Delhi High Court
Moroccanoil Israel Limited Anr. vs Modicare Limited on 18 November, 2022
Author: Mukta Gupta
Bench: Mukta Gupta
Neutral Citation No.2022/DHC/004949
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Decided on: 18th November, 2022
+ CS (COMM) 52/2019
MOROCCANOIL ISRAEL LIMITED & ANR. ..... Plaintiffs
Represented by: Mr. Pravin Anand, Ms. Prachi
Aggarwal, Ms. Ridhie Bajaj,
Ms. M. Dubey.
versus
MODICARE LIMITED ...... Defendant
Represented by: Mr.C.M. Lall, Sr. Advocate
with Ms. Pooja Dodd, Ms.
Nancy Roy, Ms. Niharikca and
Mr. Ayush Samaddar.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
MUKTA GUPTA, J.
I.A. 1471/2019 (under Order XXXIX Rule 1 & 2 CPC).
I.A. 16720/2019 (under Section 124 of the Trademarks Act by Defendant).
1. By I.A. 1471/2019, the Plaintiffs seek an interim order for injunction restraining the defendant, its partners or proprietor, officers, servants, agents, distributors, wholesalers, dealers, retailers or any other person acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with regard to products and services bearing the trademark/logo "MOROCCANOIL" by itself or with words or variant or any other trademark/trade name/domain name which is deceptively similar to the Plaintiff‟s registered trademarks or in any other manner whatsoever as is likely to lead to infringement of registered trademarks thereof or doing any other act as is likely to lead to infringement Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 1 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 of registered trademarks of the Plaintiffs, trade dress, copyright. The plaintiffs also pray for direction to the defendant to file statement of account and assets on affidavit and restraining defendant from disposing off or dealing with their assets in a manner that may adversely affect the plaintiffs.
2. Summons in the suit were issued to the defendant vide order dated 1 st February, 2019. Interim injunction was granted in favour of the plaintiff and against the defendant vide order dated 25th April, 2019 by this court.
3. By I.A.16720/2019, the defendant is seeking an order permitting it to proceed with the rectification proceedings filed by it against the plaintiffs‟ registration no. 1649179 bearing ORA/105/2019/TM, 1657120 bearing ORA/106/2019/TM, 3173249 bearing ORA/107/2019/TM, 3171839 bearing ORA/108/2019/TM and 2199407 ORA/109/2017/TM pending before the IPAB, and also seeks stay on trial of the suit till the disposal of the rectification petition.
About the Plaintiffs and the Contentions
4. As per the plaint, Plaintiff No.1 is a company organized and existing under the laws of Israel. It was incorporated in the year 2007 and is an industry leader in the development, production and marketing of hair and body care products. In the same year, the Plaintiff‟s hair and oil treatment products were launched under a coined trademark "MOROCCANOIL" in Canada, Israel and United States of America. Plaintiff No. 2 is an affiliate of Plaintiff No.1 having its place of business of business in Los Angeles, California. Over the years, the Plaintiffs‟ have been successful in establishing a strong international presence in the global hair care and oil treatment industry and their products are sold to customers in about 80 countries and have received various accolades for the same. The Plaintiffs Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 2 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 are also the owners of the domain name "www.moroccanoil.com" which is the website through which the Plaintiffs advertise their products and provide exhaustive information on the range of products offered by the Plaintiffs. It is noteworthy that the plaintiffs are the owners of various other domain names with "MOROCCANOIL" as an integral part.
5. The registered mark of the plaintiffs, "MOROCCANOIL", was coined and uniquely designed in the year 2007 by Ms. Carmen Utreras who was the co-founder of the Plaintiff‟s group of companies and since 2007, the Plaintiffs have continuously and extensively been using the registered marks "MOROCCANOIL", "M (MOROCCANOIL Vertical Design) and "M (MOROCCANOIL Horizontal Design)" in relation to its hair and oil treatment products worldwide including India. Plaintiff No.2 is the registered proprietor of the word "MOROCCANOIL" under class-3 pertaining to "hair care products" since 1st February 2008 as also its labels. Plaintiff‟s "MOROCCANOIL" products were sold with the said label featuring an oversized letter "M" in a distinct logo script in orange font "M" with its trademark/trade name "MOROCCANOIL" inscribed either horizontally or vertically sideways in prominent white letters which continues to be associated in the mind of the public with the Plaintiff‟s products and is reproduced below:
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6. As per the plaint, in March 2018, it came to the knowledge of the Plaintiffs that the Defendant is carrying on business of selling hair care products in the name and style of "MOROCCAN ARGAN OIL" which is strikingly similar to the Plaintiffs range of "MOROCCANOIL" products. It came to the attention of the Plaintiffs that get up, color, layout and packaging of the Defendants product was similar to the Plaintiffs range of "MOROCCANOIL" products. Upon further inquiries, the Plaintiffs became aware that the infringing products in question were being made available to the public via the Defendants website "www.modicare.com" as well as on online shopping websites such as Amazon, Flipkart, Ebay etc. Consequently the Plaintiffs sent a cease and desist letter to the Defendant dated 17 th April, 2018. The Defendant issued an interim reply to the same seeking particulars of the Plaintiff‟s use of the registered mark "MOROCCANOIL" in India. This was followed by another letter dated 14 th May 2018 whereby the Plaintiff‟s supplied a copy of the order of this Hon‟ble Court in CS(OS) 1332/2014 which granted an ex parte ad interim order in favor of the Plaintiffs. In its reply, the Defendant stated that the copy of the order failed to provide any information on the actual use of the mark in India and that they would revert with a detailed reply. In their detailed reply dated 30th May 2018, the Defendants admittedly stated that they had been selling a range of products under the trademark "SALON PROFESSIONAL MOROCCAN ARGAN OIL" since 2017 for hair oil, hair shampoos and conditioners through their centers and website respectively. However, the Defendant failed to show details with respect to any trademark application/registration pertaining to the trademark and trade dress of "MOROCCANOIL". Even Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 4 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 after the aforementioned communication, the Defendant continued to sell the infringing products till 18th January, 2019.
7. It is the grievance of the Plaintiffs that the Defendant has adopted the mark "MOROCCAN ARGAN OIL" which is almost identical and conceptually similar to the registered trademark and trade dress of the Plaintiffs. The Plaintiffs alleges that the product in respect of which the infringing mark has been adopted is also identical to those manufactured and sold by them. Furthermore, the Plaintiffs stated that the Defendant has deliberately adopted and wholly incorporated the essential features of the registered trademark, logo and trade dress with the only difference being that the word ARGAN has been added in the word "MOROCCANOIL". It is the case of the Plaintiffs substitution does not distinguish the mark of the Defendant from that of the Plaintiff but rather causes greater confusion to the minds of honest consumers.
8. The case of plaintiffs is that they are the prior adopter and user of the trademark "MOROCCANOIL", under which name, products were launched worldwide in 2009 and in India in 2011. They are the proprietor of 5 trademarks in India which have been renewed time and again and are subsisting; "MOROCCANOIL", "M (MOROCCANOIL, Vertical Design)", "M (MOROCCANOIL Horizontal Design)", "MOROCCANOIL BODY", "MOROCCANOIL SUN". It was contended that the Plaintiff‟s color combination and trade dress is distinctive and exclusively associated with their products. All these marks are designed in an artistic manner using the colors blue, orange and white. It was alleged that the defendant‟s trade dress is identical to that of the plaintiffs‟. It was contended that the probability of choosing a combination of 3 colors (blue, orange and white) from the Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 5 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 primary and secondary colors is 1/56, and the probability of using the said combination out of all the pantone colors is 1/104,84,40,315. It was submitted that the fact that the defendant chose the same combination as that of the plaintiffs‟ could not be mere coincidence.
9. It was further contended that if the defendant‟s intention was to use the impugned mark in a descriptive manner the same could have been used as "Argan Oil from Morocco" of "Argan Oil of Morocco". Further, descriptive words are not used in a stylized manner and they usually appear in smaller text and are not distinctively used. It was submitted that all three products of defendants, i.e. shampoo, conditioner and hair oil are identical to that of the plaintiffs‟ products. Further, the plaintiff had brought on record certain actual instances of confusion among the customers while purchasing the defendant‟s products they criticized the plaintiff via email and reviews on Amazon. Reliance was placed on the decisions in 1977 SCC OnLine Del 121 M/s Jugmug Electric & Radio Co. vs. M/s Telerad Pvt. Ltd., 2002 SCC OnLine Del 605 Living Media India Limited v. Jitender V Jain, 2019 SCC OnLine Del 8252 Anil Verma vs. RK Jewellers SK Group & Ors., (2011) 4 SCC 85 T.V. Venugopal v. Ushodaya Enterprises Ltd., 2003 SCC OnLine Del Geepee Ceval Proteins and Investment Pvt. Ltd. v. Saroj Oil Industry, 2014 OnLine Del 7723 Moroccanoil Israel Ltd. v. Dr. Manoj Khanna & Ors., 2002 SCC OnLine Del 864 Madhubhan Holiday Inn v. Holiday Inn Inc., (2011) 4 SCC 85 T.V.Venugopal v. Ushodaya Enterprises Ltd., 2013 SCC OnLine Del 2237 Timken Co. v. Timken Services Pvt. Ltd., (2003) 27 PTC 478 Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., and 2007 (34) PTC 370 Del. Ishi Khosla vs. Anil Aggarwal & Anr.
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10. The plaintiff has also relied upon various international decisions to show that their mark was given protection, and injunction was granted against the defendants therein. It was also contended that plaintiff‟s mark is a well-known and established mark across the world. Reliance was placed on Moroccanoil vs. Wish and Way (2012, Sweden Court), Moroccanoil vs. Phoenix Italia (2012, Italy), Moroccanoil vs. HSA, Hair Styling Applications Spa (2015, Italy), Moroccanoil Inc. et.al vs. Zotos International, Inc et.al (2017, USA), Moroccanoil Inc. vs. Moroccan Gold (2008, USA). Moroccanoil Inc. vs. Saerom Cosmetics (2012, USA), Moroccanoil Inc. vs. Marc Anthony Cosmetics Inc. (2014, USA) and Moroccanoil Inc. vs. Vogue International et.al (USA).
11. It was also alleged on behalf of the plaintiffs that the defendant are in contempt of court as an injunction was granted against them vide order dated 25th April, 2019 and an undertaking was also given by them to change their packaging. However, despite the same, the infringing products were available for sale on defendant‟s website and other third party websites. Thereafter, a contempt application was filed by the plaintiff, wherein, an undertaking was given by the directors of the defendant for removal of the products, however, despite this, impugned products continued to be available for sale online.
About the Defendant and the contentions
12. The Defendant claims to be company incorporated under the laws of India operating under the name and style of "MODICARE LIMITED" and is doing various businesses of trading including but not limited to wellness, skin care and make up.
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13. Case of defendant is based on specific denial of the allegations made by the Plaintiffs. It is the case of the defendant that they are not using the registered trademark of the plaintiff, i.e. MOROCCANOIL, rather are using the words "Moroccan Argan Oil", which is a completely descriptive use. The word "Moroccan" is used to denote Morocco from where the defendants procure crude raw material, "Argan" is used to denote the tree from which the oil is derived and "Oil" is used to denote the product itself. Additionally the defendants are proprietor of the trademark Salon PROFESSIONAL, which was first launched sometime in 1996, which is prominently written on the product packaging. The defendants launched the impugned products in 2017 in order to capitalize on the growing demand for hair-care products. Further, it was contended that there is geographical association between Morocco and Argan oil and plaintiff has acknowledged that the Argan seeds are native to Morocco. Even as per the plaintiffs‟ website, they also source their Argan oil from Morocco, therefore the plaintiff should not attempt to stop others from doing the same. It was further contended that the Defendant‟s mark "Salon PROFESSIONAL" and plaintiffs‟ mark "MOROCCANOIL" marks are distinguishable from each other, and the plaintiffs do not possess any exclusive rights to the words which are merely descriptive such as Moroccan Argan Oil, and that the rights of the plaintiffs are confined to the composite trademark over "MOROCCANOIL" as one word. The plaintiff‟s neither have any statutory or common law rights over Moroccan Oil, nor is the defendant using the Moroccan Argan Oil in a trade mark sense. It was contended on behalf of the defendant that the plaintiffs‟ marks contain words which have a direct reference to character and quality of goods and thus, is merely descriptive and not capable of acquiring Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 8 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 distinctiveness, and therefore, is violative of Section 9(1)(a) and (b) of the Trade Marks Act.
14. It was further contended on behalf of the defendant that the plaintiffs cannot be allowed to strong arm the honest traders to dictate how they should describe ingredients in their products. The defendant has elected to describe its products like Cuban Cigars, Jamaican Rum, Columbian Coffee, Kohlapuri Chappal, Jodhpuri Slippers, etc. Ld. Counsel on behalf of the defendant also submitted that the plaintiffs‟ marks have been wrongly granted registration without issuance of any examination report i.e. they were registered without any substantial examination and without scrutiny. It was contended that the plaintiffs‟ are using the words "Moroccan Argan Oil"
and not MOROCCANOIL, which is descriptive and used to indicate the presence of active ingredient present in their products. Even as on date, the trademark of the plaintiff is that over MOROCCANOIL as one word and not over use of any other descriptive terms using words "Morocco" and "Oil".
The defendant also contended that the trademark of the plaintiffs‟ is not a well-known trademark in India. Further, there is a considerable difference in products of the parties i.e. the plaintiffs‟ products are more expensive, the channels of trade and marketing methods are also different as plaintiffs‟ products are sold through retail and online marketplaces while the defendant‟s products are sold only by way of direct sale; therefore, the likelihood of confusion is completely ruled out.
15. It was also contended that the use of the Moroccan oil descriptors cannot be considered infringement considering that Section 30(1)(a) clearly states that the use of a trade mark will not be considered infringement if such use is in accordance with honest practices in commercial matters and not Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 9 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 designed to take unfair advantage or be detrimental to the trademark. By filing a suit against the Defendant, the Plaintiffs have ignored that the Defendant‟s use of "Moroccan Argan Oil" on its products squarely falls within honest practices in commercial matters as it is used purely in a descriptive sense. Moreover, the misuse of the statutory monopoly granted to the Plaintiffs‟ marks violates Section 17 of the Act, which envisages the principle of anti-dissection and clearly states that if a registered mark contains any matter which is common to trade or of a non-distinctive manner, the registration of the mark does not confer upon the registered proprietor any exclusive right over the descriptive or non-distinctive matter, and therefore such invalid registration of the plaintiff‟s trademark is liable to be struck off the Register of Trademarks. Reliance was placed by the defendants on the decisions cited as (2010) 174 DLT 279 (DB) Marico Ltd. vs. Agro Tech Foods Ltd., and 2019 SCC Online Del 7580 Horlicks Ltd. Vs. Heinz India Pvt. Ltd.
16. The defendant relied upon the judgment cited as 2017 FCA 823 Moroccanoil Israel Ltd. vs. Aldi Foods Pvt. Ltd. decided by the Australian Federal Court wherein the court took the view that the defendant‟s use of the term Moroccan Agran Oil as a trademark was not infringing on the plaintiff‟s mark. Although it was clarified by the defendant herein that the use of Moroccan Agran Oil is only to describe an active ingredient of the product and not in the sense of a trademark. And therefore, the defendant submitted that the plaintiffs failed to establish a prima facie case and that the balance of convenience lies in favour of the defendant and against the plaintiff, and that the defendant is suffering irreparable injury on account of the ad interim injunction granted to the plaintiff against the defendant.
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17. Having heard counsel for the parties, perusing the record and the judgments relied by the parties, this court finds merit in the application of the plaintiff seeking interim injunction for the discussion hereinafter.
18. The comparison between the products can be visualized as under:
PLAINTIFFS' PRODUCT DEFENDANT'S
PRODUCT
19. A bare perusal of the two products would reveal that the defendant has used the word "Moroccan Argan Oil" as a trade mark. Claim of the Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 11 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 defendant that it is not using "Morrocan Argan Oil" as a trademark is clearly belied by the prominent manner in which "Morrocan Argan Oil" has been written on the packaging as the same is more prominent than the defendant‟s trademark Salon Professional. Further the identical colour combination and the manner of writing "Morrocan Argan Oil" horizontally and the packaging is a clear copy of the plaintiff‟s product.
20. The main objection of the defendant to the plaintiff‟s registered mark is that the same is descriptive, thus not capable of acquiring distinctiveness. To establish whether a mark is generic or descriptive mark, this Court in 2019 SCC OnLine Del 8252 Anil Verma vs. RK Jewellers SK Group & Ors., laid down the following tests :
―22. The descriptive nature of a mark can be determined by applying two tests as per McCarthy on Trademarks and Unfair Competition, namely, the Degree of Imagination Test and the Competitors' Need Test.
24. The Degree of Imagination test and the Competitors' Need test have to be applied in the facts of each case in order to adjudicate as to whether a particular mark describes the quality or characteristics of the product or service or is merely suggestive of the products or services offered. In a case whether the conclusion cannot be arrived at without evidence or whether there is a grey area, registration of marks would tilt the case in favour of the Plaintiff.
25. The Need of the Competitors and the Degree of Imagination tests are inversely proportional to each other. If the degree of imagination required is higher, then need of the competitors decreases. If the need of the competitors is not so high and there are alternate ways of describing some services, then the degree of imagination required would be higher.
26. The expressions Cash for Gold and Gold Buyers do not describe the entire gamut of services offered by the Plaintiff. As stated above, the Plaintiff carries out a wide range of business Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 12 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 from its stores including the sale/purchases of gold, diamonds, silver, antique, watches etc. Some portion of the business could be buying of gold from the customers in return for money. Even the word ‗cash' does not denote what is understood in the actual sense by the Plaintiff, as the payment upon purchase of various commodities is made through the banking channels, demand draft or even by cheques. Thus, Cash for Gold could be suggestive of some part of the business of the Plaintiff but does not describe fully the complete range of services offered by the Plaintiff. The Defendants have not placed on record any independent market survey or evidence, which suggests that the term Cash for Gold is perceived as a descriptive expression.
Even the term Gold Buyers cannot be held to be descriptive at the prima facie stage, by applying the Degree of Imagination test as, though the Plaintiff may be buying gold from customers, but it also is involved in buying various other commodities apart from gold. Moreover, in respect of the marks ‗CASH FOR GOLD' and ‗GOLD BUYERS', as is evident from the various other third party user documents which have been placed on record by the Defendants, there are several alternative ways in which third parties have referred to identical businesses. Such alternative marks/names used are ‗CASH 4 GOLD', ‗GOLD BUYERS', ‗SELL YOUR GOLD' ‗CASH EXCHANGE', ‗GOLD EXCHANGE', ‗MONEY FOR GOLD', ‗MONEY 4 GOLD', ‗SELL GOLD', ‗POST GOLD FOR CASH', ‗EZY CASH GOLD', ‗GOLD-BUYER', ‗WE BUY GOLD', etc.
33. Thus, none of these stores use the name/mark ‗CASH FOR GOLD' per se as a mark. There are sufficient distinguishing elements that exist between the Plaintiff's marks and the said marks. Moreover, it is the settled position in law that a Plaintiff not expected to take action against every misuse. It is only when the Plaintiff apprehends that the Defendants' use of the mark is going to have a negative impact on its business that the Plaintiff needs to take action. In Info Edge (India) Pvt. Ltd. v. Shailesh Gupta 98 (2002) DLT 499 a Ld. Single Judge of this Court observed as under:
―It was also contended by the counsel for the defendant that there are many websites and domain names almost Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 13 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 with similar name, which re existing and, Therefore, there cannot be any monopoly to the plaintiff and also that the plaintiff having not proceeded against them for similar reliefs, is not entitled to proceed only against the defendant. The said contention was refuted by the plaintiff by placing on record a chart that the other websites with almost similar names are either nonfunctional or are foreign language websites and they have nothing to do with jobs. It is thus prima facie established that those websites/domain names stand apart and on a different footing from the domain names of the plaintiff and the defendant. There is neither any occasion nor is there any immediate necessity for the plaintiff to proceed against those websites/domain names, which are non-functional and non-relatable to the activity of employment and jobs. The plaintiff, Therefore, cannot be denied relief and an injunction only because it has not proceeded against other similar names. As a matter of fact, when action is initiated, one similar domain name has to be always the first and that cannot be the reason for denying injunction to the plaintiff.‖
37. In matters of this nature, it is not just the competing rights of the parties that needs to be looked at, but also the consumers' interest. Any consumer who may be selling gold could be led to believe that the Defendants' business is the same as that of the Plaintiff. This one factor overrides all other objections that have been raised by the Defendants. The dishonesty in the adoption is also apparent due to the use of the identical colour combination, writing style, font, manner of usage and the prominence given to the various marks/expressions. This coupled with the knowledge of the Plaintiff's business, strengthens the Plaintiff's case that the adoption by the Defendants is dishonest. The pending trademark applications, the list of which has been filed also shows that none of them are registered.
41. This is also the settled legal position, that so long as the mark is on the Register, the Plaintiff's statutory rights ought to Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 14 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 be protected, subject to the defences which are to be adjudicated.‖ (emphasis supplied)
21. The mark "MOROCCANOIL" does not describe the entire gamut of products of the plaintiffs. Further the plaintiffs have displayed their trademark "MOROCCANOIL" in a particular manner and colour scheme, which adds to its distinctiveness. It is also required to be seen from the point of view of a consumer as to whether the two marks will cause confusion in the mind of the consumer. The mark used by the defendant is also for the same products i.e. products for the hair. Despite having inserted „Argan‟ in between Morrocan and Oil, the defendant‟s product still passes off as the plaintiff‟s product sold under the trademark "MORROCANOIL". The plaintiffs having the registrations of the mark are entitled to protection of their statutory rights subject to the defences to be adjudicated.
22. Plaintiff‟s trademark is also a combination of two dictionary words i.e. "Moroccan" and "Oil", and in case of long and continuous use thereof, the said trade mark is entitled to protection. In the decision reported as 1977 SCC OnLine Del 121 M/s Jugmug Electric & Radio Co. vs. M/s Telerad Pvt.
Ltd., this court dealing with the word mark "Telerad" being a combination of the two words "Tele" and "Rad" held as under:
―10. Another very important consideration in judging the applicability of section 11 (a) is the nature of the trade mark. If a trade mark is an invented word, then the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to satisfy the authorities acting under the Trade and Merchandise Marks Act to protect his monopoly of the same. The intention to monopolise the word may not be so obvious when the word constituting a trade mark is not all Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 15 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 invented or a coined word but is a common dictionary word. The respondent coined the word ―TELERAD‖ appropriately became it manufactured radio sets indicated by the combination of the word ―Tele‖ with the word ―Rad‖. When a person copies as his own trade mark a word previously invented by another person, suspicion immediately arises why the Copyist is trying to imitate the person who has a priority in the trade. The appellant in the present case has not been able to give any satisfactory answer as to why it chose the name ―TELERAD‖ as its trade mark and why it called itself ―Jugmug Electric and Radio Company‖ when it knew it was not making radios and when it also knew that the word ―TELERAD‖ was previously being used and was registered as a trade mark by the respondent appropriately because the respondent manufactured radios. It is difficult to remove the impression from the mind of the authorities acting under the Trade and Merchandise Marks Act as also from the mind of the Court that the appellant deliberately copied the trade mark of the respondent to obtain illegitimate advantage of the reputation of the respondent attaching to the said trade mark. It was argued for the appellant that reputation is attached to goods and not to the trade mark as such. This very argument recoils on the appellant. It is because the goods of the appellant are in the same trade channel as the goods of the respondent that the probability of the appellant exploiting the reputation of the respondent arises. What the customers know is that the respondent manufactures radios. The reputation of the respondent certainly attaches to those radios. But the customers are also likely to think that the respondent also manufactures and/or sells domestic electrical appliances firstly because it is common practice for one firm to manufacture both these types, of goods and for shops to sell both these types of goods and secondly because both these types of goods are sold under the same trade mark ―TELERAD‖.Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 16 of 31 Signing Date:19.11.2022 17:51:10
Neutral Citation No.2022/DHC/004949 What more assurance is needed to a customer to think that a ―TELERAD‖ domestic electrical appliance is made by the maker of ―TELERAD‖ radio than the common name ―TELERAD‖ under which both of them are sold?‖
23. Similarly, in the decision reported as 2002 SCC OnLine Del 605 Living Media India Limited v. Jitender V Jain, this court dealing with the combination of two words both of which had a dictionary meaning held:
―29. The word ―AAJ‖ and ―TAK‖ may be individually descriptive and dictionary word and may not be monopolised by any person but their combination does provide a protection as a trademark if it has been in long, prior and continuous user in relation to particular goods manufactured, sold by a particular person and by virtue of such user the mark gets identified with that person. It is so irrespective of the fact whether such a combination is descriptive in nature and has even a dictionary meaning. In such a case any other person may choose any of the two words viz. either ―AAJ‖ or ―TAK‖ as its trade name or mark but it has to be prohibited from using the combination of these words as such a user not only creates confusion as to its source or origin but also bares the design or motive of its subsequent adopter.‖
24. To show the long and continuous use of the mark, the plaintiffs have placed, in sealed cover, sales figures of their products and the expenditure for promotion in the past years. The said sealed cover was opened in the presence of learned counsels for the parties on 28th October, 2022 which shows that the sales figures of the plaintiff are phenomenal, thereby showing that the plaintiff‟s product have attained goodwill by its long and continuous use. Applying the tests laid down, even though "Moroccan" and "Oil" are two distinct words having their independent meaning but the plaintiff having Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 17 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 coined the combination of two words "MOROCCANOIL" which word has attained goodwill by its long and continuous use, the mark of the plaintiff deserves protection. Hon‟ble Supreme Court in the case cited as (2011) 4 SCC 85 T.V. Venugopal v. Ushodaya Enterprises Ltd., held:
―2. The appellant is the sole proprietor of a firm carrying on business inter alia as manufacturers of and dealers in incense sticks (agarbattis) in the name and style of Ashika Incense Inc. at Bangalore. The appellant started his business in the year 1988 and adopted the mark ―Ashika's Eenadu‖. According to the appellant the word ―Eenadu‖ in Kannada language means ―this land‖. In Malayalam and Tamil language it conveys the same meaning. In Telugu language it means ―today‖. In consonance with the above meaning the appellant devised an artistic label comprising a rectangular carton in bottle-green background with sky-blue border and in the centre, in an oval tricolour, the word ―Eenadu‖ is written.
90. The respondent Company's mark ―Eenadu‖ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. ―Eenadu‖ newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word ―Eenadu‖ may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products and services provided by the respondent Company.‖
25. There is yet another ground which warrants protection to the plaintiffs.
Not only is the mark of the defendant "Moroccan Argan Oil" deceptively similar to the plaintiffs‟ mark "MOROCCANOIL", the manner in which Moroccan Argan Oil is written on the packaging prominently shows that the same is used as the trademark and not merely a description of product sold under the trademark "Salon PROFESSIONAL". As a matter of fact, the manner of writing "Moroccan Argan Oil" is exactly similar to that of the plaintiffs and is written prominently and horizontally. Further, part of the Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 18 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 trademark i.e. "PROFESSIONAL" is written very inconspicuously and is hardly prominent. Further, there are similarities in the color scheme in the trade dress as also the similarities in products i.e. shampoo, conditioner and oil between the products and packaging of the plaintiffs‟ and that of the defendant, which are sufficient to cause confusion in the minds of an unwary consumer.
26. Plea of the defendant that since the defendant uses the word Argan in between the two words Morrocon and Oil, there is a distinction between the trademarks of the plaintiff and defendant is answered by this court in 2003 SCC OnLine Del 534 Geepee Ceval Proteins and Investment Pvt. Ltd. v. Saroj Oil Industry, wherein it was held:
―19. It the background of the above proposition of law, now the facts of the present case may be recapitulated. While the plaintiff is using the word ‗Chambal' and the defendant is using the word ‗Chambal Deep'. Both the parties are dealing in edible oils whether it is soya bean or vegetable oil. The products are identical they are selling their products all over india, therefore, their sphere of activity and business is also identical. Phonetically the word ‗Chambal' and ‗Chambal Deep' are similar. The same class of purchasers and consumers are using the products of the plaintiff and the defendant. Plaintiff is using the word ‗Chambal' on its trademark since 1997 whereas defendant, as per its allegation in the application for registration of the trademark, started using the trademark ‗Chambal Deep' since 2001 i.e. much after plaintiffs. The sale turn-over of the plaintiffs goods had increased from Rs. 113 crores in the first year of its production i.e. 1997-98 to a whopping Rs. 240 crores in the year 2001-02. The defendant could not produce the figures of its turn-over of the goods sold in the trade name ‗Chambal Deep' during this period. Plaintiff has filed photographs of the labels affixed over similar tins of oil showing the trademarks of the plaintiff and that of the defendant. They are deceptively similar and there was Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 19 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 likelihood of deception or causing confusion in the mind of unwary consumer with not very good memory to confuse the product of the defendant to be that of the plaintiff's. Though the counsel for defendant has produced a copy of the label of the defendant's which is strinkingly different from the photographs which appears on pages 123 to 125 but the word ‗Chambal' is prominent on it. Since the word ‗Chambal' has acquired distinctiveness of the plaintiff, therefore, addition of the word ‗Deep' with it would not be of any consequence.
22. The balance of convenience is, therefore, in favour of the grant of interlocutory injunction. Plaintiff may also suffer irreparable loss and injury if the defendant is allowed to continue to sell its products also in the trade name of ‗Chambal Deep' during the pendency of this suit.‖ (emphasis supplied)
27. An uncanny similarity between the defendant‟s mark and that of the plaintiffs‟, which is sufficient to show that there was a dishonest adoption of the mark on the part of the defendant as in the present case, was held to be deceptive and liable to be injuncted by this court in 2002 SCC OnLine Del 864 Madhubhan Holiday Inn v. Holiday Inn Inc., wherein it was held:
"50. The respondent company Holiday Inn Inc. is a registered company in the United States of America. The company has acquired immense global reputation. It has a large number of hotels in various parts of the world. The adoption of the words ―Holiday Inn‖ by the appellants from the very inception was based on the doctrine of bad faith. The appellants were fully aware of the considerable transborder reputation of the respondent and they wanted to derive pecuniary benefits from their reputation. The question that arises is that out of the millions of words of English language why did the appellants adopt only the words ―Holiday Inn‖. The answer has to be that the appellants deliberately adopted these words to ride on the immense global reputation of the respondent. The intention of the appellants becomes absolutely clear after seeing the computer print out of the appellants and respondents pages Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 20 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 taken from the internet under the heading ―Holiday Inn, Delhi‖. These documents were placed before us by the respondent. Under the heading ―Holiday Inn‖ in the internet information about the respondent's hotel world wide is given. Similarly the appellant, Kapoor Holiday Inn, also has a web site in the internet under the heading ―Kapoor Holiday Inn‖ giving its tariff, location etc. and advertising itself as the ―most distinguished address in New Delhi‖. By giving all this description the appellants in fact wanted to ride on the reputation of the respondent and derive pecuniary benefit from it. As observed in Simatul Chemical Industries Pvt. Ltd. (supra), the test to be applied is the test of an average person with imperfect recollection. It would not be right to apply the test of a man of extraordinary memory who remembers the spelling of the name of each company or a person who jots down meticulously and methodically the names of companies in his diary and brings out his diary and contemplates whether he is dealing with one company or the other. The average persons likely to be deceived by or confused with the use of the words ―Holiday Inn‖ by the appellants.‖ (emphasis supplied)
28. Dealing with the dishonest adoption, this court in the decision reported as 2007 (34) PTC 370 Del. Ishi Khosla vs. Anil Aggarwal & Anr. held:
"23. What is relevant is the admission on the part of the defendants in using the word ―DIET WHOLE FOODS‖ in respect of the same products which are marketed by the defendants with same techniques and same benefits. As on the date of filing of the application by the defendants for registration of this mark in 2004, they had not started marketing their products under this label. Even if it is taken that the defendants' products hit the market in the year 2004, the plaintiff had been marketing her products with trademark ‗Whole Foods' since the year 2001. Obviously, the defendants could see through the benefits of products as conceptualised by Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 21 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 the plaintiff and they wanted their own share in the pie. It is not to suggest that the plaintiff has monopoly over these products. Any other person may enter the trade and be a competitor. Competition is healthy for not only consumers but for manufacturer as well and is, therefore, in public interest. However, what is to be discouraged in the dishonest adoption of somebody else's trademark and trying to ride on the goodwill created by the competitor who entered the market prior in time. This is what is sought to be done by the defendants by clever manipulation, namely, adding the word ‗DIET' in their mark after adopting identically the entire trademark of the plaintiff i.e. ‗Whole Foods'. This intention of the defendants becomes manifest as they have also adopted same style of the trademark and same labels/packing etc. I may mention that during arguments learned counsel for the defendant conceded this and offered to change the writing style as he accepted that artistic feature could not be used. However, what is emphasized is the manner in which the defendants adopted the trademark ‗DIET WHOLE FOODS'. Addition of one word with same style in which these letters are written explains the obvious, namely, dishonest adoption. With such adoption, confusion is inevitable. In Ruston Hornsby v. Zamindara Engineering, PTC (Suppl) (1) 175 SC, the Supreme Court deprecated the defendant's adoption of plaintiff's trademark ‗RUSTON' by adding word ‗INDIA' to its mark and held that mere addition of the word ‗INDIA' could not be held to be a distinguishing factor as the said word had no trademark value or signification."
29. Granting injunction in a case of similarity in trade dress, colour scheme and manner of writing, this Court in (2003) 27 PTC 478 Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., held :
Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 22 of 31 Signing Date:19.11.2022 17:51:10Neutral Citation No.2022/DHC/004949 ―52. I have accorded my careful and cautious consideration to the rival contentions for the purpose of ad interim injunction and have come to the following conclusions:
53. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging, etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or layout appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.
54. The plaintiffs have succeeded prima facie in showing from the look of trade dress of the two articles, one manufactured by the plaintiff and another by the defendant from the point of view of not only unwary, illiterate customer/servants of the household but semi-literate also as the trademarks ―Colgate‖ and ―Anchor‖ are written in English language cannot be distinguished by ordinary customer of a country where bare literacy level is abysmally low. There is every likelihood of confusion as to the source on account of the similarity of substantial portion of the container having particular colour combination and also shape of the container which alone helps in determining the allegations of passing off despite stripes in the same colour or in different colour. The criteria is the overall impression from the look of packaging/container containing the goods and articles that can legitimately injunct its rival. Such an action on the part of infringing party also has an element of unfair competition.
57. It is not the diligent or literate or conscious customer who always remain conscious to the quality of goods he has been purchasing which determines an offence of passing off. It is the unwary, illiterate and gullible persons who determine by Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 23 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 arriving at a conclusion whether the infringed goods are confusingly similar in colour combination, getup, layout printed over the container or packing. If it is not so then the offence of passing off will cease to have its existence once the guilty party chooses a different trade name.
59. As in Hudson's case, for non-speaking English, purchasers getup was held to be all important. In the instant case for unwary, illiterate and gullible customer, who is as good as non-
English knowing purchaser, trade dress in the form of colour combination of Red and White in that order and proportion is all pertinent and relevant and nothing else. Distinctive differences in name is of no significance. Reason is simple. If an illiterate servant or village folk goes to the shop with the instruction to bring Colgate Tooth Power having a container of particular shop with trade dress of colour combination of Red and White in 1/3 and 2/3 proportion he will not be in position to distinguish if he is handed over ―Anchor‖ Tooth Powder contained in a container having the identical trade dress and colour combination of ―Red and White‖ in that order and proportion. Confusion is writ large as to source and origin as the difference in name will not make any difference to such a customer and the goods of the defendant can easily be passed off as goods of the plaintiff.
60. Conscious imitation or substantial imitation of colour combination or getup or layout of container again bares the design of the defendant in causing confusion in the minds of customers. The Court is not required to find out whether there is confusion or deceptiveness. The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.
62. Though in Harold F. Ritchie's case observations emanate from the competitiveness of American economy and therefore the second comer in an already occupied field has always endeavour to capture as much of the first comer market as he can.‖
30. Thus by merely adding the "Argan" in between "Morrocan" and "Oil" does not make the mark of the defendant distinct from that of the plaintiff Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 24 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 and the defendant not only having copied the trademark of the plaintiff "MORROCANOIL" but also the colour scheme, get up, lay out, manner of writing and font, has clearly indulged in dishonest adoption of the plaintiff‟s trademark thereby causing loss not only to the plaintiffs but also confusion in the minds of unwary customers, the defendant is liable to be injuncted. Consequently the interim injunction dated 25th April, 2019 is confirmed till the disposal of the suit.
31. Section 124 of the TM Act provides for stay of proceedings where validity of registration of trademark is in question inter alia on the ground of a plea of invalidity of the registration of plaintiff‟s mark or for defences under Sections 30 to 35 of the TM Act raised by the defendant. Accordingly, an application was filed on behalf of the defendant seeking permission to proceed with in its five applications before IPAB (now before the Bombay High Court) and stay of the suit.
32. Hon‟ble Supreme Court of India has clarified the law with respect to Section 124 of the TM Act in the decision reported as (2018) 2 SCC 112 Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors., and it was held:
―34. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 25 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive.
X X X
37. The position may be highlighted by reference to a suit for infringement where the defendant raises the plea of invalidity of the plaintiff's trade mark and also in the alternative takes up any of the defences available in law. The defendant by operation of Section 111(3) of the 1958 Act is deemed to have abandoned the plea of invalidity. In the trial it is found that the defendant is guilty of infringement and is appropriately restrained by a decree of the civil court. If the right under Sections 46/56 of the 1958 Act is to subsist even in such a situation, the possible uncertainty and possible anarchy may well be visualised. This is why the legislature by enacting Section 111 of the 1958 Act has mandated that the issue of invalidity which would go to the root of the matter should be decided in the first instance and a decision on the same would bind the parties before the civil court. Only if the same is abandoned or decided against the party raising it that the suit will proceed in respect of the other issues, if any. If the above is the legislative intent, which seems to be clear, we do not see how the same can be overcome by reading the rights under Sections 46 and 56 of the 1958 Act to exist even in a situation where the abandonment of the same right under Section 111(3) has taken effect in law.
X X X
41. Section 111 of the 1958 Act, and the corresponding Section 124 of the 1999 Act, nowhere contemplates grant of permission by the civil court to move the High Court or the IPAB, as may be, for rectification. The true purport and effect of Sections 111/124 (of the old and new Act) has been dealt with in detail and would not require any further discussion or enumeration.
The requirement of satisfaction of the civil court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 26 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 in the statutory authority to deal with the issue of invalidity by no means, tantamount to permission or leave of the civil court, as has been contended. It is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit.
42. While Section 32 of the 1958 Act, undoubtedly, provides a defence with regard to the finality of a registration by efflux of time, we do not see how the provisions of the aforesaid section can be construed to understand that the proceedings under Sections 46 and 56 on the one hand and those under Sections 107 and 111 on the other of the 1958 Act and the pari materia provisions of the 1999 Act would run parallelly. As already held by us, the jurisdiction of rectification conferred by Sections 46 and 56 of the 1958 Act is the very same jurisdiction that is to be exercised under Sections 107 and 111 of the 1958 Act when the issue of invalidity is raised in the suit but by observance of two different procedural regimes.‖
33. Further, the Division Bench of this Court in the decision cited as (2010) 174 DLT 279 (DB) Marico Ltd. vs. Agro Tech Foods Ltd. observed that no single entity should be allowed to have monopoly over freely existing ingredients and descriptive words, and arrived at the following conclusions:
―41. The following conclusions thus emerge:
(i) A mark which is sought to used as a trade mark, if, is one falling under Section 9(1)(a) to (c), then the same ordinarily ought not to be afforded protection as a trade mark.
(ii) Before the marks which fall under Section 9(1)(a) to (c) are given protection as a trade mark, the distinctiveness must of an undisturbed user of a very large/considerable number of years, with the emphasis being on discouragement on appropriation of such marks which fall under Section 9(1)(a) to (c).
(iii) A civil Court in a suit filed for infringement of a registered trade mark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 27 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunction--once the objection as to invalidity of registration is taken up in the pleading/written statement
(iv) A trade mark which falls under Section 9(1)(a) to (c) cannot be registered on proposed to be used basis. Evidence on distinctiveness with respect to trade marks falling under Section 9(1)(a) to (c) should be the evidence of user evidencing distinctiveness as on the date of application for registration or at the best of evidence up to the date of registration.
(v) In infringement actions the Court is entitled to consider the evidence of distinctiveness up to the date of registration for the purpose of passing any interlocutory order and not evidence showing distinctiveness post registration. However, in cancellation proceedings evidence of distinctiveness post registration of the trade mark can also be considered.
(vi) Even if there is finality to registration of a trade mark, yet the defendant in infringement action can take statutory defences under Sections 30 to 35 to defeat the infringement action.‖
34. In the present case, applications for rectification of trademark were filed by the defendant on 01st August, 2019 before IPAB i.e. after the suit was instituted, and in terms of Section 124 and judgment in Patel Field Marshal (supra), the defendant was required to seek framing of the issue from the court where the suit is pending, for challenging the validity of the trademark. Although as per section 31 of the TM Act, registration is a prima facie evidence of the validity of trade mark, however, there is no limitation on the right of the defendant to challenge the validity of a trademark, otherwise, Section 124 of the Act would become a dead letter.
35. The contentions raised by the defendants that plaintiffs‟ mark is a combination of two words "Moroccan" and "Oil" having a direct relation to Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 28 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 the geographical origin of the product, and that it is descriptive of the use of the Argan oil, extracted from the argan seeds which are endemic and native to Morocco are plausible and come to the aid of the defendant. Though while deciding the application seeking interim injunction, this Court has held that the mark of the plaintiffs has acquired a distinctiveness due to long and uninterrupted user, however, as while deciding the application under Section 124, the court has to look into the defences taken by the defendant, this Court finds merit in the above noted contentions of the defendant as all these are certainly grounds which would entitle the defendant to challenge the validity of the mark. Thus, the defendant is permitted to proceed with its rectification applications and further proceedings in the suit CS(Comm) 52/2019 are stayed, awaiting the decision in the applications mentioned in para 3 above.
36. The following issues are settled to be decided in the rectification applications:
(i) In ORA/105/2019/TM :
Whether the registration of the Plaintiff's mark
MOROCCANOIL is invalid and liable to be removed/ cancelled from the Registrar of Trademarks? OPD
(ii) In ORA/106/2019/TM :
Whether the registration of the Plaintiff's is invalid and liable to be removed/ cancelled from the Registrar of Trademarks? OPD Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 29 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949
(iii) In ORA/107/2019/TM :
Whether the registration of the Plaintiff's mark MOROCCANOIL BODY is invalid and liable to be removed/ cancelled from the Registrar of Trademarks? OPD
(iv) In ORA/108/2019/TM :
Whether the registration of the Plaintiff's mark MOROCCANOIL SUN is invalid and liable to be removed/ cancelled from the Registrar of Trademarks? OPD
(v) In ORA/109/2017/TM :
Whether the registration of the Plaintiff's is invalid and liable to be removed/ cancelled from the Registrar of Trademarks? OPD
37. In view of the discussion above, IA 1471/2019 under Order XXXIX Rule 1 & 2 CPC under filed by the plaintiff is disposed of making the ex- parte ad-interim injunction dated 25th April, 2019 absolute till the disposal of the suit. IA 16720/2019 filed by the defendant under Section 124 of the TM Act is also disposed of granting permission to the defendant to proceed with its applications Nos. ORA/105/2019/TM, ORA/106/2019/TM, ORA/107/2019/TM, ORA/108/2019/TM and ORA/109/2017/TM seeking rectification of the registered mark of the plaintiff. Till the decision in rectification applications No. ORA/105/2019/TM, ORA/106/2019/TM, Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 30 of 31 Signing Date:19.11.2022 17:51:10 Neutral Citation No.2022/DHC/004949 ORA/107/2019/TM, ORA/108/2019/TM and ORA/109/2017/TM, the proceedings in CS(COMM) 52/2019 are stayed.
38. Order be uploaded on the website of this Court.
(MUKTA GUPTA) JUDGE NOVEMBER 18, 2022 'ga/akb' Signature Not Verified Digitally Signed By:ANIL KUMAR BHATT CS (COMM) 52/2019 Page 31 of 31 Signing Date:19.11.2022 17:51:10