Bombay High Court
Unilever Plc. And Another vs Vikas Sachdeva on 2 November, 2020
Author: K. R. Shriram
Bench: K.R. Shriram
Kiran G.
Jahagirdar IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Digitally signed by
ORDINARY ORIGINAL CIVIL JUTRISDICTION
Kiran G. Jahagirdar
Date: 2020.11.04 INTERIM APPLICATION (L) NO. 5397 OF 2020
18:56:54 +0530
IN
COMMERCIAL IP SUIT (L) NO. 5395 OF 2020
Unilever Plc & Anr. ) ... Plaintiffs
Vs
Vikas Sachdeva ) ... Defendant
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Mr.Vinod Bhagat a/w Ms. Ruchi Agarwal and Ms. Prachi Shah i/b G.S. Hegde and V.A. Bhagat for the Plaintiffs.
None for the Defendant.
....
CORAM : K.R. SHRIRAM J.
DATE : 2.11.2020 P.C.:
1. In the present Interim Application, Applicants/Plaintiffs seek to move for ad-interim reliefs without notice for the reasons set out in paragraph 38 of the plaint. The action in the present suit is for infringement of Plaintiffs' registered trade marks, copyrights combined with an action for passing off. Mr. Bhagat for plaintiffs states that leave petition under Clause XIV of the Letters Patent (Bombay) has been lodged and pending hearing of the leave petition, presently seeks atleast ad-interim reliefs in terms of prayer clauses - (a), (b),
(d) and (e).1
2. According to Plaintiffs, (i)Plaintiff no.1 is one of the oldest multinational company and its products are available in around 190 countries. Plaintiff no.1 owns over 400 brands. According to Plaintiffs, since about the year 1970, Plaintiff no.1 started using an artistic device of the letter "U" placed above the word UNILEVER, as its house mark, on wide variety of goods manufactured, marketed and/or sold by it. Plaintiff no.1 has in the year 2004, adopted a new stylised U logo, a specimen copy of which is annexed at Exhibit A to the plaint in respect of all of its aforementioned goods continuously since the year 2004.
(ii) In para 8 of the plaint, Plaintiffs have relied upon the registration for the U-Logo and copy of the trade mark registration certificate has been appended at Exhibit B to the plaint. Plaintiff no.1's "U" logo has been used in India by Plaintiff no.2 after obtaining a license/permission from Plaintiff no.1. Evidence substantiating the use of the U Logo trade mark is annexed at Exhibit C to the plaint. It is submitted that Plaintiff no.1 has acquired both statutory and common law rights in the said "U" logo, which is very popular and is exclusively associated with Plaintiffs.
(iii) Plaintiff no.2 is a subsidiary of Plaintiff no.1 in India. Plaintiff no.2 is India's largest fast moving consumer goods (FMCG) company, with leadership in Home & Personal Care Products and Foods & Beverages. 2
(iv) In or about the year 1952, the trade mark LAKME was adopted by The Tata Oil Mills Company Limited for use in relation to skin care cosmetic products. By virtue of a series of devolution of rights and vide a Deed of Assignment dated 13.08.1998, the said trade mark LAKME came to be assigned in favor of Plaintiff no.2, who has continuously used the said trade mark since then. Plaintiff no.2 is the subsequent registered proprietor of the trade mark LAKME word per se and of various formative trade marks inter alia containing the word LAKME as its essential and memorable feature and is used in relation to cosmetic preparations. A list disclosing details of Plaintiff no.2's various trade mark registrations as well as copies of the registration certificates are annexed at Exhibit D to the Plaint.
(v) In or about the year 2005, Plaintiff no.2 adopted the trade mark NINE TO FIVE (9 to 5) for use upon and in relation to its specific range of LAKMÉ products. Plaintiff no.2 has secured registrations of the said trade marks LAKME NINE TO FIVE and NINE TO FIVE under the provisions of the Trade Marks Act, 1999, details of such registrations are mentioned in para 18 of the plaint and copies of the registration certificates have been appended at Exhibit E to the Plaint. Plaintiff no.2 had, in and around the year 2011, appointed a designing agency to design a new original artwork to be used in respect of its LAKMÉ NINE TO FIVE (9 to 5) range of cosmetic preparations. The same is annexed at Exhibit G to the plaint. The copyright in the original artistic work was assigned to Plaintiff no.2 as required under the Copyright Act, 1957, by a 3 Deed of Assignment dated 19th March 2019, a copy whereof is appended at Exhibit F to the plaint. Plaintiff no.2 is therefore the owner of the copyright subsisting in the original artistic work of LAKME NINE TO FIVE (9 to 5) cosmetic preparations.
(vi) In or about the year 2011, Plaintiff no.2 coined and adopted the trade mark EYECONIC to be used along with a specific range of LAKME brand products dealing in eye make-up. Para 21 of the plaint sets out Plaintiff' no.2's registration of the trade mark LAKME EYECONIC and copy of its registration certificate is annexed at Exhibit H. In or about the year 2012, Plaintiff no.1 appointed a design agency to design for Plaintiff no.2 a new packaging or trade dress to be used for the LAKME EYECONIC kajal preparations. The same is annexed at Exhibit J to the plaint. The copyright in the original artistic work of the label annexed at Exhibit J to the plaint, was assigned to Plaintiff no.2 by a Deed of Assignment dated 5 thDecember 2012, copy of which is annexed at Exhibit I to the plaint. Plaintiff no.2 has thus claimed to have used its trade mark and the original artistic work of LAKME EYECONIC since the year 2012.
(vii) In the year 2010, Plaintiff no.2 got designed a new logo to be used in respect of its products bearing the trade mark LAKMÉ, through a designing agency. Plaintiff no.2 has annexed at Exhibit K to the plaint, a copy of the Deed of Assignment depicting the logo evidencing assignment of rights from the author in its favour. Plaintiff no.2 has secured registration of this trade mark as well. Copies of the registration certificate and online status appearing 4 on the website of the Trade Marks Registry relating to the said registration is appended at Exhibit L to the plaint.
(viii) Plaintiff no.2 has been selling its goods under its LAKME trade marks bearing the L Logo including LAKME NINE TO FIVE (9 to 5) and LAKME EYECONIC and the original artistic works thereof extensively pan India. The sales and advertisement figures relating to such goods are mentioned in para 26 of the plaint and copies of certificates from its Chartered Accountants in support thereof are annexed at Exhibit M to the plaint. Also annexed at Exhibit N are copies of few sample sales invoices, annual reports and advertisement cuttings of plaintiffs. Plaintiffs have obtained orders against third party infringers and copies of such orders are annexed to the plaint.
(ix) According to Plaintiffs, in the last week of October 2020, Plaintiffs' investigating team came across LAKME, LAKME 9 to 5 and LAKME EYECONIC cosmetic preparations depicted under various pirated artworks, being sold in Delhi by Defendant. Plaintiffs have obtained products from Defendant which mentioned the name and address of Plaintiff no.2 on its outer carton packaging and revealed some very minor visible differences when compared with the Plaintiffs' original LAKME cosmetic preparations. These differences were sufficient to identify the same as a counterfeit product and products being brand extensions of Plaintiff no.2's LAKME range of cosmetic preparations. According to Plaintiffs, the infringing product not only bears identical marks and artworks of the L Logo, LAKME, LAKME 9 to 5 and LAKME EYECONIC on 5 its labels but also bears the name and address of Plaintiff no.2 on its packaging. Investigation conducted by Plaintiffs have revealed that Defendant is clandestinely involved in marketing, distributing and selling cosmetic preparations bearing the LAKME trade marks and artworks/trade dress of LAKME 9 to 5 and LAKME EYECONIC labels, in cash. Plaintiffs have appended at Exhibit P to the plaint, colour representations of Defendant's counterfeit cosmetic preparations bearing the counterfeit marks and pirated artworks as aforementioned along with copy of the investigation report.
(x) According to Plaintiffs, Defendant is, clandestinely conducting its nefarious activities with the object of usurping and/or encashing upon Plaintiffs' registered LAKME trade marks the original artistic works of LAKME 9 to 5 and LAKME EYECONIC labels, to derive illegal gains there from.
3. I have gone through the plaint. Prima facie, Plaintiffs' trade mark LAKME, LAKME Nine to Five (9 to 5) and LAKME EYECONIC are popular and well known trade marks which enjoy enormous goodwill and reputation. The said trade marks and artworks are distinctive of Plaintiffs. Upon perusing the plaint, it does appear that Defendant along with some other persons are infringing upon Plaintiffs' trade marks and copyrights in the artistic works as aforementioned. A cursory look at Defendant's infringing products would be mistaken with the products of Plaintiffs. One cannot make out any difference between the two.
The rival comparisons are produced below:
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Plaintiffs' product Defendant's product
Counterfeit
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4. In the aforesaid circumstances, I find that a strong prima facie case is made out by Plaintiffs for granting ad-interim reliefs. The balance of convenience is also in favor of Plaintiffs. In view of what is stated in paragraph 38 of the Plaint and the foregoing discussion, I am satisfied that giving any notice to Defendant before passing the present order would defeat the very purpose of granting of any ad-interim reliefs. In these circumstances, there shall be an ad-interim order in terms of prayer clauses (a), (b), (d) and (e) except the bracketed portion of the Interim Application which read as under:-
(a) pending the hearing and final disposal of the suit, the Defendant by themselves, their proprietor/partners, servants, agents, distributors, dealers, assignees, stockists and all those connected with the Defendant in their business be restrained by an order and temporary injunction of this Hon'ble Court from trading, marketing, distributing, selling, offering for sale cosmetic preparations and other like goods used in the cosmetic industry, the impugned counterfeit marks or any mark/s identical with and/or deceptively similar to the 8 Plaintiff's trade marks LAKME, LAKME NINE TO FIVE (9 to 5), LAKME EYECONIC, L-Logo and the U-Logo, so as to infringe upon the Plaintiffs' aforesaid trade mark LAKME registered under Nos. 604703, 782606, 2188730, 631532, 744942, 874356, 1330997, 1500385, 1537007, 1678791, 1706559, 1706560, 1745477, 1754505, 1765977, 1950676, 2168389, 2168392, 2225490, 2225491, 2618511, 2618613, 2740511, 2946833, 2947708, 3090122, 3218639, 3406848, and 3707467; the trade mark LAKME NINE TO FIVE (9 to 5) registered under Nos. 1706560 and 2548745; LAKME EYECONIC registered under No. 2227603; L Logo registered under No. 2188730 and the U-Logo registered under No. 1272187 all in class 03, respectively;
(b) pending the hearing and final disposal of the suit, the Defendant by themselves, their proprietor/partners, servants, agents, distributors, dealers, assignees, stockists and all those connected with the Defendant in their business be restrained by an order and temporary injunction of this Hon'ble Court from trading, marketing, distributing, selling, offering for sale cosmetic preparations and other like goods used in the cosmetic industry, the pirated artworks of LAKME (9 to 5) and LAKME EYECONIC (appended at Exhibit P to the Plaint) or any other artwork/s identical with and/or substantially/strikingly similar to the Plaintiffs' original artistic works of LAKME NINE TO FIVE (9 to 5) (appended at Exhibit G to the Plaint), LAKME EYECONIC (appended at Exhibit J to the Plaint) and L-Logo (appended at Exhibit K to the Plaint), so as to infringe upon the Plaintiffs' subsisting copyrights as depicted on their LAKME NINE TO FIVE (9 to 5), L-Logo and LAKME EYECONIC labels;
(d) pending the hearing and final disposal of this suit, the Court Receiver, High Court, Bombay, or such other fit and proper person/s as this Hon'ble Court thinks fit, be appointed Receiver/s with all powers under Order XL Rule 1 and Order XXXIX Rule 7 of the Code of Civil Procedure, 1908, to attend, enter upon with representative(s) of Plaintiffs and search the premises, offices, manufacturing units, factories, shops, warehouses, godowns, houses of the Defendant without notice to the Defendant, other premises wherever the goods viz.
cosmetic preparations and other like goods used in the cosmetic industry, bearing the counterfeit marks or the pirated artworks or any other mark/s or artwork/s identical with and/ or deceptively/substantially similar to the Plaintiff's registered LAKME trade marks, L-Logo and U -Logo and/or the pirated 9 works/trade dress of LAKME NINE TO FIVE (9 to 5), L-Logo and LAKME EYECONIC labels depicted on its label packaging, and/or any other mark/s or artwork/s, as may be found, stocked, sealed or are lying and to break open such locks with police assistance (if needed), make an inventory, seize and take possession/custody thereof by sealing the said goods, handing over possession of such seized goods to the Plaintiff on superdari who would keep such inventory of seized goods at their premises under lock and key and also of all related items such as stationery, production registers, invoices, printing and packaging materials, screens, cylinders, blocks, moulds, dyes, stencils, machinery and master plates used to print the infringing packaging materials, lying at the premises, offices or factories, manufacturing units, godowns, warehouses of the Defendant or his agents or at any other place/s and the Defendant by themselves, their proprietor/partners, servants, employees, representatives be ordered and directed to deliver up all of the aforesaid to the Court Receiver or to such other fit and proper person as this Hon'ble Court thinks fit and the Court Receiver must carry out such search and seizure with local police assistance, if necessary, at no costs;
(e) pending the hearing and final disposal of the suit, this Hon'ble Court be pleased to order and direct the Defendant by themselves, their proprietor/partners from giving and/or making complete disclosure of documents on oath including revealing : (a) the name/s and address/es of the people/parties/entities who are manufacturing the counterfeit goods as complained off, (b) the name/s and address/es of the people/parties to whom such goods have been sold, supplied and/or distributed, (c) the name/s and address/es of the people/entities who place such orders of the impugned goods and other like cosmetic preparations bearing the impugned marks under pirated artworks as complained off hereinabove, [(d) the Defendant's assets; and pursuant to such disclosures being made, the Defendant be restrained from disposing of or dealing with their assets in any manner whatsoever including in a manner which may adversely affect the Plaintiff from recovering damages, costs or other pecuniary remedies from the Defendant as this Hon'ble Court may award];
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5. In view of the current restrictions on travel and on gatherings, some special provisions are necessary. It is not possible for the Court Receiver to travel to Defendant's location. Hence the following directions:
(a) Mr Bhagat has given me the name of advocate from Delhi who can be appointed as Additional Special Receiver to assist the Court Receiver attached to this Court.
(b) For this order, Mr. Amit Mehta, Advocate, is appointed as the Additional Special Receiver to execute the order in terms of prayer clause (d). The fee of the Additional Special Receiver so appointed for executing the commission is fixed at Rs. 25,000/-, per day per venue.
(c) It is made clear that the Court Receiver, High Court, Bombay, also stands appointed, and that the appointment of Mr. Amit Mehta is for convenience.
(d) Mr. Amit Mehta will submit his report by email to the Court Receiver, High Court, Bombay, at the following email ids: [email protected] with a cc to [email protected].
(e) Mr. Amit Mehta contact details are: Mobile: 9871810200 Email id:
[email protected]
6. Execution and Implementation of the order in terms of prayer clause (d): 11
(a) The Additional Special Receiver Mr. Amit Mehta, Advocate, is empowered and authorized, acting on a digitally signed copy of this order, to take the assistance of the local police authorities in the execution of this commission ;
(b) Those police authorities are directed to act on production of a digitally signed copy of this order ;
(c) The Additional Special Receiver is directed to seize and seal all infringing goods bearing the counterfeit marks and artworks, make an inventory and hand over the possession of such seized goods to the Plaintiffs on superdari ;
(d) They may, if necessary, break open any locks with the assistance of the police.
7. This order is not to be uploaded on the server till such time as the Additional Special Receiver completes the execution of his commission.
8. Plaintiffs are to comply with the provisions of Order XXIX Rule 3 of the Code of Civil Procedure, 1908 within 14 working days of the Court Receiver/Additional Special Receivers completing and execution his commission under this order. Plaintiffs are permitted to serve the Plaint, the Interim Application, the Clause XIV petition and all other documents by email and, if possible, in hard copy through Mr. Amit Mehta, who will also file a soft copy of their affidavits (transmitted to this Court's Receiver by email), with a hard copy to follow within two weeks.
9. Liberty to Defendant to apply for variation, modification or recall of this order only after two working days prior written notice to the Advocates for Plaintiffs.
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10. Defendant is to file an affidavit in compliance with the order in terms of prayer clause (e) within three weeks of service being effected, whether by email or in hard copy.
11. Considering that the above matter has been heard via Video Conferencing due to the COVID-19 pandemic, it will not presently be possible to sign a copy of this order. In these circumstances, this order will be digitally signed by the Private Secretary of this Court and all concerned parties are directed to act on the digitally signed copy of this order. They will act on a production of a digitally signed copy sent by fax and/or email.
12. List this Interim Application for further ad-interim reliefs on 14th December 2020.
(K. R. SHRIRAM, J.) 13