Delhi District Court
M/S L'Oreal vs . Gupta Cosmetic & Anr on 4 May, 2018
M/s L'oreal vs. Gupta Cosmetic & Anr
IN THE COURT OF MS. JYOTI KLER, ADDL. DISTRICT JUDGE05,
ROOM NO. 605, SOUTH DISTRICT, SAKET COURTS, NEW DELHI
In the matter of
TM No. 28/16
Case ID No. DLST010002242010
M/s L'Oreal
14, Rue Royale, 75008,
Paris, France
.............Plaintiff
Versus
1.M/s Gupta Cosmetic Merrut Gate Police Station Hapur245101 Ghaziabad, U.P
2. Malhotra Cosmetic Chandi Road, Hapur, Ghaziabad, Uttar Pradesh ..............Defendants Date of Institution : 02.07.2010 Date of reserving the judgment : 28.03.2018 Date of pronouncement : 04.05.2018 Decision : Decreed EXPARTE JUDGMENT IN A SUIT UNDER SECTION 134 & 135 OF TRADEMARKS ACT, 1999; SECTION 55 OF COPYRIGHT ACT, 1957 TM No.28/16 Page 1 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr FOR PERMANENT INJUNCTION RESTRAINING INFRINGMENT; PASSING OFF; DELIVERY UP; RENDITION OF ACCOUNTS ETC.
1. This is a suit filed under Section 134 & 135 of the Trademarks Act, 1999 and under Section 55 of the Copyright Act, 1957 for seeking permanent injunction restraining infringement, passing off, rendition of accounts etc filed by the plaintiff herein against the defendants.
Case of the Plaintiff
2. Plaintiff is incorporated under the laws of France. It is engaged in the business of manufacturing and marketing of wide range of hair care, skin care, toiletries and beauty products including perfumery preparations, essential oils, cosmetics, preparations for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, nonmdicated preparations for the case and the beauty of the hair, nonmedicated preparations for the care and the beauty of the skin, toilet soaps, dentifrices, suntan preparations, personal deodorants and other allied/related products. Since about 19101915 plaintiff has been using the TM No.28/16 Page 2 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr word mark 'L'OREAL' per se, stylized, formative/bearing and labels as a trademark and as an essential part of its tradename in relation to its goods & business. The trademark 'L'OREAL is being used by the plaintiff continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade as proprietor thereof. The said trademark has built up a worldwide and globally valuable trade, goodwill and reputation thereunder and acquired proprietary rights therein.
3. Plaintiff's goods under its said trade mark/trade name are branded and sold in about 130 countries of the world across all continents and regions including India. The plaintiff thus enjoys transborder reputation and users and its trademark 'L'OREAL' is a well known trademark. This trademark is also registered in India, details of which are as below:
(a) Trademark L'OREAL Registration No. 165778 in Class 3 Date of Registration 14.09.1954 Description of goods Perfumery, soaps, nonmedicated toilet preparations, shampoos, toilet preparations for the permanent TM No.28/16 Page 3 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr waving of hair. Toilet preparations (coloured and otherwise) for the rinding of hair, dyes for hair and beards, nonmediated hair lotions Renewal Status Renewed and subsisting till 14.09.2020
(b) Trademark L'OREAL (LABEL) Registration No. 473298 in Class 3 Date of Registration 08.06.1987 Goods Perfumery preparations, essentials oils, cosmetics, preparation for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, nonmedicated preparations for the care and the beauty of the hair, nonmedicated preparation for the care and the beauty of skin, toilet soaps, dentifrices, sun tan preparations, personal deodorants.
Renewal Status Renewed, legal, valid and subsisting
(c) Trademark L'OREAL LES TECHNICARES
(wordmark)
Registration No. 557907 in Class 3
Date of Registration 05.09.1991
TM No.28/16 Page 4 of 20
M/s L'oreal vs. Gupta Cosmetic & Anr
Goods Perfumery preparations, essentials oils,
cosmetics, preparation for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, nonmedicated preparations for the care and the beauty of the hair, nonmedicated preparation for the care and the beauty of skin, toilet soaps, dentifrices, sun tan preparations, personal deodorants.
Renewal Status Renewed, legal, valid and subsisting
(d) Trademark L'OREAL PROGRESS (wordmark)
Registration No. 499858 in Class 3
Date of Registration 25.10.1988
Goods Perfumery preparations, essentials oils,
cosmetics, preparation for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, nonmedicated preparations for the care and the beauty of the hair, nonmedicated preparation for the care and the beauty of skin, toilet soaps, dentifrices. Personal deodorants included in Class 3 Renewal Status Renewed, legal, valid and subsisting TM No.28/16 Page 5 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr
(e) Trademark L'ORAEL PLENTITUDE (wordmark) Registration No. 477223 in Class 3 Date of Registration 20.08.1987 Goods Perfumery preparations, essentials oils, cosmetics, preparation for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, nonmedicated preparations for the care and the beauty of the hair, nonmedicated preparation for the care and the beauty of skin, toilet soaps, dentifrices, sun tan preparations, personal deodorants.
Renewal Status Renewed, legal, valid and subsisting
4. Plaintiff's trademark L'OREAL have acquired enviable and enduring goodwill, reputation and users, which the plaintiff owns, in the international markets including India and is one of the oldest, most prominent and valuable trade mark/trade name of the plaintiff. Plaintiff invested heavily in resarch and development and its products are known for their highest standards of quality, safety etc and are recognized, demanded, sold and traded world over with reference to its said trademark/trade name. Plaintiff is carrying business in Delhi TM No.28/16 Page 6 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr also. Details of its dealers/special agents and C & FA agents in Delhi and adjoining areas are as under: Dealers/Special Agents S. No Dealer/Agent Name Address
a) Anand Enterprises 136, Gautam Nagar, New Delhi110016
b) Kwality Enterprises 4/47, Roop Nagar, New Delhi110007
c) Kapoor Agency C2/22, Janak Puri, New Delhi110058
d) Pankaj Store X81, West Patel Nagar, New Delhi110008
e) GROP Enterprises B94, Main Matiala Road, Uttam Nagar, New Delhi C & FA Address (Clearing and forwarding Agents)
a) Navbharat Enterprises Khasra no.70, Village, Saidulajab, Near Gyan Jyoti Vidya Niketan Saidulajab, New Delhi110016
b) Sahi Enterprises Begumpur Kotla Road, Behrampur Indl. Estate, 38th TM No.28/16 Page 7 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr KM Mile Stone, Jaipur Highway, Gurgaon
e) Croxley Distributors D7, Meerut Road, Industrial Pvt Ltd. Ghaziabad
5. Defendants are trading in cosmetics, toiletries and other allied goods. The defendants adopted and started using the trademark L'OREAL with all its essential features including artistic features which was noticed by the plaintiff sometime in June, 2010 in the markets of Delhi. When the plaintiffs made an inquiry in the market where products of defendants were found being sold in June, 2010, it was reveled that the defendants had started using the impugned trademark just about a month back i.e. May, 2010. Defendants are carrying impugned activities under the impugned trademark in a clandestine and surreptitious manner from their respective shops/premises and are having godowns where the impugned goods have been stocked. Defendants are not only making the retail sales but are also supplying the impugned goods bearing the impugned trademarks to various other dealers/shopkeepers/retailers in Delhi including South Delhi without issuing formal sale bills.
TM No.28/16 Page 8 of 20M/s L'oreal vs. Gupta Cosmetic & Anr Hence, plaintiff instituted the present suit seeking following reliefs: "(a) for a decree of permanent injunction restraing the defendants by themselves as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockiest 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 impugned trademark L'OREAL with or without the word Paris or any other word/mark which may be identical with and/or deceptively similar word/mark to the plaintiffs said trade mark/label/trade name/Copyright in L'oreal in relation to its impugned goods and business of cosmetics and other related/allied products and from doing any other acts or deeds amounting to or likely to;
(i) Infringement of plaintiffs aforesaid registered trademark L'OREAL;
(ii) Passing off and violation of the plaintiff's rights in the plaintiff's said trade mark L'OREAL;
(iii) Violation of plaintiff's proprietary rights in its trade name i.e. L'OREAL;
(iv) Infringement of plaintiff's copyrights in its L'OREAL Label.
(b) Restraining the defendants from disposing off or dealing with their assets including their premises at the addresses mentioned in the memo of parties and their stockintrade or any other assets as may be brought to the notice of the Hon'ble Court during the course of the proceedings and on the defendants disclosure thereof and which the defendants are called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135(2)(c) of Trademarks Act, 1999 as it could adversely effect the plaintiff's ability to recover the costs and pecuniary reliefs thereon.
(c) for an order for delivery up of all the impugned finished TM No.28/16 Page 9 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr and unfinished materials bearing the impugned and violative trademark L'OREAL or any other word/mark which may be identical with or deceptively similar to the plaintiff's said trademark/trade name L'OREAL including its blocks, labels, display boards, sign boards, trade literatures and goods etc to the plaintiff for the purpose of destruction and erasure.
(d) for an order for rendition of accounts of profits earned by all the defendants by their impugned illegal trade activities and for a decree of the amount so ascertained on such rendition of accounts.
(e) for an order for cost of proceedings, and
(f) for such other and further order (s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
6. Interim injunction was granted in favour of the plaintiff on 02.07.2010 and a local commissioner was appointed. Report of the local commissioner is on record. Local commissioner seized only one sample carrying infringed trademark and same was handed over to the plaintiff on superdari, as appears from the report dated 13.09.2010. It was reported by the learned local commissioner that the defendants had hidden the remaining goods taking benefit of rush on the spot.
7. Summons of the suit were issued to the defendants. Both the defendants filed separate written statements. Defendant no.1 averred that it does not deal in the goods being TM No.28/16 Page 10 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr manufactured and marketed by the plaintiff and therefore learned local commissioner has not seized any infringing article from the premises of the defendant no.1. It is stated that defendant no.1 has not traded or had any business activity qua the products of the plaintiff and that it have not adopted the mark or copyright of the plaintiff. Plaintiff has not valued the suit properly for the purpose of jurisdiction. The suit is also without any cause of action and is liable to be dismissed.
8. Defendant no.2 has stated that it is selling the original products of L'OREAL. It is not the manufacturer of alleged counterfeit goods, neither it is dealing with the same. It is also not even claiming any proprietary rights over the trademark of the plaintiff. It is also claimed that defendant no.2 is purchasing goods of plaintiff through genuine sources.
9. In replication, plaintiff denied the contents of written statement and reiterated the plaint.
10. The issue of territorial jurisdiction raised by the defendants was held in favour of the plaintiff by the learned TM No.28/16 Page 11 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr predecessor court vide order dated 28.02.2013.
11. Defendants stopped appearing during further proceedings and were proceeded exparte vide order dated 25.10.2013.
12. Plaintiff filed evidence affidavit of Smt. Surabhi Bansal, AR of the plaintiff company. Vide order dated 25.10.2016, plaintiffs were exempted from tendering the said affidavit in evidence in view of judgment of Hon'ble High Court in CS (OS) No.460 of 2004 titled as Glaxosmithkline Pharmaceuticals Ltd vs Theodar Laboratories Pvt Ltd and in CS (OS) No. 2248/2007 titled as M/s Ecolab Inc. vs M/s Eaco Labs Ltd.
13. In the evidence affidavit, plaintiff has reiterated the contents of the plaint and has relied upon the following documents:
i) Ex.PW1/1 to Ex.PW1/7:
Trademark/Label of the Plaintiff;
ii) Ex.PW1/8 to Ex.PW1/10:
Trademark/Label of the Defendants;
iii) Ex.PW1/11 (colly): Certificate of registration with respect to Trademark no.165778 in favour of the plaintiff TM No.28/16 Page 12 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr alongwith its advertisement in Trademark Journal and its renewal certificate;
iv) Ex.PW1/12 (colly): Downloads from the plaintiff's website;
v) Ex.PW1/13 (Colly): Copies of advertisement & other sales promotional literature of the plaintiff as published and circulated in India;
vi) Ex.PW1/14 (OSR): Power of Attorney;
vii) Mark.A: Details of worldwide registration/Application of the Plaintiff;
viii) Mark.B (colly): Copies of various trademark applications of the plaintiff as published in the Trademark journals;
ix) Mark C (colly): Statistic/Report showing plaintiff's sales, growth and economic strength;
x) Mark D (colly): Copy of Memorandum and Articles of Association;
xi) Mark E: Copy of license agreement;
xii) Mark F (colly): Invoices of plaintiff's agency Anand Enterprises in South Delhi;
xiii) Ex.PW1/15 (colly): Copy of VAT invoices of the plaintiff issued by South Delhi Division M/s Navbharat Enterprises;
xiv) Mark H: Copy of document in support of address of the plaintiff.
14. PW1 was not cross examined by the defendants and TM No.28/16 Page 13 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr hence, her testimony has gone unrebutted and unchallenged.
15. Defendants did not appear in the witness box to prove that the products seized from them were the original products of the plaintiffs. Plaintiff has specifically stated in the evidence affidavit that the goods seized were counterfeit and did not originate from plaintiff. The defendants have not raised any claim with respect to their proprietary rights over the trademark L'OREAL and admitted that the plaintiff is the proprietor of the said trademark. Defendants did not appear before the court for rendition of accounts also.
16. Plaintiff, during final arguments, relied upon the following judgments of Hon'ble High Court Delhi to contend that compensatory damages can be imposed in cases where defendants have not appeared to render the accounts:
(i) Time Incorporated vs Lokesh Srivastava & Anr 2005 (30) PTC 3 (Del)
(ii) Hero Honda Motors Ltd vs Shree Assuramji Scooters 2006 (32) PTC 117 (Del.)
(iii) Asian Paints (India) Ltd vs Balaji Paints & TM No.28/16 Page 14 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr Checicals & Ors 2006(33) PTC 683 (Del.)
(iv) United Biotech (P) Ltd vs Schon Pharmaceuticals Ltd 2010(42)PTC 103 (Del.)
(v) Jockey International Inc & Anr vs R Chandra Mohan & Ors 2014 (59) PTC 437 (Del.)
(vi) Cartier International AG & Ors vs Gaurav Bhatia & Ors CS (OS) No. 1317/2014 pronounced on 04.01.2016.
17. A perusal of the case laws relied upon by the learned counsel for the plaintiff reflects that in cases where defendants have stayed away from the court and thus did not render their account to enable the court to assess the damages that may be granted to the plaintiff, they shall be liable to pay compensatory damages.
18. In the present case, the impugned trademark being used by the defendants is identical to the trademark of plaintiff. The artistic representation of trademark L'OREAL on the goods of the defendants is also identical. Plaintiff has proved that it is the registered owners of the trademark L'OREAL. Defendants did TM No.28/16 Page 15 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr not raise any claim over the proprietary rights of this trademark. Hence, it is not disputed that plaintiff is proprietor of registered trademark L'OREAL. Since the trademark used by the defendants is identical to the trademark used by the plaintiff, they have infringed the proprietary rights of the plaintiff in the trademark L'OREAL. The documents Mark C(colly), Ex.PW1/12 (colly) and Ex.PW1/13 (colly) establish that plaintiff enjoys transborder reputation and thus is a well known trademark.
19. Defendants did not lead any evidence to prove that the suit was not properly valued for the purpose of court fee. Plaintiff has valued the relief of injunction as per the fixed fee prescribed under Section 7 (iv) of the Court Fee Act, 1870. It is thus held that the suit is properly valued for the purpose of court fee.
20. Defendants have infringed the registered trademark of the plaintiffs, thereby infringing the rights of the plaintiffs in terms of Section 29 of the Trademark Act which reads as under: "Infringement of registered trademarks. (1) A TM No.28/16 Page 16 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr 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 is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect to which the trade is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (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 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 cases falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of public.
(4) 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 -
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purpose of this section, a person uses a registered mark, if, in particular, he -
(a) affixes it to goods or the packaging thereof;
TM No.28/16 Page 17 of 20M/s L'oreal vs. Gupta Cosmetic & Anr
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark,or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers, or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, which he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising -
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
21. Defendants have also infringed the copyright of the plaintiff because all the artistic features of mark 'L'OREAL' used by the defendants, are identical too.
22. Since infringement has been established by the plaintiffs, they are entitled to the relief of permanent injunction. The relief of mandatory injunction sought in prayer clause (b) of para no. 33 of the plaint however is prayed only if it was brought to the TM No.28/16 Page 18 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr notice of the Court during course of proceedings that any goods were lying in the premises of the defendants. No such evidence has however been led. Hence, this relief cannot be granted.
23. Defendants did not appear before the court to render their accounts and hence are liable to pay compensatory damages to the plaintiff in view of various judgments of Hon'ble High Court relied upon by the plaintiff, as referred in para no 16 above. Considering that the trademark L'OREAL is a well known, reputed trademark globally, it is held that plaintiff is entitled to compensatory damages to the tune of Rs.3 lacs from the defendants.
Relief
24. Accordingly, the suit is decreed exparte in favour of the plaintiff and against the defendants. Defendants by themselves as also through their individual proprietors/partners, employees, agents, representatives, distributors, assigns, heirs, successors, stockiest and all others acting for and on their behalf are restrained from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark L'OREAL with or without TM No.28/16 Page 19 of 20 M/s L'oreal vs. Gupta Cosmetic & Anr the word PARIS or any other word/mark which may be identical with and/or deceptively similar word/mark to the plaintiff's said trademark/label/trade name/copyright in L'OREAL in relation to their impugned goods and business of cosmetics and other related/allied products and from doing any other acts or deeds amounting to or likely to infringe/violate the rights of the plaintiff in trademark L'OREAL or pass off the goods of defendants as that of plaintiff, or infringe plaintiff's copyright in its L'OREAL label. Compensatory damages to the tune of Rs.3 lacs is also awarded in favour of the plaintiff and against the defendants, with future interest @ 6% per annum.
25. Costs of the suit too is awarded in favour of the plaintiff and against the defendants.
26. Decree sheet be prepared accordingly.
27. File be consigned to record room.
Announced in the open (JYOTI KLER)
Court on 04.05.2018 ADJ05 (SOUTH DISTRICT)
(Judgment contains 20 pages) SAKET COURTS, NEW DELHI
TM No.28/16 Page 20 of 20