Delhi High Court
M/S Lancome Parfums Et Beaute And Cie vs Mr. Navin And Another on 27 January, 2015
Author: Indermeet Kaur
Bench: Indermeet Kaur
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on :20.01.2015
Judgment delivered on :27.01.2015
+ CS(OS) 474/2009
M/S LANCOME PARFUMS ET BEAUTE AND CIE
..... Plaintiff
Through Mr.S.K.Bansal, Mr. Sajay
Amitahb Suman and Mr. Santosh
Kumar, Advocates.
Versus
MR. NAVIN AND ANOTHER
..... Defendants
Through
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J.
1 Present suit has been filed by M/s Lancome Parfums Et Beaute & Cie, (a company registered and incorporated under the laws of France- CS (OS) No.474/2009 Page 1 of 14 hereinafter referred to as the 'plaintiff') under Sections 134 & 135 of the Trade Marks Act, 1999 for permanent injunction with a prayer to restrain the defendants/their partners/associates/agents (of whom Navin Kumar is stated to be proprietor of M/s Bharti International Cosmetics located at 2422, Gali No.14, Main Road, Bechari City, Shahdara and also functioning from first floor, Rui Mandi, Teliwara, Sadar Bazar, Delhi) from using, selling, soliciting, extorting displaying, advertising or in any manner dealing with the impugned trade mark 'LANCOME' or any other identical or similar mark in relation to business of cosmetics, personal care, beauty products and allied/related products which was infringement of a registered trade mark of the plaintiff, passing of and violation of the plaintiff's right in the said trade mark; infringement and passing off the plaintiff's copyright in its 'LANCOME' label and writing style and the plaintiff's trade dress. Additional prayer for restraining the defendants from disposing of or dealing with its assets of stocks-in-trade as also a prayer for delivering of finished and unfinished trade mark of the plaintiff and violative trade mark 'LANCOME' coupled with the rendition of accounts and a decree of damages in the sum of Rs.20,01,000/- has been made.
CS (OS) No.474/2009 Page 2 of 142 The plaintiff as noted supra is a company incorporated under the laws of France. Mr. Sheet Bansal was its attorney to institute the present suit. The plaintiff company is engaged in the business of manufacture, distribution and trade of a wide range of cosmetics, perfumery, skin care and toilet preparations including perfumes, non medicated toilet waters and perfume, lotions, non-medicated soaps, bath and shower forming compositions and gels, accessories and allied/related products. In the year 1935, the plaintiff had adopted the word/mark 'LANCOME'. It has key and distinguishing features. Over a period of time, the plaintiff has been creating various 'LANCOME' stylized trade mark formats. The plaintiff has been honestly and bonafidely, being using this mark to the exclusion of others and has built up a worldwide and globally valuable trade, goodwill and reputation. Its products have been sold at national and international level in more than 140 countries. Trade mark 'LANCOME' has been registered in India under the Trade Marks Act under the category of goods cosmetics, deodorants for personal use, make-up preparations, sticks and pencils, nail polish and varnishes and other compositions for hair care and hair sprays. Suit was accordingly filed.
CS (OS) No.474/2009 Page 3 of 143 Defendant No.1 Mr. Navin, proprietor of M/s Bharti International Cosmetics is also engaged in the business of trading of cosmetics, personal care and beauty products and other allied/related goods. The trade mark 'LANCOM' having being adopted by the defendants and dealing with the same business is identical and deceptively similar to the plaintiff's registered mark. The defendants have no right to use it in the manner in which they are doing so.
4 The defendants had been served and they had filed a Written Statement. The defence set up by them was twofold. Submission was that a valid license to manufacture cosmetics had been issued by the licensing authority Drugs Control Department, Govt. of NCT of Delhi. This license was being continuously renewed. Their second preliminary objection was that although admittedly they did not have a registered trade-mark but had been using 'LANCOM' for their products since very long and under a valid authority. Suit was liable to be dismissed. 5 Replication was filed reiterating the averments made in the plaint and denying the submissions of the defendants. Submission was that even if the defendants had a license, they were not protected and they CS (OS) No.474/2009 Page 4 of 14 could not infringe upon the registered trade mark of the plaintiff. Without admitting the validity of the license, it was pointed out that even after such a license had been granted to the defendants, it did not permit them to use the trade mark of the plaintiff and such a use amounted to its infringement.
6 On the pleadings of the parties, the following issues were framed on 25.03.2011:-
(i) Whether the plaintiff is the owner and proprietor of the trade mark 'LANCOME'? OPP
(ii) Whether the defendants are infringing the plaintiff's registered trade mark/label 'LANCOME'?OPP
(iii) Whether the defendants are infringing the copyright of the plaintiff in the art work, trade dress and writing style of trade mark/label 'LANCOME', if so to what effect ?OPP
(iv)Whether the defendants are passing off his goods as that of the plaintiff by use of trade mark "LANCOME' (word mark) and CS (OS) No.474/2009 Page 5 of 14 'LANCOME' label, trade dress and domain name, if so to what effect ? OPP
(v) Whether the plaintiff is entitled to permanent injunction as prayed for ? OPP
(vi) Whether the plaintiff is entitled to rendition of accounts, profit or alternatively damages to the tune of Rs.20,01,000/-?
OPP
(vii) Whether the plaintiff is entitled to delivery up of all the impugned finished and unfinished material violative of the trade mark of the plaintiff? OPP 7 The plaintiff was directed to produce its evidence in the first instance. Thereafter, the defendants chose not to appear; they were proceeded ex-parte on 02.4.2013.
8 Arguments have been heard. Record has been perused. 9 Issue-wise findings of this Court read herein as under:- CS (OS) No.474/2009 Page 6 of 14
ISSUE NO.i
10 The plaintiff is the owner and proprietor of the trade mark 'LANCOME'. This has been established by the documentary evidence. This issue is accordingly decided in favour of the plaintiff and against the defendants.
ISSUE NOS. ii TO iv.
11 These issues will be decided by a common discussion. The plaintiff is admittedly the registered owner of the trade mark label 'LANCOME'. This has been established by the documentary evidence. The worldwide registration of the plaintiff stands proved through Ex.PW-1/18 along with pending application seeking a worldwide registration.
12 The plaintiff's trade mark/label and trade dress has been exhibited as Ex.PW-1/1 to Ex.PW-1/7 and photographs of the impugned product of the defendant have been proved as Ex.PW-1/8 to Ex.PW-1/12. A perusal of the documents and comparison between the two clearly shows that the trade mark 'LANCOME' which is the registered trade mark of CS (OS) No.474/2009 Page 7 of 14 the plaintiff, its label and trade dress are almost identical with the impugned products of the defendants who are using the mark 'LANCOM'. The curve over the word 'O' as appearing in the word 'LANCOME', trade mark/trade name of the plaintiff is deceptively similar with the use of the trade mark 'LANCOM' by the defendants. 13 This Court also notes that the plaintiff's trade mark has been registered in Class III which enables him to carry on the business of cosmetics, personal care and beauty care and other allied/related goods. The definition of 'cosmetic' as contained in Oxford dictionary includes sale of lipstick. The report of the Local Commissioner dated 02.04.2009 disclose his visit to the premises of the defendants to seize the offending goods which were deceptively similar to the goods of the plaintiff i.e. lipsticks with the mark LANCOM.
14 A query was put to the leaned counsel for the plaintiff that the goods of the plaintiff being of a high quality were being sold over a counter to reputed customers who would understand the import of the products which they were purchasing and which having being priced at more than Rs. 3000 for a bottle of perfume, 'LANCOM' lipsticks sold CS (OS) No.474/2009 Page 8 of 14 by the defendants which would be at a much cheaper price (although no one has been able to throw light on the price of the lipsticks being sold by the defendants) yet the learned counsel for the plaintiff to support this argument has placed reliance upon the judgment of 2009 (41) PTC 41 (Del) Clinque Laboratoies LLC & Another Vs. Gufic Limited and Anr. to make a submission that such a low price of the goods of the defendants would in fact tarnish the reputation of the plaintiff even further as products of both the parties i.e. of the plaintiff and the defendants which is essentially a cosmetic and which is not necessarily sold over a counter; cosmetics being sold not only over a counter in departmental stores but also in chemists shops and provision stores and the possibility of such goods of the defendant being palmed off and sold as the goods of the plaintiff is extremely high.
15 The Supreme Court on the arguments on price discrimination put forward by the defendant in Wander Ltd. Vs. Antox India (P) Ltd. 1990(2) Arb. L.R. 399 defined passing off action as a species of unfair trade competition or of actionable unfair trading by which one person through deception, attempts to obtain an economic benefit of the CS (OS) No.474/2009 Page 9 of 14 reputation which another has established for himself in a particular trade or business.
16 In 1996 PTC (16) (DB) M/s Hitachi Ltd. Vs. Ajay Kumar Agarwal and Ors. on the phonetic similarity of the words HITACHI and HITAISHI which were pronounced almost in a same away, a Division Bench of this Court had noted that even though the meaning of the two words is different and written in different scripts, both the words have a striking phonetic similarity; it would be difficult for a layman to distinguish between the finer nuances of the sounds produced by the two words while articulating them; applying the test of the ear real danger of deception and confusion being caused by the two words in view of the similarity and affinity of sound having been noted an injunction in favour of the plaintiff had been granted.
17 One defence put forth by the defendant in this case was that he had a valid drug licence which has been issued to him by Drugs Control Department, Government of Delhi. However, as rightly pointed out by learned counsel for the plaintiff that this licence only entitles the defendant to manufacture the drug; it does not in any manner permit the CS (OS) No.474/2009 Page 10 of 14 defendant to infringe upon the trademark of the plaintiff. A Bench of this Court in 2001 PTC 328 (Del) Playboy Enterprises, Inc. Vs. Bharat Malik and Anr. in this context had noted the defence raised by the defendant that his registration under the Press and Registration Books Act, 1867 (PRB Act) protected him was an argument which was repelled. It was held that the provisions of the PRB Act call for an independent action and have no relevance or effect and cannot override or over-step the provisions of Trade Mark and Merchandise Act. The ratio of this judgment applies with the full force in this case. At the cost of repetition, this licence would at best permit the defendant to manufacture the drug; it did not give him a right to infringe the registered trademark of the plaintiff.
18 The advertisements of the plaintiff in reputed magazine Ex.PW- 1/28 & Ex.PW-1/29 also reflect the worldwide and national reputation of the products. Ex.PW-1/20 is glamour magazine circulated in India exhibiting the products of the plaintiff. The sale growth and financial standing of the company has been proved through Ex.PW-1/21. CS (OS) No.474/2009 Page 11 of 14 19 In view of the aforenoted evidence, both oral and documentary collected by the plaintiff and placed on record and the resemblance between the rival trade name and trade mark appears to be wholly similar and an ordinary layman with an average and reasonable intelligence is likely to be confused and deceived into believing that the lipsticks being sold under the trade name 'LANCOM' are in fact the goods of the plaintiff.
20 Issue nos. ii to iv are accordingly decided in favour of the plaintiff and against the defendant.
ISSUE NO.v 21 The suit of the plaintiff is liable to succeed. Accordingly a decree of permanent injunction is passed in favour of the plaintiff and against the defendants restraining them as also their individual proprietors/partners/directors, agents, representatives, distributors, assigns, heirs, successors, stockists and all other 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 trade mark 'LANCOME' or any other identical/deceptively similar CS (OS) No.474/2009 Page 12 of 14 word/mark in relation to their impugned goods and business of cosmetics, personal care, beauty products and allied/related products. 22 This issue is disposed of in the above terms.
ISSUE NOS.vi AND vii 23 The plaintiff has claimed damages. The report of the local commissioner evidenced huge quantities of lipstick having been picked up by the local commissioner from the site i.e. the manufacturing unit of the defendant. In 2006 (33) PTC 683 (Del) Asian Paints (India) Ltd. Vs. Balaji Paints and Chemicals and Ors. where the defendant was ex parte; in a claim for damages a Bench of this Court had granted Rs.3 lacs as damages to the plaintiff including costs of the suit. This Court is inclined to follow the ratio of the said judgment which while granting damages in this context had noted as under:
"The result of the actions of defendants is that plaintiffs, instead of putting its energy for expansion of its business and sale of products, has to use its resources to be spread over a number of litigations to bring to book the offending traders in the market." CS (OS) No.474/2009 Page 13 of 14
24 Plaintiff is accordingly entitled to damages quantified at Rs.1 lac. Cost of the suit also be granted in favour of the plaintiff. He is also entitled to the delivery of the impugned finished and unfinished material lying in the defendant which is violative of the trade mark of the plaintiff.
Issue nos. vi and vii are decided in the above terms. 25 Decree sheet be drawn up.
26 File be consigned to record room.
INDERMEET KAUR, J JANUARY 27, 2015 A CS (OS) No.474/2009 Page 14 of 14