Delhi High Court - Orders
Fsn E-Commerce Ventures Limited & Anr vs Pintu Kumar Yadav & Anr on 15 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~44
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 726/2023 & I.A. 20126/2023
FSN E-COMMERCE VENTURES LIMITED
& ANR. ..... Plaintiffs
Through: Mr Saikrishna Rajagopal, Mr Vivek
Ayyagari, Mr Angad S Makkar & Mr
Rishabh Rao, Advs. (M: 9897896284)
versus
PINTU KUMAR YADAV & ANR. ..... Defendants
Through: Mr. Ravi Grover, Adv. for D-1 with
D-1 in person. (M:9041666655)
Mr. Prasanna S., Ms. Swati Arya,
Advs. for D-2 (M. 9910824768)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 15.12.2023
1. This hearing has been done through hybrid mode.
2. Plaintiff No.1- FSN E-Commerce Ventures Ltd. and Plaintiff No.2- Nykaa E-Retail Pvt. Ltd. have filed the present suit seeking protection of their registered Trade Mark 'NYKAA'. The case of the Plaintiffs is that Defendant No.1- Mr. Pintu Kumar Yadav and Defendant No.2- Cosmetify have adopted a deceptively similar mark 'OYKAA' and are unfairly capitalising on the Plaintiffs' goodwill and reputation in an identical field of business, potentially causing confusion among customers.
3. Vide order dated 12th October, 2023, this Court had granted an ex- parte ad-interim injunction in favour of the Plaintiffs in the following terms:
"29. Considering the above position, the Plaintiffs have made out a prima facie case for grant of an ex-CS(COMM) 726/2023 Page 1 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 parte ad-interim injunction. The balance of convenience lies in favour of the Plaintiffs, considering that the products in the present case are cosmetic, healthcare and wellness products, and quality of all such products is of utmost importance. Such products are for personal use of consumers. If the Defendants are not injuncted in the present case, it will cause irreparable loss/ harm not only to the Plaintiffs business but also to the customers using such products who are under the garb that the same is being manufactured by the Plaintiffs.
30. Accordingly, The Defendants and all others acting for or on their behalf are restrained from using the mark/name/logo 'OYKAA' or any other mark which is identical or similar to that of the Plaintiffs' mark/name/logo 'NYKAA' in respect of cosmetic, healthcare products, wellness products, clothing, jewelleries, accessories or any other cognate and allied goods. The website and other online listings shall also be taken down immediately.
31. Insofar as the website www.oykaa.com is concerned, the website shall be placed under lock and suspension by the concerned DNR. If the Defendants do not take down the said website, the Plaintiffs are given the liberty to approach the concerned DNR for locking and suspending the said domain name.
32. The Defendants' products are also listed on third party websites as is evident from the documents placed on record such as India Mart, Amazon and Flipkart. The said directories/ online platforms shall also take down the listings of the Defendants upon receiving the specific URLs by the Plaintiff, if the same are not taken down by the Defendants."
4. Today, Mr. Pintu Kumar Yadav, Defendant No.1, who is the sole proprietor of M/s Alka Enterprises, is present in Court. His statement has been recorded in the Court. Ld. Counsels for the Plaintiff have heard the CS(COMM) 726/2023 Page 2 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 statement of the Defendant. In view of the statement made, ld. Counsel prays that the suit deserves to be decreed. Mr. Saikrishna, ld. Counsel for the Plaintiffs further submits that the mark 'NYKAA' also deserves to be declared as well-known mark.
5. Heard the counsel as also the statement of the Defendant.
6. The case of the Plaintiffs is that the Plaintiffs are engaged in the manufacture, sale and distribution of several cosmetic products including makeup, skincare, haircare, fragrances, bath and body as also clothing, footwear, accessories, jewellery and other wellness products. The Plaintiffs also run an online wellness store since 2012, when they adopted the mark 'NYKAA'. The online platform also showcases and offers for sale various branded cosmetics of third parties such as Lakme, Estee Lauder, Huda Beauty etc.
7. The www.nykaa.com platform which was registered by the Plaintiff No.1 on 5th March, 2012 claims to be one of the most well-known e- commerce platforms with a large range of products especially focusing on products for women, including their own brand products manufactured by them, under various trademarks, including 'NYKAA'. These include skincare products, hair products, personal care and wellness products. The Plaintiffs currently claim to be enjoying market capitalization or 5.25 billion dollars and is one of the well-known companies in India in the cosmetic and wellness sector. The Plaintiffs also have 145 stores which are dedicated for beauty and personal care products and 9 fashion stores across 60 cities in India.
8. The mark 'NYKAA', since adoption in 2012 is stated to have evolved into one of the well-known trademarks in India. The Plaintiffs' claim that CS(COMM) 726/2023 Page 3 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 they have applied for the well-known status, bearing application no.816588 before Trade Mark Registry. The said mark and its distinctive logo are used on the online and offline platforms and stores. The Plaintiffs also run a Beauty and Makeup Blog- 'Beauty Book' which is accessed through Nykaa Platform answering questions related to beauty, health, nutrition and personal care. The Plaintiffs' claim that their blog 'Beauty Book' boasts approximately 7.5 million page views with 4 lakh unique visits per month.
9. The Plaintiffs have also obtained registrations for the said marks and logos 'NYKAA' in various classes as set out in paragraph 26 of the plaint, these include classes 3, 16, 24,25, 35, 42 and 44. The Plaintiffs also have global registrations for the mark 'NYKAA' in countries like Singapore, UAE, United Kingdom, Bangladesh, Kuwait, Qatar etc. as stated in paragraph 27 of the plaint. The Plaintiff No.2 also claims to be the owner of the copyright in original, artistic and graphical representations on the website, www.nykaa.com, as well as the various textual information provided thereunder, such as Terms & Conditions, Shipping Policy, etc.
10. The coining of the mark is stated to have been made by the founder of the Plaintiffs as a modification of the word 'Nayaka' which signifies actress or one in the spotlight. Thus, the mark 'NYKAA' is claimed to be a distinctive invented mark without any dictionary meaning. The mark 'NYKAA' has been licensed by the Plaintiff No.1 to Plaintiff No.2.
11. The grievance in this case was that the Defendants applied for the mark 'OYKAA' bearing number 5734479 on 23th December, 2022 in respect of a large range of cosmetic products in class 3 on a proposed to be used basis, the same stands opposed by the Plaintiff No.1. The Defendants are engaged in identical goods and services i.e., makeup, skin care, wellness CS(COMM) 726/2023 Page 4 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 products for women and men under the mark 'OYKAA'. As per paragraph 36 of the plaint, Defendant No.1 is marketing various cosmetic products and also runs a website www.oykaa.com. Defendant No.2 is the manufacturer of such products, who claims to run the website www.cosmetify.in, which is a cosmetic company providing services in skincare, hair care etc. The trademark journal advertisement of the Defendants' application which was filed on proposed to be used basis is set out below:
12. Ld. counsel for the Plaintiffs submits that the Plaintiffs' revenue is more than Rs.4660.22 crore in the year 2022-2023 with a substantial amount being spent on advertising and publicity. Mr. Saikrishna, ld. Counsel for the Plaintiffs submits that this is a case where the Defendants have adopted the mark 'OYKAA' which can be termed as a deceptively identical mark despite the absence of the letter 'N'. He submits that there can be no justification for the Defendants to adopt this mark as also a similar look and feel for the website in respect of identical goods and services i.e., cosmetic products.
13. The Court had also perused the physical products, which were handed CS(COMM) 726/2023 Page 5 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 over in the Court on 12th October, 2023. After having perused the same, the Court directed observed that the mark 'OYKAA' is written in prominence on the product itself and a perusal of the website along with the trademark which is used would show that there is a considerable chance of confusion which can take place between the two names and products. As per the WHOIS record the Defendants have registered the domain name on 7th October, 2021 but the trademark application has been filed in the year 2022 on a proposed to be used basis. It is, therefore, clear that the adoption of the Defendants is quite recent. The mark, the name as also the overall look and feel of the website gives a clear impression that Defendants are making a deliberate attempt to imitate and copy the Plaintiffs name/mark 'NYKAA' only to gain monetarily by such deception. A comparative chart of the Plaintiffs' and Defendants' mark, as also the website is set out below:
Plaintiffs' Marks Defendant's Impugned
Marks
NYKAA OYKAA
https://www.nykaa.com/ https://www.oykaa.com
CS(COMM) 726/2023 Page 6 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 CS(COMM) 726/2023 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:15 Defendant's Website
14. Defendant No.1 upon being served has appeared today and has made a statement, which is extracted below:
CS(COMM) 726/2023 Page 8 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:16 "Statement of Mr. Pintu Kumar Yadav, S/o Shri Kashi Yadav, aged 38 years R/o, B-30, Bharat Vihar, Rajapuri, Uttam Nagar, West Delhi, Delhi-110059. On SA I got the domain name www.oykaa.com registered sometime in August, 2021. Thereafter, I applied for GST registration and after obtaining the GST Registration, I contacted M/s Cosmetify, the manufacturer for manufacturing the cosmetics to be sold by me.
I launched the products on www.oykaa.com sometime in March/April, 2023. I am a small start-up firm and I do not intend to use the name OYKAA. I have submitted the affidavit dated 11th December, 2023 and I have agreed not to use the domain name www.oykaa.com or any deceptively similar name or mark in respect of any cosmetic products or similar goods & services. I have already discontinued the use of the mark OYKAA.
I had applied for registration of the mark OYKAA with application bearing no.5734479. I have no objection if the said trademark application is treated as abandoned. I have intimated to M/s Cosmetify that I would not be obtaining any products from them under the mark OYKAA."
15. After having perused the trademark adopted by the Defendants and considering the fact that this is a case where services and goods are identical, the trade channel and customers are identical and the Defendants' marks is almost imitative and identical to that of the Plaintiffs' mark, shows that the 'TRIPLE IDENTITY TEST' has been satisfied by the Plaintiffs against the Defendants.
16. Accordingly, interim relief was granted in the matter both qua use of the mark OYKAA as also the website and online listings.
CS(COMM) 726/2023 Page 9 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:16
17. In view of the statement made by the Defendant No.1, the suit is decreed in the following terms:
(i) A decree of permanent injunction is issued restraining the Defendants, their owners, partners, proprietors, officers, servants, employees, and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from, in any manner using directly or indirectly -
(a) the name or mark 'OYKAA';
(b) any other mark deceptively similar to 'NYKAA';
(c) using the following logos -
;
or adopting any logos/labels deceptively similar to identical to the logos of the Plaintiffs
(d) The website and other online listings if remaining shall remain taken down immediately. Insofar as the website www.oykaa.com is concerned, the website shall be placed under lock and suspension by the concerned DNR.
(e) The Defendants' products, if any, also listed on third party websites such as India Mart, Amazon and Flipkart shall also be taken down, if not done. The said directories/ online platforms shall also take down the listings of the Defendants upon receiving the specific URLs by the Plaintiff, if the same are not taken down by the Defendants.CS(COMM) 726/2023 Page 10 of 11
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:16
18. Insofar as the oral prayer for well-known mark declaration is concerned, in the background recorded above, there can be no doubt that the mark and name NYKAA has become extremely well known especially in the field of cosmetics, apparel, ladies' products etc.
19. The suit is decreed in the above terms. The affidavit is taken on record. Let the decree sheet be drawn up.
20. In view of the fact that the matter is has been settled amicably at the very inspection of the suit, full court fee is directed to be refunded to the Plaintiff through counsel in terms of the judgment in Nutan Batra v. Buniyaad Builders [(2018) 255 DLT 696].
21. All pending applications are also disposed of.
PRATHIBA M. SINGH, J.
DECEMBER 15, 2023/dk/am CS(COMM) 726/2023 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/12/2023 at 23:34:16