiff secured multiple registrations for formative versions of the "SECRET TEMPTATION" mark in various classes for several personal care and hygiene products. The details of registrations are culled out in paragraph No. 15 of the plaint. The Plaintiff also has a formidable online presence, including listings on e-commerce websites, whereon the "SECRET TEMPTATION" products are widely promoted and sold. Several renowned CS(COMM) 79/2024 Page 4 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 celebrities have endorsed Plaintiff's products from time to time. 20.2. Plaintiff's deodorants are sold in a unique, arbitrary, and distinctive bottle/ trade-dress, such as " ", which forms the subject matter of the suit. The curvature around the centre of the body of the said deodorant bottle, coupled with the distinctive lavender colour shade and transparent removable cap, is unique to the Plaintiff and has been used without interruption till date. In addition to their trademark rights, the Plaintiff also claims copyright in the label appearing on the afore-noted packaging, as the same constitutes an original artistic work.
20.3. The Plaintiff's revenue figures from the sale of " "
deodorant alone totalled to Rs. 18,81,86,000/- in the financial year 2022-23. The year-wise sales record of the "SECRET TEMPTATION ROMANCE"/ CS(COMM) 79/2024 Page 5 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 " " are as follows:
20.4. The grievance of the Plaintiff in the suit pertains to an advertisement of Defendant No. 1-company, posted on Defendant No. 2 [YouTube platform] in the second week of December, 2023, which was available for viewing across the country. The impugned advertisement unfurls in the following manner:CS(COMM) 79/2024 Page 6 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 CS(COMM) 79/2024 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 CS(COMM) 79/2024 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 20.5. The impugned advertisement displays " " deodorant bottle between the time stamp 00:01 to 00:09 seconds. In the story board, this deodorant bottle of the Plaintiff is shown and then removed as undesirable when the actor expresses her fourth criteria of "looking luxurious" when selecting a perfume/ deodorant. Given the identity in the shape/ trade dress/ overall getup of the above-noted bottle which is shown in the advertisement, it is evident that Defendant No. 1 is referring to the Plaintiff's "SECRET TEMPTATION ROMANCE" product. To drive home this point, Mr. Bakhru relies upon the following comparison between the product depicted in the advertisement and the Plaintiff's product:CS(COMM) 79/2024 Page 9 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35 20.6. Thus, as per the accompanying voiceover, the Plaintiff's deodorant bottle allegedly does not fulfil the criteria of luxury. Such implications are denigrating, disparaging, and defaming the Plaintiff's product. Such comparison and negative undertones made in the impugned advertisement towards the Plaintiff's product, are clearly in breach of the jurisprudence relating to disparagement of goods, as recognised by this Court in Reckitt Benckiser (India) Pvt. Ltd. v. Hindustan Unilever Limited.2 2 2022 SCC OnLine Del 3094.CS(COMM) 79/2024 Page 10 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35
21. In light of the foregoing, the Court is satisfied that the Plaintiff has made out a prima facie case in its favour and in case an ex-parte ad-interim injunction is not granted, Plaintiff will suffer an irreparable loss. Balance of convenience also lies in favour of the Plaintiff and against Defendant No. 1.
22. Accordingly, till the next date of hearing, Defendant No. 1 or any person acting on its behalf is restrained from telecasting, displaying, showing, broadcasting, the impugned advertisement/ video through any mode, media or manner whatsoever, including electronic media.
23. Defendant No. 2 is directed to block/ takedown the impugned weblink [https://www.youtube.com/watch?v=9n4xboSJMiU]. In case the Plaintiff discovers that the advertisement is posted on any other link, it is permitted to communicate the same to Defendant No. 2, who shall takedown/ block the video if the same is identical to the one which the Court has injuncted, in accordance with law.
24. Compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be done within five days from today.
25. Issue notice. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
26. List on 14th May, 2024.
SANJEEV NARULA, J JANUARY 29, 2024 nk CS(COMM) 79/2024 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/01/2024 at 22:44:35