Delhi District Court
L Oreal vs Anup Jain on 30 April, 2025
IN THE COURT OF SH. HERVINDER SINGH JOHAL:
DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.327/2021
CNR NO.DLND01-014831-2017
IN THE MATTER OF :
M/S L'OREAL
14, RUE ROYALE, 75008
PARIS, FRANCE
TECHNICAL OFFICE AT:
C-33, FIRST FLOOR,
ABOVE ZODIAC SHOWROOM,
OPP. PVR PLAZA, CONNAUGHT PLACE,
NEW DELHI
....PLAINTIFF
VERSUS
1. ANUP JAIN
OWNER OF LAHORE SHOP (S.K. TRADERS)
5092, RUI MANDI,
ANAJ MANDI,
SADAR BAZAR
DELHI - 06
2. RAJESH AGRAWAL
OWNER OF SAI IMPEX,
5083-84, 3RD FLOOR, RUI MANDI,
HANUMAN MANDIR KE SAMNE WALI GALI,
SADAR BAZAR, DELHI - 06
....DEFENDANTS
DATE OF INSTITUTION OF SUIT : 10.11.2017
DATE OF ARGUMENTS : 28.04.2025
DATE OF JUDGMENT : 30.04.2025
DECISION : SUIT DECREED
TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 1 of 27
JUDGMENT
1. Plaintiff has instituted the present suit under Section 134 & 135 of Trade Mark Act, 1999 and Section 55 of Copyright Act, 1957 seeking permanent injunction, restraining infringement, passing off and rendition of accounts etc.
2. The facts, as disclosed in the plaint, are; A) Plaintiff is a company established and incorporated under the laws of France; The suit has been instituted by Ms. Meena Bansal, who has been duly authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff; It has been submitted that plaintiff is engaged in the business of manufacture, distribution and sale of wide range of hair care, skin care, toiletries and beauty products including make-up preparations, perfumery preparation, essential oils, cosmetics, preparations for colouring & bleaching the hair, hair dyes and tints, preparation for waving & setting the hair, shampoos, hair sprays, non-medicated preparations for the care of & beauty of hair, non-medicated preparations for the care & beauty of the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 2 of 27 skin, toilet soaps, dentifrices, sun-tan preparations, personal deodorants & accessories used and other allied/related products (hereinafter referred to as 'the goods');
B) Plaintiff claims itself to be the sole owner and proprietor of word/mark 'L'oreal'; It has been further submitted that plaintiff has been using the said mark uninterruptedly since the year 1910-1915 and the mark has acquired goodwill and reputation worldwide. Plaintiff has applied for the registration of its trade- mark in over 100 countries. Plaintiff's trade-mark and label have been duly registered in India as L'OREAL (word mark), L'OREAL (label), L'OREAL PROGRESS (word mark), L'OREAL PLENTITUDE (word mark); L'OREAL SOLAR EXPERTISE, L'OREAL PREFERENCE, L'OREAL ULTRA VOLUME COLLAGEN, L'OREAL EXTRA VOLUME COLLAGEN, L'OREAL EXTRA VOLUME COLLAGENE, L'OREAL STRAIGHT PERFECT, L'OREAL 5 PROBLEMS 1 SOLUTION, L'OREAL.
C) Plaintiff also owns the word mark MAYBELLINE and it has been using the same since the year 1917. In the year 2008, TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 3 of 27 plaintiff adopted the trade-mark MAYBELLINE THE COLOSSAL KAJAL, MAYBELLINE COLLOSSAL VOLUME EXPRESS, BABY LIPS. The trade-mark MAYBELLINE including MAYBELLINE THE COLOSSAL have been duly registered in India.
D) Besides the above said trade-mark, plaintiff also owns the other well known trade-marks like GARNIER, KERASTESE PARIS, VICHY, FUEL, LANCOME, FRUCTIS, GLAMSHINE, DOUBLE EXTENSION, VOLUME SHOCKING, ELVIVE, ELSEVE, ARMANI MANIA and HYPNOSE etc. These well known trade-marks have also established tremendous goodwill and reputation. Plaintiff has been selling cosmetic products under these trade-marks.
3. Plaintiff filed the suit alleging that some unknown persons (defendant was shown as "Ashok Kumar" following the "John Doe") are engaged in trading of cosmetics and toiletries, hair care products and beauty products including make-up preparation and accessories used therefore and other TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 4 of 27 allied/related products and defendant has adopted and started using the trade-marks/labels viz. (i) L'OREAL, with/or without word PARIS, (ii) MAYBELLINE, (iii) MAYBELLINE THE COLOSSAL KAJAL, (iv) MAYBELLINE THE COLOSSAL VOLUME EXPRESS, (v) MAYBELLINE BABYLIPS COLOR
(vi) MAYBELLINE BABY COLOUR (vii) BABY LIPS (WITH OR WITHOUT MAYBELLINE) and GARNIER, in relation to the impugned goods. It is further alleged that the material with false description and resemblance between the adopted trademarks and label with those of the plaintiff is stated to be so close that it would hardly occur except by deliberate imitation. It is further alleged that products of the defendants are deceptively and confusingly similar to the trade-mark/trade dress of the plaintiff regarding the products as mentioned above and overall get up of the products of the plaintiff's company, and it is causing confusion and deception amongst general public and trade. It is further alleged that defendants are doing it without the consent and approval of the plaintiff and is an infringement of trademark and copyright of the plaintiff and has been causing damage to the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 5 of 27 goodwill of the plaintiff's company as well as monetary loss. Plaintiff further alleged that it is suffering huge loss of business and reputation on account of the sale of the infringed products. Along with the suit, plaintiff filed an applications under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold.
4. The application under Order XXVI Rule 9 CPC was allowed on 13.12.2017 and a Local Commissioner was appointed to carry out the search of the counterfeit products at Building No.516, 5083-84, 5092, 5093 and 5131(No recovery effected), Rui Mandi, Sadar Bazar, Delhi.
5. Local Commissioner inspected shop no.5092, where, two persons namely Sanjeev Jain and Anup Jain met with him, who introduced themselves as owners of the said premises. The local commissioner carried out the search and during the search, 8 boxes of Baby Lip Balm (each box contained 24 pieces and 421 TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 6 of 27 pieces of Babe Lips Lipstick) were recovered and the counterfeit goods. The counterfeit products were seized and the same were handed over to Mr. Anup Jain on Superdari. Local Commissioner prepared the inventory of seized counterfeit goods. Photographs of the spot as well as the seized counterfeit products were taken along with the documents disclosing the identity of defendant no.1/Mr. Anup Jain.
6. Thereafter, Local Commissioner inspected shop no.5131, Rui Mandi, Sadar Bazar, Delhi, where, two persons namely Mr. Naveen Jain and his son Mr. Tarun Jain met with him, who introduced themselves as owners of the said premises. The local commissioner carried out the search and during the search, no products related to said trademark were recovered from their possession.
7. Local Commissioner also inspected shop no.5083-84, Rui Mandi, Sadar Bazar, Delhi, where, an employee of Mr. Rajesh Aggarwal met and after some time, Mr. Rajesh Aggarwal came TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 7 of 27 at the spot, who claimed himself as a owner of the said premise. The Local Commissioner carried out the search and during the search, 1440 pieces of Baby Lipstick, 1000 pieces of baby lips balm, 504 pieces of baby lips tubes, 840 pieces of baby lips lipstick were recovered from the said premises. The counterfeit products were seized and the same were handed over to Mr. Rajesh Aggarwal/defendant no.2 on Superdari. Local Commissioner prepared the inventory of seized counterfeit goods. Photographs of the spot as well as the seized counterfeit products were taken along with the documents disclosing the identity of defendant no.2/Mr. Rajesh Aggarwal.
8. Apart from the afore-said inspection, Local Commissioner also carried out the search of shop no.5092 where two go-downs of defendant no.2/Mr. Rajesh Agarwal were inspected and during the search, 2880 Baby Lips Balm were recovered. The counterfeit products were seized and the same were handed over to Mr. Rajesh Aggarwal on Superdari. Local Commissioner prepared the inventory of seized counterfeit goods. Photographs TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 8 of 27 of the spot as well as the seized counterfeit products were taken along with the documents disclosing the identity of defendant no.2/Mr. Rajesh Aggarwal.
9. The Local Commissioner submitted his report in the court. On an application filed by the plaintiff, the names of defendants were substituted in the plaint. Defendant no.1 & 2 contested the case by filing their separate written statements, wherein, they have taken similar objections. They submitted that the present suit is liable to be dismissed as no cause of action arose. They have also submitted that the suit is also liable to be dismissed on account of non-joinder and mis-joinder of necessary party. They questioned the territorial jurisdiction of the court. They mentioned in the written statements that plaintiff cannot get the benefit of the provisions of Section 62(2) of the Copyrights Act and Section 134(2) of the Trademarks Act. They denied the contents of the plaint and mentioned that they have been falsely roped in the litigation. They also denied infringing the trade- mark of the plaintiff. After filing the written statements, TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 9 of 27 numerous opportunities were given to the parties to get the matter settled either through Mediation or amicable settlement, but fruitful purpose has been served and finally, defendant no.1 & 2 abandoned the suit and they were proceeded ex-parte vide order dated 30.01.2025.
10.On the basis of the pleadings of the parties, following issues were settled on 07.12.2022:
i. Whether the present suit is bad for mis-
joinder and non joinder of necessary party ? OPD ii. Whether the plaintiff is the owner of the trademark L'OREAL, MAYBELLINE & GARNIER ? OPP iii. Whether the defendants have infringed trade mark L' OREAL, MAYBELLINE & GARNIER of the plaintiff ? OPP iv. Whether the defendant had been importing and passing off the counterfeit imported goods as goods of the plaintiff ? OPP v. Whether the plaintiff is entitled to a decree of permanent injunction that defendant should be restrained from infringing or passing off the trade mark and trade label of the plaintiff ? OPP vi. Whether the plaintiff is entitled for rendition of accounts as prayed for ? OPP vii. Relief?TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 10 of 27
11. I have gone through the record.
12. One of the major contention raised by the defendant in his written statement is qua territorial jurisdiction of this court. However, pursuant thereto, defendant was proceeded ex-parte. The High Court of Delhi, while dealing with a similar argument on the territorial jurisdiction, observed in the matter of " Burger King Corporation Vs Techchand Shewakramani & Ors." CS (COMM) 919/2016 & CC(COMM) 122/2017 as under;
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade" any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 11 of 27 TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference -
...
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"
13. The court further observed in Burger King's case (supra) that in a suit involving right in a trade-mark, cause of action arises in each and every place where there is any form of use of said mark. The court held that the principles which apply to infringement action to determine use of trade-mark would equally apply to passing off actions. The court observed that Section 20 of CPC provides that suit could be filed in any place where the cause of action arises and therefore, the place where the trade-mark has been used in any form has jurisdiction and the suit can be filed in the court having territorial jurisdiction over the said place. In view of this clear and categorical observation, the submissions that the court lacks territorial jurisdiction needs TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 12 of 27 to be rejected. Plaintiff has submitted that defendant has been storing the counterfeit products at various locations in Delhi and the counterfeit goods are being sold to various customers in New Delhi. In view of this, the court in New Delhi has the territorial jurisdiction to try and entertain the present suit.
14. Counsel for plaintiff submitted that defendants were found in possession of counterfeit products. He has submitted that the counterfeit products were meant to be sold and passed off as the products of the plaintiff. He has mentioned that plaintiff's claim stands established and the suit may be decreed.
15.The High Court of Delhi observed in the matter of "Indian Performing Rights Society Ltd. Vs Gauhati Town Club"
MANU/DE/0582/2013 that where the defendant is ex-parte and the material before the court is sufficient to allow the claim of the plaintiff, the time of the court should not be wasted in directing ex-parte evidence to be recorded which mostly is nothing but repetition of the contents of the plaint. This was a TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 13 of 27 suit wherein plaintiff has claimed infringement of a registered trade-mark and violation of its copyright by the defendant as well as passing off the goods. In the matter, the court relied on the report of the Local Commissioner as well as other material placed on record and decreed the suit without requiring the plaintiff to lead further evidence. Similar view was taken by the court in the matter of "United Coffee House Vs Raghav Kalra & Anr." 2013 SCC OnLine Del 2133 and "S.Oliver Bernd Freier Gmbh & Company KG Vs Jaikara Apparels & Anr." 2014 SCC OnLine 2686.
16.Relying upon the rationale of the judgments given in Disney Enterprises Inc.'s case (supra) and S.Oliver Bernd Freier Gmbh & Company KG's case (supra), the High Court of Delhi decreed a trade-mark suit for infringement in the matter of "Imagine Marketing Pvt. Ltd. Vs Green Accessories" 2022 SCC OnLine Del 805 with following observations:
"8. Insofar as Defendant No.6 is concerned, the Local Commissioner had visited the premises bearing the address M/s. Shree Balaji Accessories, Building No.2827, Ground Floor, TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 14 of 27 Gali No.8, Opposite Max Plaza, Beadonpura, Karol Bagh, New Delhi-110005 and met a few employees, as also, Mr. Dinesh, who claim to be the Manager of the Defendant No.6-Shop. Various goods bearing the Plaintiff's mark 'BOAT' were found at the said premises. A total of more than 120 pieces of Bluetooth headsets, Wireless Headsets, Earphones, Wireless Earphones, Portable Speakers and packaging material were also found. The same were seized by the Local Commissioner.
9. From the Local Commissioners' reports, and the pleadings on record it is clear that the Defendants are engaged in manufacturing or selling or offering for sale various electronic or electric products bearing the mark 'BOAT' as also the logos thereof. The Defendants choose not to appear despite having knowledge of the proceedings which are pending before this Court. The Local Commissioners' reports along with the evidence there of also clearly reveals that the Defendant Nos.1 and 6 were engaged in the sale of counterfeit products.
10. Under these circumstances, following the rationale of the judgment of a ld. Single of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014], no ex parte evidence would be required in this matter. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 15 of 27
3. Though the defendants entered appearance through their counsel on 01.02.2013 but remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex-parte vide order dated 04.10.2013 and the plaintiffs permitted to file affidavits by way of exparte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex-parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd. Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex-parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex-parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint.
11. Thus, the Plaintiff, being the owner of TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 16 of 27 the registered trademark 'BOAT' in various forms, including the logo, is entitled to protection of its rights in the trade mark 'BOAT', as also device mark and the logos thereof. Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 30 (a), (b), and (c) of the amended plaint."
17.Coming to the present matter, although, defendant no.1 & 2 filed their separate written statements but they chose to remain absent during trial and they were proceeded ex-parte. The situation in the present matter is akin to the one in Imagine Marketing Pvt. Ltd.'s case (supra) wherein the ex-parte matter was decreed by the High Court of Delhi without insisting on the plaintiffs to lead evidence. In view of these circumstances, even in the present matter, there is no point in directing the plaintiff to lead ex-parte evidence, which would be nothing but a repetition of the contents of the plaint. The material on record is more than sufficient to adjudicate the present matter.
18.The finding on the issues is as under:
Issue No.1: Whether the present suit is bad for mis-joinder and non-joinder of necessary party ? OPD
19.It is the settled law that the plaintiff is dominus litis of the suit. TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 17 of 27 Plaintiff has to plead for the specific prayer and against the specific party against whom, the relief is sought. Plaintiff is under obligation to establish his case against the defendant so that a decree can be drawn in favour of the plaintiff. Mis-joinder and non-joinder of party is envisaged under Order I Rule 10 of CPC. The necessary party is one whose presence is necessary for just adjudication of the matter and matter cannot be decided in its absence. Coming to the present suit. The present suit has been filed against John Doe since defaulters were not known at the time of filing of suit however subsequent to the report of the local commissioner, the memo of parties is amended and the defendants Sh. Anup Jain and Sh. Rajesh Aggarwal were impleaded as parties.
20.The onus to prove this issue is upon the defendants. Defendant no.1 & 2 have raised an objection of mis-joinder and non-joinder of necessary party, however, they failed to produce any relevant document or lead any evidence in this regard. Such an objection appears to be bald one. Accordingly, issue no.1 is decided against the defendant.
TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 18 of 27Issue No.2: Whether the plaintiff is the proprietor of Trademark L'OREAL?
21.Plaintiff has placed on record the registration certificate of the trademark L'Oreal registered under No.165778 in Class-3 dated 14.09.1954 bearing Certificate no.57236 issued by Registrar of the Trademark. Besides the said registration certificate, plaintiff has also placed on record the copies of other trademark registration certificates of the plaintiff registered under the name of L'Oreal Progress, L'Oreal Plentitude, L'Oreal Solar Expertise, L'Oreal Preference, L'Oreal Ultra Volume Collagen, L'Oreal Extra Volume, L'Oreal Straight Perfect, L'Oreal 5 problems 1 solution etc. in different classes. Plaintiff has also placed on record the copies of other trademark i.e. MAYBELLINE, MAYBELLINE THE COLLOSAL, MAYBELLINE LASTING IMPACT, MAYBELLINE FOREVER LIPCOLOR, MAYBELLINE NON STOP etc. Certificates in Class 3. These certificates demonstrate that plaintiff is the registered owner of the trademark. Thus, it is established that plaintiff is the owner/proprietor of the said trademark. Therefore, issue no.2 is TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 19 of 27 decided in favour of the plaintiff.
Issue No.3: Whether the defendant has infringed trade mark L' OREAL, MAYBELLINE & GARNIER of the plaintiff ? OPP Issue No.4: Whether the defendant had been importing and passing off the counterfeit imported goods as goods of the plaintiff ? OPP Issue No.5: Whether the plaintiff is entitled to a decree of permanent injunction that defendant should be restrained from infringing or passing off the trade mark and trade label of the plaintiff ? OPP Issue No.6: Whether the plaintiff is entitled for rendition of accounts as prayed for? OPP
22.The onus to prove the afore-said issues are upon the plaintiff. Same are taken up together being interconnected. Plaintiff had a legal right to institute a suit for injunction to restrain defendants from manufacturing, storing and selling the counterfeit products bearing its trade-mark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 20 of 27 to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the matter provided under the Act. Section 134 of the Act provides the remedy of filing a suit for infringement of a trademark while Section 125 of the Act describes the relief which may be granted in a suit for infringement or passing off the trademark. Sections 134 & 125 of the Act have been reproduced as under :
134. Suit for infringement, etc., to be instituted before District Court.--
(1)No suit--
(a)for the infringement of a registered trade mark; or
(b)relating to any right in a registered trade mark; or
(c)for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2)For the purpose of clauses (a) and
(b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 21 of 27 the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.--For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user.
125. Application for rectification of register to be made to Appellate Board in certain cases. --
(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 22 of 27 Appellate Board and not to the Registrar.
(2)Subject to the provisions of sub-
section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.
23.Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark is infringed by a person, who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is identical or similar with the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 23 of 27 registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a marks that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark.
24.Now, coming to the aspect whether defendants have infringed the trademark of the plaintiff. In the present matter, there is irrefutable material on record to show that huge quantity of counterfeit products bearing the trade-mark of the plaintiff were recovered from the possession of the defendants. Photographs of the recovered counterfeit products were taken by the Local Commissioner and copies of the same were filed along with the report. I have perused the same. The photographs show that defendant no.1 & 2 have used almost identical mark on the counterfeit goods recovered from their possession. The mark was affixed on the each products, which falls under the category of the same goods which are being manufactured by the plaintiff. Thus, defendant no.1 & 2 not only used the identical mark but TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 24 of 27 also used the mark in respect of identical goods which are being sold by the plaintiff. The products recovered from the possession of defendant no.1 & 2 were certainly meant to be sold in the market for profit. There is sufficient material on record to establish that defendant no.1 & 2 had been using a mark exactly identical to the registered trademark of the plaintiff. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by defendant no.1 & 2.
25.After having gone through the submissions advanced by counsel for the plaintiff and perusal of the record, I find that there is overwhelming evidence to establish the plaintiff's claim. Although, defendant no.1 & 2 claimed in the written statements that plaintiff has concealed and suppressed material facts but not evidence was led to substantiate this version. Accordingly, issue no. 3, 4 & 5 are decided in favour of plaintiff and against the defendant.
TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 25 of 27
26.Now, coming to the aspect if the plaintiff is entitled to a decree of rendition of account. There is no evidence to indicate the quantum of profit made by the defendant no.1 & 2 by selling the counterfeit products of the plaintiff. As far as relief of damages is concerned, it is an admitted position that neither the quantum of damages has been specified nor evidence has been led in that direction. However, in the matter of "Adidas AG Vs Praveen Kumar", CS (Comm.) 1269/2019, decided on 14.05.2019, the High Court of Delhi granted damages after taking note of the report submitted by the Local Commissioner. In the present matter, defendants were found in possession of huge quantity of counterfeit goods/products bearing the trademark/logo of the plaintiff. From the inventory placed on record by the list of inventory filed by the Local Commissioner, it is not possible to make the exact analysis of the profit earned by the defendant no.1 & 2 from selling the counterfeit products, even no cogent evidence is on judicial file to ascertain the damages caused to the plaintiff, therefore, I am not inclined to give damages to the plaintiff. In view of this, the suit stands decreed with the TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 26 of 27 following relief:
i. A decree of permanent injunction against the defendant no.1 & 2 whereby they are restrained for manufacturing, storing and selling the counterfeit products bearing the trade-mark/logo of the plaintiff;
ii. Cost of the suit.
iii. The seized counterfeit products shall be delivered to the plaintiff for destruction.
Decree-sheet be prepared accordingly. File be consigned to Record Room after necessary compliance.
Announced in open Court on 30.04.2025 (Harvinder Singh Johal) District Judge-02 & Waqf Tribunal, New Delhi District, Patiala House Courts, New Delhi/30.04.2025 TM No.327/2021 M/s L'oreal Vs Anup Jain & Anr. Page 27 of 27