Delhi District Court
L Oreal vs Sahil Collection And Ors on 27 January, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND01-002411-2019
TM NO.11/2020
[OLD NOS. - TM NO.15/2019; &
CS (COMM)/258/2019]
IN THE MATTER OF:-
L'OREAL S.A.
14, RUE ROYALE, 75008
PARIS, FRANCE
Technical Office at:
C-33, First Floor, Above Zodiac Show Room
Opp. PVR Plaza, Connaught Place
New Delhi - 110 001.
...PLAINTIFF
VERSUS
1. Sahil Collection
Through its Proprietors
Sahil Memon,
Mohammad Afaq &
Mansub Ali Kasam Ali Kabiraj
Now at :
Shop No.480, 1st Lane
Inside Crawford Market
Mumbai - 400001, Maharashtra
2. MK Stores
Through its proprietor
Ramzaan Jamsed Alam
Shop No.360, 3rd Line
Inside Crawford Market
Mumbai - 400001, Maharashtra
3. Imran Motiwala
Shop No.484,
Inside Crawford Market
Mumbai - 400001, Maharashtra
TM No. 11/2020 Page 1 of 35
-2-
4. Cosmetic Corner Point
Through its proprietor
Shop No.11, 3rd Lane
Crawford Market
Mumbai - 400001, Maharashtra
...DEFENDANTS
NOTE: The suit qua defendant no.1 was dismissed as
withdrawn, vide order dated 28-11-2024.
Date of Institution : 04-02-2019
Date of reserving judgment : 27-01-2025
Date of pronouncing judgment : 27-01-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999 and Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 05-08-2022 in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
TM No. 11/2020 Page 2 of 35 -3-3. It may also be noted that initially, the suit was filed against the defendants, who were arrayed as 'Ashok Kumar' on the basis of 'John Doe' principle as applicable in India and subsequently, after execution of local commission in pursuant to relevant Court's order(s), the plaintiff got substituted the defendant nos. 1 to 4 in place of previous defendant/Ashok Kumar (John Doe) and placed on record Amended Memo of Parties.
BRIEF FACTS OF THE CASE:
4. The case of the plaintiff, as set out in the plaint, in brief, is as under:-
4.1 It is a company organized and incorporated under the Law of France and got instituted the present suit through constituted attorney, who has been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit. It is stated that the plaintiff is engaged in the business of manufacturing, distribution and sale of a wide range of hair care, skin care, toiletries and beauty products including make-up, preparations, 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, non-medicated preparations for the care and the beauty of the hair, non-
medicated preparations for the care and beauty of the skin, toilet soaps, dentifrices, sun-tan preparations, personal deodorants and accessories TM No. 11/2020 Page 3 of 35 -4- used and other allied/related products [ hereinafter referred to as "the said goods and business"].
4.2 It is averred that ever since its bonafide adoption in or about the first decade of 1900, the plaintiff has been using the mark L'OREAL, , , , and various stylized labels/ word per se over long and continuous period of time as a trade mark, as also an essential part of its trade name [hereinafter referred to as "the said trademarks/ labels L'OREAL (with or without Paris)"] in relation to its said goods and business. Further, it is stated that in addition to its word per se user, the plaintiff over a period of time has also been using its said trade mark in various stylized and artistic formats and labels and which have been created and are being created over a period of time. It is claimed that the word/mark L'OREAL remains a key and material part thereof. The detailed history of the plaintiff are mentioned in Para no. 4 of the plaint.
4.3 It is also claimed that said trade mark(s) L'OREAL is/are registered in India under the provisions of Trade Marks Act, 1999 in favour of the plaintiff in India and same are stated to be valid and subsisting TM No. 11/2020 Page 4 of 35 -5- as on date and details thereof have been given in Para no.7 of the plaint.
4.4 It is also stated that the plaintiff's trademark/label L'OREAL PROFESSIONNEL is very famous and well-known not only amongst consumers but also amongst Salons, make-up stylists etc. The plaintiff has been running technical center under the trademark / logo L'OREAL PROFESSIONNEL, and is providing educational and hairdressing services thereunder. The professional products division of the plaintiff has set up a world-class technical center at New Delhi. L'OREAL PROFESSIONNEL division of the plaintiff has always been stressing on the importance of education and training and to further its vision, has already established five education centers across India for training over 75,000 hairdressers and to enrich Indian hairdressing Industry.
4.5 It is further stated that the plaintiff through predecessors, in the year 1917, also adopted the word/mark MAYBELLINE as a trademark. Since then, over the period of time, the plaintiff has been creating various MAYBELLINE and various other stylized trademarks formats and various MAYBELLINE bearing and formative labels and trade dresses of which the word/mark MAYBELLINE, word per se or stylized is an important, key and distinguishing part. In the year TM No. 11/2020 Page 5 of 35 -6- 2004, the plaintiff started using the mark .
4.6 Further, it is stated that in the year 2008, the plaintiff
adopted the trademark MAYBELLINE THE
COLOSSAL KAJAL and MAYBELLINE THE
COLOSSAL VOLUME EXPRESS and in the year 2009, the plaintiff in relation to its another product Baby Lip Balm, adopted and started using the trademark BABY LIPS with or without conjunction with MAYBELLINE in relation to its said goods and business and started using the same as a word mark and also in an artistic label / stylized form as depicted hereunder:-
TM No. 11/2020 Page 6 of 35 -7-4.7 Further, it is stated that the trade mark MAYBELLINE and MAYBELLINE formative marks including MAYBELLINE THE COLOSSAL, are duly registered in India under the Trade Mark Act, 1999 and details thereof have been given in Para no.11 of the plaint.
4.8 It is also claimed that artwork involved in the plaintiff's various MAYBELLINE stylized & formative/bearing and labels are original artistic works and the plaintiff holds copyright therein. The plaintiff has also taken steps for registration of the artwork of MAYBELLINE THE COLOSSAL KAJAL (Label) under the Copyright Act and in this regard, has filed form T.M 60 for obtaining NOC from the Trade Marks Registry. The plaintiff has also got registered the artwork of BABY LIPS under no. A-120335/2017.
4.9 It is further averred that the plaintiff is also the absolute and global owner and proprietor of the TM No. 11/2020 Page 7 of 35 -8- trade mark GARNIER , on account of prior, honest, bonafide adoption in the year 1904 through its predecessor [and has been acquired in 1966 by the plaintiff] and there has been open, continuous, commercial & exclusive use thereof in relation to the said goods since then up to the present time. [hereinafter referred to as "the said trade mark/ trade name GARNIER"]. It is also claimed that said trade mark GARNIER is also registered under the provisions of Trade Marks Act, 1999 in favour of the plaintiff in India and same is stated to be valid and subsisting as on date and details thereof have been given in Para no.19 of the plaint.
4.10 Further, it is also claimed that the art works involved in the plaintiff's said trade mark/label L'OREAL, L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MAYBELLINE BABY LIPS, GARNIER are original artistic works within the meaning of the Copyright Act, 1957 and the plaintiff holds copyright therein. It is further submitted that the plaintiff's said trade mark/label L'OREAL, L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MAYBELLINE BABY LIPS and TM No. 11/2020 Page 8 of 35 -9- GARNIER are registered in over 100 countries of the world and across all continents and regions.
4.11 The plaintiff has been using the said
trademarks/labels L'OREAL, L'OREAL
PROFESSIONAL, MAYBELLINE, BABY LIPS, MAYBELLINE BABY LIPS and GARNIER ever since their honest and bonafide adoption in relation to its said goods & business, continuously, commercially, openly, & to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof and has built up a worldwide and globally valuable trade, goodwill & reputation thereunder and has acquired proprietary rights therein.
4.12 The plaintiff's said goods and business under its said trademarks/labels as also the goodwill and reputation achieved thereunder, are global in character and extends into India as well. The plaintiff's said goods are sold and traded by the plaintiff directly and through a wide network of its associates, affiliates, subsidiary companies, licensees and through a wide marketing network including through retail, internet and e-commerce.
4.13 Further, it is the case of the plaintiff that the plaintiff has regularly and continuously been promoting its said distinctive trade marks/labels for its products thereunder through extensive advertisements, publicity, promotions and marketing and has been TM No. 11/2020 Page 9 of 35 -10- making research and the plaintiff has been spending enormous amounts of money, efforts, skills and time thereon.The plaintiff has been doing so through various means and modes including through the visual, print and electronic media and all of which have tremendous reach, visibility, distribution, availability and circulation world over including in India.
4.14 Hence, it is stated that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade marks/ labels have become distinctive and have acquired secondary significance with the plaintiff and the plaintiff's said goods and business thereunder. Further, the purchasing public, the trade and industry at large worldwide and in India identify, distinguish and associate the plaintiff's said goods under the said trademarks/labels with the plaintiff and from the plaintiff's source and origin alone and regard them as high quality products exclusively as that of the plaintiff. It is further claimed that the said trademarks/labels are well known trademarks and have acquired enviable reputation and goodwill across the globe including India.
4.15 Further, it is claimed that the plaintiff has a huge turnover against sale of its products under the said trademarks/labels, which runs into Billions of TM No. 11/2020 Page 10 of 35 -11- Euros worldwide. In this regard, it is stated that the consolidated sales of the plaintiff in the year 2017 is about 26,204 Million Euros and market capitalization of plaintiff is 103.7 billion Euros and thus, it is claimed that the business of the plaintiff under the said trademarks/labels has been increasing constantly.
4.16 It is further averred that the plaintiff's said trademarks/ labels as well as the goods and business thereunder have a very strong presence in India. The plaintiff's reputation and goodwill in relation to its said goods & business existed in India from the very beginning and its products as well as information thereon were available to Indians in India & Overseas. The plaintiff's said goods under the said trademarks/labels are now freely and commercially available in India since over three decades and as of now, they are sold in over 300 major towns and cities across India. The plaintiff's said goods and business under the said trademarks/labels are duly manufactured in India through its wholly owned subsidiary M/s L'Oreal India Private Ltd. in a state of art manufacturing plant, in strict compliance with L'Oreal worldwide quality standards, at Chakan, Pune, Maharashtra and is having registered office at A-Wing, 8th Floor, Marathon Futurex, N.M. Joshi Marg, Lower Parel, Mumbai. The plaintiff employs over 400 people across India in its direct facilities.TM No. 11/2020 Page 11 of 35 -12-
4.17 It is further stated that in India, the plaintiff is present through its three divisions namely the Consumer Product Division through which the said trademarks and the goods & business thereunder are being conducted. The other two divisions being the Professional Product Division and the Active Cosmetic Department and each of the divisions is handling various aspects of the plaintiff's business.
It is also stated that the plaintiff has been promoting its products in India, including under the said trademarks/labels through leading brand ambassadors and personalities, which include Ms. Ashwarya Rai, Ms. Sonam Kapoor and Ms. Deepika Padukone.
4.18 The plaintiff invests heavily in R & D and its products are known for their high standards of quality, safety, innovation and reliability and there is an ever-increasing demand thereof. The plaintiff every year devotes about 3% of its turn over to R & D. The plaintiff has invested more than 490 million Euros in R & D. The plaintiff, besides other countries, has research Laboratories in France, U.S.A. and JAPAN, which alone employ over 2350 researchers from over 30 disciplines. The plaintiff collaborates with research units in about 20 countries worldwide in advanced scientific fields. The plaintiff's research is mainly focused on 3 subjects Skin, hair and colour and with clear aim to improve the quality and effectiveness of its TM No. 11/2020 Page 12 of 35 -13- products through scientific innovation and to develop new products. The research findings are published in numerous international scientific journals. In the year 2005, the plaintiff filed for 529 patents. About 94% of the plaintiff's group production plans are certified 9001 version 2000.
4.19 Thus, it is stated that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
4.20 It is alleged that the defendants are engaged in manufacturing, marketing, selling, trading, use of cosmetics and toiletries, hair care products and beauty products including make-up preparations and accessories used thereof and other allied/ related products [hereinafter referred to as the 'impugned goods and business']. It is further alleged that the defendants have adopted and started using the trade marks/ labels viz. L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER and / or other formative trade marks/ labels/ variants [hereinafter referred to TM No. 11/2020 Page 13 of 35 -14- as impugned trade marks/ labels] in relation to their impugned goods and business.
4.21 It is averred that in the last week of January, 2019, the plaintiff came across impugned goods of the defendants under the impugned Trade Marks/Labels in New Delhi Area. Being aggrieved thereby, the plaintiff caused an inquiry in the market, which revealed that the defendants had just about in the month of January 2019, adopted and started using and soliciting the impugned Trade Marks/Labels in relation to their impugned goods in New Delhi Area. The defendants are not only making the retail sales but are also supplying the impugned goods bearing the impugned Trade Mark/Label to various other dealers/shopkeepers/retailers including in New Delhi area, who are making the clandestine and surreptitious sales thereof to the unscrupulous traders and manufacturers of the counterfeit products of the plaintiff under the said Trade Mark/Label in the markets of New Delhi Area viz. Connaught Place, Gole Market, Sarojini Nagar, Naraina and adjoining areas, etc. 4.22 Thus, it is alleged that the defendants have dishonestly and malafidely adopted impugned trademarks/labels L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER, which are visually, TM No. 11/2020 Page 14 of 35 -15- structurally identical and/or deceptively and confusingly similar to the registered trademarks/ labels of the plaintiff's L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER in relation to same goods and business, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendants are not only damaging the reputation and goodwill of the plaintiff company by passing off their substandard products as that of the plaintiff company but are also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
4.23 On these facts and circumstances, the plaintiff has filed the present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendants and all others acting for and on their behalf from using, selling, soliciting, importing (in any manner or from any other port), exporting, displaying, advertising or by any other mode or in any manner using impugned trademarks/labels L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, TM No. 11/2020 Page 15 of 35 -16- MABYLLIINE BABY LIPS, GARNIER or any other word mark/trade marks/label which may be identical with and/or deceptively similar to the registered trademarks/labels of the plaintiff L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER in relation to same goods and business, thereby infringing plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
5. The suit was accompanied with applications - one under Order XXXIX Rules 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and ex parte order for appointment of local commissioner to visit and search the premises of the defendant. After hearing counsel of the plaintiff, the said applications were allowed, vide common order dated 05-02-2019 passed by Ld. Predecessor of its Court, thereby granting ex parte ad interim injunction in favour of the plaintiff and against the defendant and Local Commissioner was appointed to visit and search the premises of the defendant with certain conditions as mentioned therein. Subsequent thereto, an application u/s 151 CPC was moved on behalf of plaintiff seeking direction to Ld. Local Commissioner to execute the commission at the fresh addresses of the defendant and seeking extension of time for execution of local commission on the premise that the defendants had shifted their premises. The said application was allowed TM No. 11/2020 Page 16 of 35 -17- vide order dated 18-3-2019, passed by Ld. Predecessor of the Court. In pursuance thereof, Ld. Local Commissioner executed the commission in terms of relevant order(s) passed by this Court and filed her detailed report on record.
6. As already noted above, subsequent to execution of local commission, the plaintiff got substituted the name of John Doe entity with the name of the defendants and filed on record Amended Memo of Parties.
7. Despite being served with the summons of suit, none had appeared on behalf of defendant nos. 2 to 4 and consequently, they were proceeded against ex parte, vide order dated 23-1-2020, passed by Ld. Predecessor of the Court.
8. At this stage, it is worthwhile to note here that due to outbreak of Covid-19 pandemic, the matter got adjourned en bloc in view of the directions of Hon'ble Delhi High Court and Ld. Principal District & Sessions Judge, PHC, New Delhi. Subsequently, the matter was taken up for hearing through virtual mode/ hybrid mode, in pursuant to further directions of Hon'ble Delhi High Court and Ld. Principal District & Sessions Judge, PHC, New Delhi.
9. It may also be noted here that on statement of counsel of plaintiff, the suit was permitted to be withdrawn against defendant no.1, vide order dated 28-11-2024, passed by this Court.
TM No. 11/2020 Page 17 of 35 -18-10. In support of its case, the plaintiff has examined only one witness i.e. its AR namely Sh. Pankaj Pahuja as PW1. He led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and has relied on the following documents:-
Srl.no Document/Particulars Exhibit(s)
1. Copy of Extarcts from the Ex. PW1/1 Commercial Trade Register of France.
2. Copy of Power of Attorney dated Mark A 09.08.2022 in favour of AR of Plaintiff Sh. Pankaj Pahuja.
3. Authorization dated 10.06.2021. Mark B
4. Annual report of plaintiff company. Ex. PW1/4
5. Trade Mark application no. 165778. Ex. PW1/5
6. Trade Mark application no. 473298. Ex. PW1/6
7. Trade Mark application no. 477223. Ex. PW1/7
8. Trade Mark application no. Ex. PW1/8 1493028.
9. Trade Mark application no. Ex. PW1/9 1493024.
10. Trade Mark application Ex. PW1/10 no.1832961.
11. Trade Mark application Ex. PW1/11 no.1714865.TM No. 11/2020 Page 18 of 35 -19-
Srl.no Document/Particulars Exhibit(s)
12. Trade Mark application Ex. PW1/12 no.1778491.
13. Trade Mark application Ex. PW1/13 no.1832958.
14. Trade Mark application Ex. PW1/14 no.1836274.
15. Trade Mark application Ex. PW1/15 no.1887201.
16. Trade Mark application Ex. PW1/16 no.2251084.
17. Trade Mark application no. Ex. PW1/17 1335359.
18. Copy of plaintiff's advertisements Ex. PW1/18 for the L'OREAL products. (Colly)
19. Report of Ld. Local Commissioner. Ex. PW1/19
20. Affidavit under Section 65B of Ex. PW1/B Indian Evidence Act.
11. On statement of counsel of the plaintiff, the ex parte evidence of the plaintiff was closed on 15-01-2025. After closure of PE, ex parte final arguments were heard.
12. It may be noted here that during the course of final arguments, AR of plaintiff made statement to give up the reliefs as prayed in Prayer Clause nos. 46(b) and 46(d) of the plaint regarding restraining the defendants [defendant nos. 2 to 4] from disposing off or dealing with their assets TM No. 11/2020 Page 19 of 35 -20- and rendition of accounts of profits respectively. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 15-01-2025.
13. I have already heard Ld. counsel of the plaintiff. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
ARGUMENTS OF THE PLAINTIFF:
14. In support of his case, Ld. Counsel of plaintiff has advanced the following arguments:-
14.1 The entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendant nos. 2 to 4 and therefore, the plaintiff is entitled to the decree, as prayed for. In support of his submissions, Ld. Counsel also relied upon the documents [Ex.PW1/1, Ex.PW1/4 to Ex.PW1/19 and Ex.PW1/B, as also Mark A and Mark B.] 14.2 Further, the trademarks/labels L'OREAL (with or without the word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER are well known trademarks/ labels of the plaintiff and are registered in India under the provisions of Trade Marks Act in favour of the plaintiff, which are valid and subsisting till date.
14.3 Further, the art works involved in the said trademarks/ labels L'OREAL (with or without the TM No. 11/2020 Page 20 of 35 -21- word 'PARIS'), L'OREAL PROFESSIONAL, MAYBELLINE, BABY LIPS, MABYLLIINE BABY LIPS, GARNIER are original artistic works and the plaintiff holds copyright therein.
14.4 Further, the plaintiff spends huge amount of money in advertising and promotion of its products under the said trade marks /labels and thus, said marks enjoy a huge goodwill and reputation in business community and amongst public in general in India and across the world.
14.5 Ld. Local Commissioner, while executing the commission in terms of the orders passed by this Court, had found certain infringed goods from the premises of the defendants, which establishes that the defendants were involved in the illegal activities, for which he has relied upon the report filed by Ld. Local Commissioner.
14.6 Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose,he also relied upon judgment of our own Hon'ble High Court in case titled as " M L Brother LLP v. Mahesh Kumar Bhrualal Tanna" [CS (COMM) 126/2022, decided on 12th May, 2022].
14.7 Further, the use of impugned trade marks/labels as adopted by the defendants, which are identical and/ or confusingly or deceptively similar to the registered trademarks of the plaintiff, not only TM No. 11/2020 Page 21 of 35 -22- amount to committing fraud upon the plaintiff but also upon the unwary general public, due to which the plaintiff suffer huge monetary loss and its goodwill and reputation are also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendants, thereby restraining the defendants and all others acting for and on their behalf from using the said impugned trade-marks/ labels.
ANALYSIS & CONCLUSION:
15. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION:
16. Firstly, as regards the jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendants are making clandestine and surreptitious sales, offering for sale, and are also supplying, purveying, displaying, and soliciting, have intention to sell their impugned goods and business under the impugned trade mark/label in New Delhi Area viz. Connaught Place, Gole Market, Sarojini Nagar, Naraina and adjoining areas, etc. and thus, the defendants are committing the impugned acts of infringement and passing-off in the markets of New Delhi Area viz. Connaught Place, Gole Market, Sarojini Nagar, Naraina and adjoining areas etc. situated within the jurisdiction of this Court by selling, soliciting, trade, TM No. 11/2020 Page 22 of 35 -23- distribution, and marketing networks in relation to the impugned goods under the impugned trademark/label. Further, it is stated that the dynamic effects of the defendants' activities are being felt in the markets of New Delhi, which falls within the territorial jurisdiction of this Court and thus, it is contended that whole or part cause of action has arisen within the territorial jurisdiction of this Court within the meaning of S. 20 CPC.
17. Further, it is contended that the plaintiff is also carrying out its said business under the said trademark/label through its dealers/distributors within the territorial jurisdiction of this Court.The goods of the plaintiff are also sold, purchased, available and delivered through online marketplaces like Flipkart and Amazon etc., which are interactive in nature and freely accessible within the jurisdiction of this Court. Thus, it is contended that this Court further has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
18. The PW1 has proved copy of plaintiff's advertisements for the L'Oreal Products as Ex.PW-1/18 (Colly.), which shows, inter alia that the goods of the plaintiff bearing trade marks Baby Lips, Colossal kajal maybelline, L'oreal and Garnier are also sold, purchased, available and delivered through Amazon, which are interactive in nature and freely accessible within the jurisdiction of this Court.
TM No. 11/2020 Page 23 of 35 -24-19. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendants have neither filed written statement, nor have chosen to cross-examine PW1.
20. Therefore, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr." reported as 2009 SCC OnLine Del 3780;
"World Wrestling Entertainment, Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment of the plaintiff' goods under the trademarks / labels within the territorial jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.
21. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that at least part of cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has territorial jurisdiction to try and entertain the suit.
TM No. 11/2020 Page 24 of 35 -25-PERMANENT INJUNCTION:
22. Hon'ble Supreme Court in the case titled as " Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant is identical with the goods or services covered by registered trade mark, the Court shall presume that is likely to cause confusion on the part of the public.
45. It could thus be seen that its Court has pointed out the distinction between the causes of action and right to relief in sequitor for passing off and for infringement of registered trademark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of its own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff has been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers its goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would TM No. 11/2020 Page 25 of 35 -26- be immaterial in case of infringement of the trade mark, whereas in the case of a passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish its goods from those of the plaintiff.
47. It could thus be seen that its Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff' registered trade mark. It has further been held that though the get up of the defendant' goods may be so different from the plaintiff' goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that defendant is improperly using the plaintiff' mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases its Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant' trade mark is identical with the plaintiff' trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
23. Further, our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiff, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of its comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiff, as would be remembered by persons possessed of an average memory with its usual TM No. 11/2020 Page 26 of 35 -27- imperfections. On the touchstone of its query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of its registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya (Para-7).
24. In view of above law, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on the identical lines of averments made in the plaint and has proved various documents, as already referred to above.
25. In the case titled as "Amrish Agarwal Vs. M/s Venus Home Appliances Pvt. Ltd" in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was, inter alia, directed that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of its judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest TM No. 11/2020 Page 27 of 35 -28- status report from the website of the Trade Mark Registry. its should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side"
26. In this case, the plaintiff has relied upon and has filed printout of online status reports from the website of trade mark registry along with copy of Registration Certificates, which are duly proved by PW-1 as Ex.PW1/4 to Ex.PW1/17. As per these documents, it is duly shown that trademarks/ labels are registered as word marks/ labels/ device mark etc. in favour of the plaintiff since long under various classes. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of trade marks/ word marks/ device marks/labels stand renewed and are valid till date.
27. As already noted above, the defendants nos. 2 to 4, despite being served with summons of the suit, chose not to appear before this Court and consequently, they were proceeded against as ex parte. Moreover, none appeared on their behalf to cross-examine PW1.Therefore, the entire testimony of PW-1 has gone un-rebutted, uncontroverted and unchallenged and thus, the case of the plaintiff stood proved against the defendant nos. 2 to 4 on the basis of preponderance of probability. It is duly established on record that said trademarks/ labels are duly registered in TM No. 11/2020 Page 28 of 35 -29- favour of the plaintiff and also that same are valid and subsisting as on date in favour of the plaintiff.
28. Further, the Local Commissioner had also found infringed goods bearing impugned trademarks/labels from the premises of the said defendants at the time of execution of commission. Local Commissioners' Report, as available on record, would reveal that the defendant nos. 2 to 4 were either present or subsequently joined the commission executed at their respective premises.
29. As per Inventory List as avilable on record, Impugned goods - (approx. 136) bearing impugned trade mark/ labels L'OREAL PARIS, and L'OREAL PROFESSIONAL PARIS were recovered from shop no.360 which belongs to defendant no.2. Further, as per report, the owner of shop no. 360 was not found present at the shop no.360, however, Sh. Jamshed, whose number was given on the visiting card, answered the call and reached at the shop.
30. Further, as per said report, impugned goods i.e. 2 pieces bearing the impugned trade mark/ label MAYBELLINE COLOSSAL KAJAL were recorded from the shop no.484, which belongs to defendant no.3. The shop was closed and after imaging around the owner, Mr. Imran Motiwala came to the shop.
31. Further, as per said report, infringed goods i.e. accord parfait (piece1) bearing impugned trade mark/ labels L'OREAL PARIS was recovered from Shop No.11, which TM No. 11/2020 Page 29 of 35 -30- belongs to defendant no.4. Mr. Alam was found present at the shop.
32. Thus, it is shown that the premises were searched in the presence of defendant nos. 2 to 4 and infringed goods were seized from the premises of the defendants.The seized infringed goods bearing impugned trademarks/labels were handed over to the defendants, in terms of relevant order, on superdari.
33. Since, the commission was executed in the presence of the defendant nos. 2 to 4, it cannot be believed that they were not having any knowledge of proceedings going on before this Court and the orders passed therein. Despite that, they chose not to appear before this Court and to contest the present suit and the report of Ld. Local Commissioner also remained uncontroverted and unchallenged.
34. In totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant nos. 2 to 4 were manufacturing, stocking, distributing and selling goods bearing falsified trademark /trade name/ labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL which are deceptively and confusingly similar to the plaintiff' registered trade marks/ labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL and therefore, trademarks and copyright of plaintiff company are required to be TM No. 11/2020 Page 30 of 35 -31- protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction, whereby the defendants are liable be restrained from using trade marks / labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff' said trade marks/ labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL in relation to similar goods, thereby infringing plaintiff' registered trademark, copyright and from passing off their products as that of the plaintiff.
DELIVERY UP:
35. As already discussed above, the infringed goods bearing falsified trademark/logo of plaintiff were seized by Local Commissioner and were returned to the defendants on superdari. Therefore, the defendant nos. 2 to 4 are directed to delivery up all above seized infringed goods, besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/label to the plaintiff for the purpose of destruction and erasure.
DAMAGES
36. Ld. Counsel of plaintiff submitted that punitive damages may be awarded in favour of the plaintiff and against the defendants.
37. Although, the plaintiff has argued for award of punitive damages, yet, on bare perusal of plaint, it is apparent that TM No. 11/2020 Page 31 of 35 -32- no such relief regarding award of damages is claimed therein. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network , 2017 SCC Online Delhi 10943, wherein the defendants were ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
38. However, as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited (supra), there is a need to see as to whether the case of plaintiff falls for exemplary damages.
39. As already noted above, the Local Commissioner, while executing the commission, found and seized infringed goods from premises of the defendant nos. 2 to 4 in their presence and handed over the same to them on superdari. It is evident from the said report that the said defendants were stocking and selling/ passing off the infringed goods bearing impugned trade mark L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL as that of the plaintiff' products, thereby causing wrongful loss to plaintiff company and would have earned illegal profit. Further, if the seized infringed goods would have gone to the hands of the consumer/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of TM No. 11/2020 Page 32 of 35 -33- consumer/ general public as infringed goods were of average quality and were not upto the quality which is claimed by the plaintiff company.
40. In the case in hand, the defendant nos. 2 to 4 did not show up and participate in the proceedings in order to deprive the plaintiff to the benefit of rendition of accounts. Accordingly, keeping in view the overall facts and circumstances of the case including the quantum of infringed goods bearing impugned trademarks / labels as found by Ld. Local Commissioner while executing the commission and the relevant averments appearing in Para No.42 of the amended plaint to the effect that the plaintiff came across impugned products of the said defendants under the impugned Trade Mark/Label in New Delhi Area and being aggrieved thereby, the plaintiff caused an inquiry in the market, which revealed that the defendants had just about in the month of January, 2019 adopted and started using and soliciting the impugned Trade Mark/Label in relation to their impugned goods in New Delhi Area, whereas, the present suit has been filed in the first week of February, 2019, the Court is of the opinion that the plaintiff company is entitled to exemplary damages quantified as Rs.1,00,000/- (Rupees One Lakh only) to be jointly recovered from defendant nos. 2 to 4.. It is so ordered accordingly.
RELIEF:
41. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the TM No. 11/2020 Page 33 of 35 -34- basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant nos. 2 to 4 and the following reliefs are granted:-
41.1 Permanent injunction is granted in favour of plaintiff and against the defendant nos. 2 to 4 by themselves, as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from soliciting, networking, importing, exporting, manufacturing, marketing, using, selling, trading, displaying, advertising, purveying, intending to sell/solicit or on online market places or online websites or through social medias or by any other mode or manner dealing in or using the impugned trademarks / labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL or any other word/house mark/ trademark/ label which may be identical with and / or deceptively similar to the plaintiff' said trademarks / labels L'OREAL PARIS, L'OREAL PROFESSIONAL PARIS and MAYBELLINE COLOSSAL KAJAL in relation to its impugned goods and business thereby infringing plaintiff' registered trademarks, copyright and passing off his goods as that of the plaintiff;
41.2 The defendant nos. 2 to 4 are directed to delivery up all seized goods as were seized and handed over to TM No. 11/2020 Page 34 of 35 -35- them by Local Commissioner, which bears the impugned and violative trade marks/ labels of plaintiff, to the plaintiff for the purposes of destruction and erasure. Superdarinamas are hereby cancelled;
41.3 The plaintiff is entitled to jointly recover Rs.1,00,000/-[Rupees One Lakh only] from defendant nos. 2 to 4 towards damages; and 41.4 Cost of the suit is also awarded in favour of the plaintiff.
42. Decree sheet be prepared accordingly.
43. File be consigned to Record Room, after due compliance.
Announced in the open Court Digitally signed by VIDYA VIDYA On this 27th January,2025.
PRAKASH PRAKASH Date:
2025.01.27 17:07:59 +0530 (VIDYA PRAKASH) DISTRICT JUDGE (COMMERCIAL)-02 PATIALA HOUSE COURTS, NEW DELHI TM No. 11/2020 Page 35 of 35