Delhi District Court
Hindustan Unilever Ltd vs Black Guard on 9 September, 2015
:1:
IN THE COURT OF MS. PREETI AGRAWAL GUPTA, ADJ
(CENTRAL)10: TIS HAZARI: DELHI.
TM: 21/13
HINDUSTAN UNILEVER LTD.
3rd floor, Palika Bhawan,
Sector13, R.K. Puram,
New Delhi110066 .....Plaintiff
VERSUS
BLACK GUARD, MAHAVIR ENTERPRISES
Ground floor, Ram Rahim Market,
Roi Mandi,
Sadar Bazar, Delhi110006.
Godown at
Ram Rahim Market,
Second and Fourth floor.
Roi Mandi,
Sadar Bazar, Delhi110006. .....Defendant
Date of reservation for order : 07.09.2015
Date of pronouncement of order : 09.09.2015
ORDER ON THE ADINTERIM INJUNCTION PRAYER
1.Vide detailed order, as under, the pending adinterim injunction prayer of the plaintiff for mandatory and permanent injunction shall be dealt with appropriate orders passed in disposal of the interim prayer thereby :2: plaintiff is seeking restrain against the defendant, its associates and agents, officers, employees franchisee, representatives and assigns from using any mark deceptively and confusingly similar to the trademark DOVE and other deceptively and confusingly similar trademarks for soaps, face wash, cosmetics, perfumes and skin care preparation, Sunsilk and other deceptively and confusingly similar trademarks for shampoos, hair conditioner/lotions, soaps and perfumery, Clinic Plus and other deceptively and confusingly similar trademarks for shampoo, hair lotions and perfumed/non perfumed oils. Lakme and other deceptively and confusingly similar trademarks for cosmetics, kajal, nail paint, perfumery and toiletry preparations Fair & Lovely other deceptively and confusingly similar trademarks for cosmetics and toilet preparations other registered marks of the plaintiff.
2. As per the allegations and averments of the plaintiff in the plaint, the plaintiff company is one of the top ranked companies in branded food category and is the proprietor of formidable marks such as 'Taj Mahal, Bru, Kissan and Annapurna. The plaintiff company is also market leader in soaps and detergents through ownership of trademarks such as 'Lux and Surf, hair and skin products Sunsilk and Dove. It is also the second largest manufacture of dental products such as 'Pepsodent and Closeup'. The plaintiff company is the proprietor of several wellknow :3: household and formidable marks such as Rin, Lakme, Vim, Wheel, Sunlight, Clinic Plus, Red Label etc. The plaintiff's flagship products are sold under the trademarks DOVE, Sunsilk, Clinic Plus, Fair & Lovely and Lakme. The plaintiff also possesses rights in the trade dress and the overall get up of DOVE, Sunsilk, Clinic Plus, Fair & Lovely and Lakme products. The plaintiff is the owner/proprietor of the copyright in the original artistic work contained in the labels of aforesaid products in India by virtue of various deeds of copyright assignments.
3. It is the case of the plaintiff that the range of cleansing products of plaintiff bearing the trademark 'DOVE' was initially used for soap bars and that its body washes have been a huge success with its unique formula to actively feed the skin with essential nutrients and Vitamin E. Its range of shampoos and conditioners contains moisturizing milk to hydrate hair without weighing it down. The Dove range of deodorants and antiperspirants deliver powerful protection and soothing skin care the body requires. Its products are offered for sale and are available in more than 80 countries via Unilever Group Companies around the world including India.
4. As regards the trade mark 'Sunsilk', plaintiff company's claims to be leading hair care brand and ranks as one of the AngloDutch conglomerate's billion dollar brands. Sunsilk shampoos, conditioners and :4: other hair care products are sold in 69 countries worldwide and occupy a very important market segment in India too. Through its product 'Clinic Plus' plaintiff company claims that as mother nurtures her child, it is important to nurture their hair as well and Clinic Plus helps them do exactly that. It has got three variants under Strong & Long range of Shampoo Health, Antidandruff and Naturals.
5. It is claimed that 'Fair & Lovely's' skinlightening technology is known to be the best in the world and presently about 250 million consumers across the globe are strongly connected with it as a brand. Plaintiff claims that Fair & Lovely is the world's first fairness cream. It provides visible fairness in a safe and reversible process and it was rated as the Twelfth Most Trusted Brand in India by AC Nielsen ORGMARG. It was identified as a Super Brand in 2004. 'Lakme' continuously innovates to offer a wide range of high performance and world class colour cosmetics, skincare products and beauty salons. As per the case of the plaintiff Lakme was the country's first cosmetic brand to introduce make up to Indian women and takes pride in being the expert on Indian Beauty for over 50 years.
6. It is further the case of the plaintiff that all products under the registered trademarks have extensively been accepted as quality and :5: standard products. Plaintiff had spent huge amount on their extensive advertisement and promotion through magazines, newspapers, journals, television and other mediums. The plaintiff company has time and again sponsored various entertainment events with which the above mentioned trademarks are associated. The goods of the plaintiff bearing trademarks Dove, Sunsilk, Clinic Plus, Fair & Lovely and Lakme have acquired a tremendous and considerable reputation. The excellent reputation and goodwill has thus been acquired by the plaintiff amongst the user/consumers of its products due to strict quality control.
7. The defendant by way of detailed written statement has outrightly denied the allegations and claims of the plaintiff in dealing with the alleged duplicate or spurious products and claims that neither the plaintiff company nor any Local Commissioner had at any point of time came at the shop of the defendant which is located at Ground Floor, Ram Rahim market, Roi Mandi, Sadar Bazar, Delhi110006.
8. It is the case of the defendant that he deals only in lesser known cosmetic products and he has never violated the Intellectual Property Rights of the plaintiff company to any extent. Defendant submits that plaintiff has filed this suit with the motive of capturing the market share of lesser known cosmetic products through pressurizing and illegal means. Defendant :6: claims that the report of the Local Commissioner is suspicious in nature and has filed objections to the report of the Local commissioner . In the entire written statement and submission before the court, it is the case of the defendant that defendant is the Proprietor of M/s Mahavir Enterprises and has been doing business at his shop located at Ground floor, Ram Rahim Market, Roi Mandi, Sadar Bazar, Delhi 110006. It is again stated that the defendant had never violated the Intellectual Property Rights of any product of the plaintiff company at any point of time. It is also submitted that the defendant had never dealt with DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY at any point of time.
9. The court has carefully examine the pleadings in prayer of ad interim injunction, the disputed Local Commissioner's report in light of the arguments addressed by respective counsels for the parties. The court has also examine the applicable law for grant of temporary injunction, particularly in cases involving the questions of Intellectual Property Rights.
10. It is well settled provisions of liability that the plaintiff in order to succeed for grant of adinterim injunction has to establish the trinity principles of strong prima facie case, balance of convenience & irreparable loss & injury which cannot be compensated in monetary terms. Judgments of superior courts in this regard are many, however the principles outlining :7: grant or refusal of interlocutory injunction are culled down by our own Hon'ble High Court in International Hotels Ltd. Vs. NDMC AIR 2001 Delhi 425 as under :
i. Plaintiff has a prima - facie case to go for trial.
ii. Protection is necessary from that species of injury known as irreparable loss before his legal right can be established.
iii. That the mischief of inconvenience is likely to arrive from withholding injunction will be greater that what it is likely to arise from grant of it.
11. These principles apply to Intellectual Property Cases also with a slight modification that in such cases the court has to scrupulously weigh the injury of the plaintiff likely to be prevented as against the possible injury which may occur to the defendant, if injunction is granted against him.
12. It can be further seen from the celebrated Gujrat Bottling Co. Ltd. Vs. Coca Cola Company & Ors. [(1996) (16) PTC 89 (SC)], wherein the Hon'ble Apex Court observed :
".....The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial.:8:
The need for such protection has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weighed need against another and determine where the "balance of convenience" lies' " Prima facie case" means that the Court should be satisfied that there is a serious question to be tried at the hearing, and there is a probability of plaintiff obtaining the relief at the conclusion of the trial on the basis of the material placed before the Court. "
Prima facie case" is a substantial question raised both side which needs investigation and a decision on merits. The Court, at the initial stage, cannot insist upon a full proof case warranting an eventual decree..... fair question is raised for determination, it should be taken that a prima facie case is established. The real thing to be seen is that the Plaintiff's claim is ....... frivolous or vexatious. The purpose is to preserve status quo until the question before the Court is finally disposed of....."
13. The well settled Principle of Law as above elucidated have been examined in the facts of the case before the court. It is not the case before the court that the defendants claim any proprietary right over the claimed trade mark of the plaintiff " DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY". The defendant has, in fact denied user of the said :9: trademark of the plaintiff and has even denied the seizure of the alleged counterfeit goods from his premises, in contradiction to the report of the Local Commissioner. It has been duly considered that the defendant has outrightly denied dealing with alleged products of the plaintiff and claims to be dealing with lesser known cosmetics and toiletry products. The recovery of spurious and substandard products with the alleged deceptively similar trademark of the plaintiff, as per the report of the Local Commissioner, has been outrightly denied and challenged by the defendant as alleged in the Local commissioner's report. The court has also observed that the report of the Local Commissioner which has been filed by the defendant cannot be disposed off at primafacie stage and shall be duly considered after the parties have adduced their respective evidence, at the finality of the suit.
14. Accordingly, without stating anything on merits of the case and without holding any opinion of the court on the alleged recovery of the seized goods as per the report of the Local Commissioner, the court shall primafacie adjudicate upon the grant of adinterim temporary and mandatory injunction, prayed by the plaintiff. It is primafacie shown before the court that the plaintiff is well established market brand in manufacturing and marketing of the cosmetic and toiletry products in the trade name " DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY" and that primafacie the plaintiff has been able to show that the :10: plaintiff's products have unique label, designs, colour combination and display and packaging style so that they are being capable of prominently and uniquely distinguished from other similar products.
15. The Local Commissioner has submitted his report of onspot proceedings dated 20.08.2013 upon execution of local commission whereby an inventory has been submitted reflecting seizure of substantial volume of alleged spurious goods of the plaintiff's trade mark such as FAIR & LOVELY cream, liquid foundation, nail colour, compact etc. The seized goods as per the Local Commissioner have been handed over to one of the employee of the defendant on Superdari. Defendant has outrightly denied the seizure of the alleged spurious products from the premises of the defendant. In any case, as per well settled law, the balance of convenience lies in protecting the Intellectual Property Rights of the plaintiff over the registered trademark " DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY", which are not claimed or denied by the defendant.
16. It is also considered that the balance of convenience lies in favour of the plaintiff and irreparable loss not only in terms of 'loss of Revenue' but also of the 'goodwill and reputation' of the marketable trademark of the plaintiff is likely to be caused, if the defendant is not restrained from selling the duplicate/counterfeit or substandard goods and :11: is allowed to pass off these goods as goods of the plaintiff, thereby affecting the goodwill and reputation to the recognized and distinguishable brand of the plaintiff.
17. Keeping in view the facts and circumstances, interim relief prayed by the plaintiff is allowed. Defendant, its employees, agents,distributors, stockists and assignees are hereby restrained from using the trademark "DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY" or any other identical or deceptively and confusingly similar trademark or their tradename in respect of cosmetics and toiletry products in any manner or in any way indicate the association of their goods with the plaintiff and its products. Accordingly, defendant is restrained from dealing in spurious or counterfeit products DOVE, SUNSILK, CLINIC PLUS, LAKME and FAIR & LOVELY, except by way of sale and purchase of the genuine products manufactured by the plaintiff, through duly authorized agency and against the valid invoices of the plaintiff's company.
18. Nothing stated in this order shall tantamount to expression of opinion of this court upon the merits of the case or any final determination of claims and rights in favour of the plaintiff and against the defendant.
Announced in the open court.
(Preeti Agrawal Gupta) Addl. District Judge (Central)10 Delhi: 09.09.2015