Delhi High Court - Orders
Fontaine Limited vs Vinod Mahadik & Anr on 2 March, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 797/2022
FONTAINE LIMITED ..... Petitioner
Through: Mr. Dushyant K., Mr. Urfee Roomi,
Ms. Janaki Arun, Mr. Anubhav
Chhabra and Mr. Ayush Dixit,
Advocates.
versus
VINOD MAHADIK & ANR. ..... Respondents
Through: Mr. Satya Ranjan Swain, Senior Panel
Counsel with Mr. Sahaj Garg and Mr.
Kautilya Birat, Advocate for R-2.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 02.03.2023
1. Respondent No. 1 could not be served through processor server or other ordinary means as he left his only address available on record. Accordingly substituted service through publication was permitted vide order dated 08th February, 2023. In terms of affidavit of service dated 27th February, 2023, the court notice was published in 'The Hindu" (Mumbai Edition) on 24th February, 2023.
2. Despite the above, there is no appearance on behalf of Respondent No. 1, leaving no option for the Court but to decide the matter ex-parte.
3. Fontaine Limited, the Petitioner, incorporated under laws of United Kingdom, is the successor-in-interest to inter alia, EROL SARL and England-based multi-national perfume house - CREED, and affiliated Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 797/2022 Page 1 of 5 By:SAPNA SETHI Signing Date:07.03.2023 20:16:17 companies. Petitioner is a leading retailer of perfumery and personal care products through various retail stores around the world, including India, and uses numerous marks on and in relation to such products which includes soaps, oils, lotions etc.
4. Petitioner conceived and adopted the mark 'WIND FLOWERS' [hereinafter "Petitioner's mark"] in relation to its perfumes for women in 2019, which were launched worldwide on 16th March, 2022. They designated its international registration, IR No. 1657597 to India under IRDI No. 5607348, covering the goods in Classes 3 and 4, on 31st May, 2022. However, this request has been provisionally refused by Respondent No. 2- Registrar of Trademarks vide communication dated 20th September, 2022 on account of conflicting device mark viz. ' ' registered under no. 2599403 in Class 3 and filed on a 'proposed to be used' basis, in the name of Respondent No. 1-Vinod Mahadik [hereinafter "impugned mark"] which has been entered in the Register of Trade Marks on 31st October, 2016.
5. Petitioner, aggrieved with registration of the impugned mark has invoked Section 47 of Trade Marks Act, 1999 [hereinafter "the Act"] for seeking cancellation/removal of the impugned mark.
6. Petitioner's counsel Mr. Dushyant K. Mahant, contends that upon discovering the impugned mark, an online search was conducted. The search results revealed that Respondent No. 1 was conducting its business under the name, 'Paramount Corporation Private Limited' on e-commerce platform such as www.IndiaMart.com. However, despite efforts to locate it in the Ministry of Corporate Affairs database, no company by that name was Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 797/2022 Page 2 of 5 By:SAPNA SETHI Signing Date:07.03.2023 20:16:17 found . Further online searches uncovered an Instagram page operated by Respondent No. 1, which was selling perfumes and personal care products under the mark 'XAVIER SAVOR'. The Instagram page in question has not been updated and most recent content dates back to the year 2016 and the last post that mentions 'XAVIER SAVOR WINDFLOWER' perfume is of November, 2015. The Instagram page includes links to two websites 'www.paramountcorporation.in' and 'www.xaviersavor.com'. While the former is an inactive website, the latter is available for purchase in the public domain implying that same is not currently operational. Furthermore, Respondent No. 1 also listed products with the impugned mark on other retail e-commerce websites such as Flipkart and ShopClues, but these products are not presently available for sale.
7. In October 2022, Petitioner's Indian representative engaged an investigator to investigate Respondent No. 1's use of the impugned mark. In an affidavit dated 16th December, 2022, investigator reports that he was not able to locate Respondent No. 1 at any of the addresses mentioned in the Trademark Registry's database or on online listings. Additionally, the investigator attempted to call the phone number listed on Respondent No. 1's IndiaMart listing, but found it to be invalid. The investigator also surveyed several general and cosmetics stores in Mumbai and found that the shopkeepers were not familiar with the impugned mark or any company called Paramount Corporation Private Limited.
8. Petitioner has thus invoked Section 47(1)(b) of the Act to remove the impugned mark as it is not in use.
9. Court has heard counsel for Petitioner and perused the documents placed on record. Despite several attempts, the notice could not be served on Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 797/2022 Page 3 of 5 By:SAPNA SETHI Signing Date:07.03.2023 20:16:17 Respondent No. 1 through the usual methods. Eventually, the notice was served through substituted mode. However, even after being served with the notice, Respondent No. 1 has failed to appear before the court. As a result, the court must assume that Respondent No. 1 does not have any intention to contest the ongoing proceedings.
10. Petitioner is aggrieved with the hindrance caused in the registration of their adopted mark 'WIND FLOWER' owing to the conflicting impugned mark. Said mark has not been in use by its proprietor, Respondent No. 1, for a continuous period of over five years since its entry into the register and for three months before the initiation of proceedings for its removal. The non- use is proved on the basis of documents placed on record and affidavits filed along with the petition which in the opinion of the Court, are sufficient to discharge the onus of demonstrating non-use. Now as per Section 47(3) of the Act, burden lies on Respondent No. 1 to demonstrate special circumstances, if any, which prevented him from making use of the impugned mark. The lack of a response from Respondent No. 1 to the petition has left the Court without any evidence to support the possibility of any special circumstances that may have impeded the use of the impugned mark during the relevant period.
11. For the foregoing reasons, petition is allowed with following directions:
(i) Impugned mark's registration viz. no. 2599403 is cancelled and Trade Marks Registry is directed to issue a notification/ order for removal of the same.
(ii) Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 797/2022 Page 4 of 5 By:SAPNA SETHI Signing Date:07.03.2023 20:16:17
12. With the above directions, petition is disposed of.
SANJEEV NARULA, J MARCH 2, 2023 d.negi Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 797/2022 Page 5 of 5 By:SAPNA SETHI Signing Date:07.03.2023 20:16:17