Delhi District Court
Huda Beauty Limited vs M/S Vision Enterprises And Ors on 9 August, 2024
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND01-006282-2021
TM/18/2021
IN THE MATTER OF:-
Huda Beauty Limited
3rd Floor, J & C Building,
Road Town, Tortola,
Virgin Islands (British) - VG 1110
Through
Ms. Meena Bansal
Constituted Attorney
96, Sukhdev Vihar,
Mathura Road,
New Delhi - 110 025
...PLAINTIFF
VERSUS
1. M/s Vision Enterprises
S No 24 Vandevi Mandir Gosavi Vasti
NDA Road NR Parvati Nivas Karve NG
Pune, Maharashtra, 411052
2. Office of the Chief Commissioner of Customs
Kolkata Customs House
15, 1, Strand Rd, Fairley Place
Kolkata, West Bengal, 700001
3. Central Board of Indirect Taxes & Customs
Department of Revenue
Ministry of Finance
Government of India
Room No. 252 B, North Block
New Delhi- 110001
...DEFENDANTS
Date of Institution : 22-09-2021
Date of reserving judgment : 09-08-2024
TM/18/2021 Page 1 of 33
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Date of pronouncing judgment : 09-08-2024
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999, Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement of registered trademark, passing off, damages, rendition of accounts, delivery up etc., filed by plaintiff against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 24-08-2022 in view of Order No.17016-17031/Judl./NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is that the plaintiff, which is stated to be a company organized and incorporated under the law of British Virgin Islands, got instituted the present suit through its Constituted Attorney duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit.It is stated that the TM/18/2021 Page 2 of 33 -3- plaintiff company is engaged in the business of manufacturing, distributing and sale of a wide range of cosmetics, creams, adhesives used for affixing false eyelashes, false hair and for cosmetic purposes, balms other than used for medical purposes; beauty masks; cosmetic creams, cosmetic kits, cosmetic pencils, cosmetic preparations for eyelashes, cosmetic preparations for skin care, cosmetics, eyebrow cosmetics, eyebrow pencils, false eyelashes, false nails, lip glosses, lipstick cases, lipsticks, lotions for cosmetic purposes, make-up, make-up powder, make-up preparations, make-up removing preparations, mascara, massage gels other than used for medical purposes, nail art stickers, nail care preparations, nail polish, oils for cosmetic purposes, perfumery, petroleum jelly for cosmetic purposes, sun-tanning preparations [cosmetics], adhesives for affixing false nails, blusher, blush pencils, body and beauty care preparations for cosmetic purposes, body art stickers, cleansing creams [cosmetic], concealers [cosmetics], concealers for spots and blemishes, cosmetic face powder, cream foundation, creamy rouge, decorative cosmetics, exfoliating scrubs for cosmetic purposes, eyeliner, eyeshadow, lip care preparations, lip liners, make-up primers, nail tips, removable tattoos for cosmetic purposes, toners for cosmetic use, contact lenses, containers for contact lenses, eye wear, lenses and parts and other allied and cognate goods and respective services attached to such goods. [hereinafter referred to as the "said goods and business"].
TM/18/2021 Page 3 of 33 -4-4. Thus, it is stated that the plaintiff company was founded by one Huda Kattan in the year 2010 and 'HUDA' being the name of the founder, was always part of the company's corporate name and/or trading style, ever since its establishment. Further, it is stated that ever since its establishment, the plaintiff has been using, trading, manufacturing, marketing, trading, selling its goods under the trademarks/labels HUDA BEAUTY, , and other variants [hereinafter collectively referred to as the "said trademark/label"].
5. The detailed history of the plaintiff company has been given in Para no.4 of the plaint, wherein, inter alia, it is stated that in April 2010, the plaintiff Company's owner Huda Kattan started the beauty-related blog, Huda Beauty, and a YouTube Channel. The contents of Kattan's channels are beauty tutorial-oriented: Kattan shares makeup techniques, skincare routines and personal preferred beauty products. In 2011, Huda Kattan launched first Huda Beauty Product, which was a collection of false eyelashes. The product was released through Sephora in Dubai. In 2013, Huda Kattan launched a cosmetic line named after her channel, Huda Beauty. In 2015, the Huda Beauty Products were launched in United States.
6. It is claimed that since its inception, the plaintiff has been honestly and bonafide, continuously, commercially, TM/18/2021 Page 4 of 33 -5- openly, uninterruptedly and to the exclusion of others and in the course of trade and as proprietor thereof, using its said trade marks/labels in relation to its said goods and business and is carrying on its said goods and business thereunder and has built up a valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
7. It is stated that said trademarks/ labels are duly registered under various classes in India under the provisions of Trade Mark Act, 1999, which are stated to be valid and subsisting till date and the details thereof have been mentioned in Para no.7 of the plaint. It is further stated that apart from India, the plaintiff has also got the said trademarks/labels registered in all the major countries of world and across all continents and regions. Thus, it is claimed that the plaintiff Company is the prior adopter, bona fide user and registered proprietor of the said trademark/label HUDA BEAUTY and variations thereof in various classes in various jurisdictions of the world including India.
8. Further, the plaintiff company has also claimed that the artworks involved in plaintiff's said trade marks/ labels and other variants stylized and formative / bearing and labels are original artistic works and the plaintiff holds copyright therein.
9. It is stated that ever since 2010, when the plaintiff launched its said goods and business under the said trademarks/labels, the plaintiff has been expanding the use TM/18/2021 Page 5 of 33 -6- of its said trademarks/labels in relation to its said goods & business to cover more and more countries across the globe. The plaintiff's said goods and business under the said trademarks/labels, as also the goodwill and reputation achieved thereunder, is global in character and extends into India as well.
10. It is averred that with the advent of e-commerce, the internet and trade thereunder, the plaintiff's said goods have been advertised, promoted, displayed, solicited, sold and traded over the world on its website www.hudabeauty.com, which is claimed to be interactive in nature [hereinafter referred to as the 'said domain name'] in which the said trademarks/labels forms an essential and material part. The plaintiff deals in its said goods and business in India through its business partner NYKAA & SEPHORA on www.nykaa.com & www.sephora.nnnow.com, which are also stated to be interactive in nature. The plaintiff has been using the said domain name in the course of trade and as proprietor thereof globally in relation to its said goods and business and has built up a valuable trade, goodwill and reputation thereunder.
11. It is also averred that the plaintiff's said trademarks/labels have become distinctive, associated and have acquired secondary significance with the plaintiff and plaintiff's said goods and business. The purchasing public, the trade and industry at large worldwide and in India identify and distinguish the plaintiff's said goods bearing the said TM/18/2021 Page 6 of 33 -7- trademarks/ labels with the plaintiff and from the plaintiff's source and origin alone and regard them as a high-quality products exclusively as that of the plaintiff. The plaintiff's said goods offer great fascination to the purchasers, inter-alia, having regard to its inherent aesthetic form and the popularity achieved by them. Thus, it is stated that the said trade marks/labels of the plaintiff have become distinctive indicium of the plaintiff in relation to its said goods.
12. It is further the case of the plaintiff that the plaintiff has been regularly and continuously promoting its said goods and business under the said trade marks/ labels through extensive advertisements, publicities, promotions and marketing & marketing research and the plaintiff has been spending enormous amounts of moneys, efforts, skills and time thereon. The plaintiff has been doing so through various means and modes including through the visual, print and electronic media, in leading Newspapers, trade literature & magazines, over the television and internet, through word of mouth etc. and all of which have tremendous reach, availability and circulation world over including in India which are widely read and patronized in the trade and industry. Several renowned actors and models are the brand ambassadors of the plaintiff Company.
13. Further, on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade TM/18/2021 Page 7 of 33 -8- marks/labels have acquired enviable reputation and goodwill in the international markets including in India, where in addition to the aforesaid, the plaintiff also enjoys trans-border reputation and users as extending into India. It is claimed that said trademarks/ labels are well known trademarks within the meaning of S. 2(1)(zg) of the Act.
14. Hence, it is claimed that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademarks/labels in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
15. It is alleged that the defendant No.1 namely M/s Vision Enterprises, imported a consignment of counterfeit products containing inter alia 28,368 pieces of fake HUDA BEAUTY cosmetics, vide Bill of Lading No: 024A566574 dated 30.11.2020 at the Kolkata Port, West Bengal, which was intercepted and seized by the defendant No.2 namely Office of Chief Commissioner of Customs, Kolkata Custom House, as the said consignment was found to be in violation of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 framed under the Customs Act, 1962, vide notification No. 47/2007 dated 08.05.2007. The defendant no.2 is the relevant Customs TM/18/2021 Page 8 of 33 -9- Officer who is an authority of the Government of India, responsible for collecting appropriate Customs duties and regulate & oversee the import and export of goods in & out of India. The defendant no.3 namely Central Board of Indirect Taxes & Customs is the nodal National agency responsible for administering Customs, GST & Narcotics in India and is in-charge of appointing and overseeing the activities of all the Customs ports in India, including the one in charge of defendant no. 2.
16. It is stated that the defendant no.2 informed the plaintiff's attorney vide email dated 12.04.2021 about the seizure of the aforesaid consignment being imported by defendant No.1 and requested the plaintiff's authorized representative to join the subject proceedings. It is averred that vide email/letter dated 13.04.2021,the plaintiff through its attorneys joined the said proceedings and requested the defendant No. 2 for physical inspection of the seized goods. In response thereto, and vide e-mail dated 19.04.2021, the defendant No. 2 allowed the plaintiff's representative to conduct a physical inspection of the same. Thereafter, the plaintiff got inspected the seized goods and took photographs of the same, and vide email/ letter/ assessment report dated 12.05.2021, the plaintiff confirmed that the impugned goods were not genuine and were counterfeits. The total number of seized counterfeit HUDA BEAUTY cosmetics [hereinafter referred to as 'impugned goods'], as provided by the defendant No. 2 to the plaintiff, are as follows:
TM/18/2021 Page 9 of 33 -10- Sr. Trademark Item Quantity of Bill of
No. seized gods Lading
1. Huda Beauty Huda Beauty Naug 2160 024A566574
hty EyeShadow
Palette 19.7 gms dated
2. Huda Beauty Huda Beauty Eye 2880
Mascara M2004 30.11.2020
3. Huda Beauty Huda Beauty Eye 4320
Mascara M2001
4. Huda Beauty Huda Beauty 720
EyeShadow Palette
19.7 gms
5. Huda Beauty Huda Beauty 1728
EyeShadow Palette
16.1 gms
6. Huda Beauty Huda Beauty 8640
Foundation 40ml
7. Huda Beauty Huda Beauty 5760
EyeShadow Palette
19.7 gms
8. Huda Beauty N.Y.M.P.H Huda 2160
Beauty All Over
Highlighting
Powder 18 gms
TOTAL 28,368
17. It is stated that said consignment contains huge quantities of counterfeit products bearing the plaintiff's said trademark / label HUDA BEAUTY, , and other variants (hereinafter referred to as the "impugned trademarks/ labels").
18. Thus, it is alleged that defendant no.1 has dishonestly and malafidely adopted and started using impugned trade mark HUDA BEAUTY and its formative trademarks/labels which are visually, structurally identical and/or deceptively TM/18/2021 Page 10 of 33 -11- and confusingly similar to the registered trademark of the plaintiff HUDA BEAUTY and its formative trademarks/labels, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendant no.1 is not only damaging the reputation and goodwill of the plaintiff company by passing off its substandard products as that of the plaintiff company, but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
19. On these grounds, the plaintiff has filed the present suit against defendant no.1 praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant no.1 and all others acting for and on its behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner using the impugned trade mark HUDA BEAUTY and its formative trademarks/labels which may be identical with and/ or deceptively similar to the plaintiff's said trade mark HUDA BEAUTY and its formative trademarks/labels in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff. It is also prayed that the defendant nos. 2 and 3 be also restrained from releasing TM/18/2021 Page 11 of 33 -12- and defendant no.1 from obtaining release of impugned goods under impugned trademark/ label HUDA BEAUTY and other variants imported vide Bill of Lading 024A566574 date 30.11.2020, which were lying with defendant nos. 2 and 3 and direction is sought to be issued to defendant nos. 2 and 3 to absolutely confiscate the impugned counterfeit goods, with liberty to the plaintiff to destroy the said impugned goods in accordance with law.
20. The suit was accompanied with application Order XXXIX Rule 1 & 2 CPC seeking ex parte ad interim injunction. After hearing the counsel of plaintiff, the said application was allowed, vide order dated 10-11-2021 passed by Ld. Predecessor of the Court, thereby granting an ex parte ad interim injunction in favour of the plaintiff and against the defendant no.1, thereby restraining the defendant no.1 from using the impugned trademarks till the disposal of the application.
21. Summons of the suit and notice of accompanying applications were issued to the defendants in terms of relevant orders. However, only defendant no.3 was reportedly served with the summons of suit whereas defendant nos. 1 and 2 remained unserved.
22. It may be noted that the present case was received by this Court on 24-08-2022, as already noted above in Para No.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above TM/18/2021 Page 12 of 33 -13- Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra).
23. Since the defendant nos. 1 and 2 were still to be served, summons of the suit and notice of accompanying applications including that of the application for amendment of plaint were directed to be issued to all the defendants for next date. The defendant nos. 2 and 3 put their appearance through counsel. However, since defendant no.1 could not be served through ordinary mode of service, he was served through substituted mode of service by way of publication in Newspapers - Time Times of India (English edition) and Loksatta (Marathi edition), both dated 16-5-2023 in terms of order dated 31-3-2023, passed by Ld. Predecessor of this Court while allowing application under Order V Rule 20 CPC filed by the plaintiff.
24. Since despite being served through publication in aforesaid newspapers, none had appeared on behalf of the defendant no.1, it was proceeded against ex parte, vide order dated 24-7-2024. Vide same order, the aforesaid amendment application was allowed and defendants were directed to file written statement to the amended plaint within 30 days from the date of said order. However, the defendant nos. 2 and 3 failed to file written statement to the amended plaint either within 30 days or even within 120 days from date of allowing of the amendment application and direction to TM/18/2021 Page 13 of 33 -14- them to file written statement to the amended plaint, despite grant of sufficient time and opportunities and thus, their right to file written statement to the amended plaint was closed and consequently, their defence was struck off.
25. It may also be noted that common written statement, which was already filed on behalf of the defendant nos. 2 and 3 to the original plaint, was directed to be taken off the record in view of the fact that same was not in conformity with the provision of Commercial Courts Act, 2015 and despite grant of sufficient time and opportunities, the defects were not cured. It may also be noted that since defendant nos. 2 and 3 also stopped appearing in this matter, therefore, they were also proceeded against as ex parte, vide order dated 23-03-2024 passed by this Court.
26. In view of above, the position as emerges on record is that no written statement to the amended plaint, was filed by any of the defendants.
27. It may also be noted that the interim order dated 10-11-2021 was made absolute till the pendency of the present suit while disposing off the application under Order XXXIX Rules 1 & 2 CPC, vide order dated 18-10-2023 passed by Ld. Predecessor of this Court.
28. In support of its case, the plaintiff has examined only one witness i.e. its AR namely Mrs. Meena Bansal as PW1. She led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and relied on the following documents:-
TM/18/2021 Page 14 of 33 -15- Sr. Document/Particulars Exhibit(s)
no
1. True representation of the Ex. PW1/1
plaintiff's trademark/labels.
2. Plaintiff's goods bearing the Ex. PW1/2
trademarks/labels of the plaintiff. (Colly)
3. Impugned goods of the Defendants Ex. PW1/3
bearing the impugned (Colly)
trademarks/label.
4. Copies of the Status pages, Ex. PW1/4
registration Certificates, Journal (Colly)
copies and relevant Receipt of
Legal Proceeding Certificate of the
trademark registrations [as
mentioned in the plaint] of the
plaintiff.
5. List of plaintiff's trademark Ex. PW1/5
registrations along with pending (Colly)
applications, across the globe.
6. Copies of few registration Ex. PW1/6
certificates of the plaintiffs said (Colly)
trademark(s) across the globe.
7. Copy of the plaintiff Company's Ex. PW1/7
Certificate of Incorporation as
issued by the Registrar of
Corporate Affairs of the British
Virgin Islands.
TM/18/2021 Page 15 of 33
-16-
Sr. Document/Particulars Exhibit(s)
no
8. Printouts of various news articles Ex. PW1/8
and blogs pertaining to the plaintiff (Colly)
and its said trademark(s) depicting
its enormous goodwill and
reputation thereof.
9. Screenshots pertaining to the social Ex. PW1/9
media webpages being operated by
the plaintiff, under the said
trademark(s) of the plaintiff.
10. Screenshots from the domain name Ex. PW1/10
www.hudabeauty.com as operated (Colly)
by the plaintiff, alongwith the
relevant whois details, where under
the said goods bearing the said
trademark(s) are available for
purchase.
11. Screenshots from the domain name Ex. PW 1/11 www.nykaa.com and (Colly) https://sephora.nnnow.com where under the plaintiff's goods bearing the said trademark(s) are available for purchase.
12. Screenshots showing the exclusive Ex. PW1/12 showrooms of NYKAA and SEPHORA within the territorial jurisdiction of this Hon'ble Court.
TM/18/2021 Page 16 of 33 -17- Sr. Document/Particulars Exhibit(s)
no
13. E-mail dated 12.04.2021 by the Ex. PW 1/13 DRI, KZU to the plaintiff pertaining to the interdiction of the impugned goods being imported by the defendant No. 1.
14. E-mail dated 13.04.2021 by the Ex. PW 1/14 plaintiff's attorney in connection with the representation on behalf of the plaintiff pertaining to the subject seizure.
15. E-mail dated 19.04.2021 by the Ex. PW 1/15 DRI, KZU to the plaintiff pertaining to the approval of the plaintiff's request for the physical inspection of the seized goods.
16. E-mail dated 12.05.2021 by the Ex. PW 1/16 plaintiff DRI, KZU confirming the authenticity of the impugned goods along with the copy of the plaintiff's assessment report in connection thereto.
17. Copies of orders dated 27.08.2019 Ex. PW 1/17 in connection with the suits titled (Colly) Huda Beauty Ltd. v. Capture Media and Ors.[TM No. 95/2019], Huda Beauty Ltd. v. Classic Traders and Ors [TM. No. 93/2019], and Huda TM/18/2021 Page 17 of 33 -18- Sr. Document/Particulars Exhibit(s) no Beauty Ltd. v. Flora Traders and Ors. [TM No. 94/2019], all pending before this Hon'ble Court.
18. Power of Attorney dated Ex. PW 1/18 20.11.2018 in favour of Mrs. (OSR) Meena Bansal executed by the plaintiff company.
19. Affidavit under Order XI Rule 6 Ex. PW 1/19 (3) CPC for electronic record documents.
29. On statement of AR of the plaintiff, the ex parte evidence of the plaintiff was closed on 06-05-2024. After closure of PE, ex parte final arguments were heard.
30. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up reliefs as prayed in Prayer Clause nos. 39(c), 39(d), 39(g), 39(h) and 39(i) of the amended plaint regarding restraining the defendant no.1 from disposing off or dealing with his assets, delivery up, directions to defendant no.1 to disclose complete particulars of the importers/ exporters/ supplier and rendition of accounts of profits respectively. Accordingly, the plaintiff was permitted to give up the said reliefs,vide order dated 26-07-2024. In view thereof, the suit survives only with respect to reliefs of permanent injunction, whereby the plaintiff has sought permanent injunction against defendant no.1 TM/18/2021 Page 18 of 33 -19- from using the impugned trademarks/ labels and also for directions sought to be issued to defendant nos. 2 and 3.
31. I have heard counsel of the plaintiff. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
ARGUMENTS OF THE PLAINTIFF:
32. Ld. Counsel of plaintiff has argued that the entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Counsel also relied upon the documents [Ex.PW1/1 to Ex.PW1/19]
33. Further, it is submitted by Ld. Counsel of plaintiff that the trademarks/labels HUDA BEAUTY and its formative trademarks / labels are well known trademarks/labels of the plaintiff and are registered in India under the provisions of Trade Marks Act in favour of plaintiff, which are valid and subsisting till date. Further, the art works involved in the said trademarks/ labels are original artistic works and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and promotion of its products and said marks enjoy a huge goodwill and reputation in business community and public in general in India and across the world.
TM/18/2021 Page 19 of 33 -20-34. Further, he submitted that the use of impugned trade marks/ labels as adopted by the defendant no.1, which are identical and/ or confusingly or deceptively similar to the registered trademarks of the plaintiff not only amounts to committing fraud upon the plaintiff company but also upon the unwary general public, due to which the plaintiff company suffers huge monetary loss and its goodwill and reputation is also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendant no.1, thereby restraining the defendant no.1 and all others acting for and on its behalf from using the said impugned trade-marks/ labels.
ANALYSIS & CONCLUSION:
35. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION:
36. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendant no.1 has been soliciting, networking and in turn, is offering to sell and is supplying the impugned goods bearing the impugned trademarks to the dealers and distributors in the markets of New Delhi. The said defendant is committing the act of infringement and passing off in New Delhi by making clandestine and surreptitious sales and distribution. Thus, whole or part of cause of action for filing the suit has arisen within the territorial jurisdiction of this Court within TM/18/2021 Page 20 of 33 -21- the meaning of Section 20 of Code of Civil Procedure, 1908.
37. Further, it is argued that the plaintiff is also carrying on its said goods and business under its said trademarks/ labels in New Delhi markets through its exclusive dealers and distributors SEPHORA & NYKAA. Besides, it is also argued that plaintiff is also dealing in its said goods and business in India through its said domain name www.hudabeauty.com and with another business partner NYKAA on www.nykaa.com and SEPHORA on www.sephora.nnnow.com which are stated to be interactive in nature, and are freely accessible including within the territorial jurisdiction of this Court. The plaintiff's proprietary rights are being tarnished and adversely affected due to the defendant No. 1's impugned activities within the territorial jurisdiction of this Court besides other areas and therefore, it is contended that this Court also has the territorial jurisdiction to entertain the suit within the meaning of S. 134 (2) of the Trade Marks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
38. The PW1 has categorically deposed in her affidavit in evidence on the identical line of the averments made in the plaint. The PW-1 has also duly proved screenshots from its website www.hudabeauty.com as well as screenshots from the websites viz. www.nykaa.com and https://sephora.nnnow.com as Ex.PW1/10 (Colly.) and Ex.PW1/11 (Colly.) respectively showing availability of TM/18/2021 Page 21 of 33 -22- its goods under said trademarks/ labels for purchase. It is the case of the plaintiff that the aforesaid websites are interactive in nature through which goods under the said trade mark/label HUDA BEAUTY can be sold, purchased and delivered to any place across the length and breadth of the country including place within territorial jurisdiction of this Court.
39. PW-1 has also proved screenshot from www.sephora.nnnow.com as Ex.PW1/12 which show that the plaintiff has its exclusive store under the name and style Sephora DLF Prmenade at Store No.184-187, Ground Floor, DLF Promenade Mall, Vasant Kunj, New Delhi, which falls within territorial jurisdiction of this Court.
40. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendants have neither filed written statement, nor have chosen to cross-examine PW1.
41. Therefore, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr ." reported as 2009 SCC OnLine Del 3780; "World Wrestling Entertainment, Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment of its goods under the registered trade mark/ label within the territorial TM/18/2021 Page 22 of 33 -23- jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.
42. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that at least part of cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has territorial jurisdiction to try and entertain the suit.
PERMANENT INJUNCTION:
43. Hon'ble Supreme Court in the case titled as " Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that is likely to cause confusion on the part of the public.TM/18/2021 Page 23 of 33 -24-
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trade mark, whereas in the case of a passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trade mark. It has further been held that though the get up of the defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that defendant is improperly using the plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant's trade mark is identical with the plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
44. Further, our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) laid down the principle TM/18/2021 Page 24 of 33 -25- as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya (Para-7).
45. In view of above law, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on the identical lines of averments made in the plaint and has proved various documents, as already referred to above.
46. In the case titled as "Amrish Agarwal Vs. M/s Venus Home Appliances Pvt. Ltd" in CM (M) 1059/2018 dated TM/18/2021 Page 25 of 33 -26- 27-08-2019, passed by Hon'ble Delhi High Court, it was, inter alia, directed that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side"
47. In this case, the plaintiff has relied upon and filed copies of Registration Certificates and status thereof, which are duly proved by PW-1 as Ex.PW1/4 (Colly.). As per these documents, it is duly shown that trade mark HUDA BEAUTY is duly registered in favour of plaintiff as device mark, which are valid and subsisting as on date. Therefore, it is duly shown that the trademarks /device marks are registered in favour of the plaintiff since long. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of said trademarks/ TM/18/2021 Page 26 of 33 -27- word marks/ device marks stand renewed and same are valid till date.
48. The PW-1 has also proved some of its registration certificates of its trademark/ label across the globe as Ex.PW1/6 (Colly.), which show inter alia that the plaintiff has registration in British Virgin Islands, Great Britain and Northern Ireland and Singapore etc.
49. Further PW-1 has also proved copy of e-mail dated 12.4.2021 by the DRI, KZU to the plaintiff pertaining to the interdiction of the impugned goods being imported by the defendant no.1, e-mail dated 13.4.2021 by the plaintiff's attorney in connection with the representation on behalf of the plaintiff pertaining to the subject seizure, e-mail dated 19-4-2021 by the DRI, KZU to the plaintiff pertaining to the approval of the plaintiff's request for the physical inspection of the seized goods and e-mail dated 12-5-2021 by the plaintiff DRI, KZU confirming the authenticity of the impugned goods along with the copy of the plaintiff's assessment report in connection thereto as Ex.PW1/13, Ex.PW/14, Ex.PW1/15 and Ex.PW1/16 respectively.
50. As per document [Ex.PW1/13], it is an e-mail dated 12-04-2021 whereby the plaintiff through its attorney has been informed regarding import of goods/ cosmetic under various brands including HUDA BEAUTY by M/s Vision Enterprises (defendant no. 1) and seizure thereof as same were suspected to be infringing plaintiff's Intellectual Property Right (IPR) by Directorate of Revenue TM/18/2021 Page 27 of 33 -28- Intelligence, Kolkata Zonal Unit (DRI KZU)/ defendant no.2. The plaintiff was granted liberty to carry out inspection of the seized goods in the customhouse. The document [Ex.PW1/14] is an e-mail sent by plaintiff through its counsel to defendant no.2, whereby the plaintiff has informed regarding authorizing its representative Mr. Fahad Nadim to conduct the physical inspection and vide e-mail dated 19-4-2021 (Ex.PW1/15), the defendant no.2 requested the plaintiff to send its representative on 21-4-2021 at the office of DRI, KZU for the subject examination/ inspection and vide communication dated 12-5-2021, the custom department was informed by plaintiff through its attorney that after inspecting the goods on behalf of the plaintiff, the same were counterfeit goods. Therefore, the plaintiff has been able to establish on record that the impugned seized goods were imported by M/s Vision Enterprises i.e. the defendant no.1.
51. In the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant no.1 had imported seized goods bearing falsified trademarks/trade name/labels of the plaintiff company and therefore, trademarks and copyright of plaintiff company are required to be protected.
52. Accordingly, the plaintiff is held entitled to decree of permanent injunction whereby the defendant no.1 is required to be restrained from using trademark/ label HUDA BEAUTY or any other trade mark/label which may be identical with and/ or deceptively similar to the TM/18/2021 Page 28 of 33 -29- plaintiff's said registered trade mark / label HUDA BEAUTY in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff.
RELIEFS QUA DEFENDANT NOS.2 AND 3:
53. Since the impugned goods seized by defendant nos. 2 and 3 are held to be counterfeit goods, they are hereby directed not to release the same to defendant no.1. As regards direction for absolute confiscation of the counterfeit goods, as already noted above, the defendants nos.2 and 3 failed to file written statement to the amended plaint despite grant of sufficient opportunities and on account of their non-appearance, they were also proceeded against as ex parte.
54. The detention of impugned goods has been made by the custom authorities under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.The said Rules provides the requisite procedure to be followed in respect of the seized infringed goods. Rule 2 (d) thereof defines the term 'Right Holder' as under:-
" right holder" means a natural person or a legal entity, which according to the laws in force is to be regarded as the owner of protected intellectual property right, its successors in title, or its duly authorized exclusive licensee as well as an individual, a corporation or an association authorized by any of the aforesaid persons to protect its rights."
55. In the present case, the plaintiff has been held to be owner of the said trademarks/labels HUDA BEAUTY in the preceding paras. Thus, in view of Intellectual Property TM/18/2021 Page 29 of 33 -30- Rights (Imported Goods) Enforcement Rules, 2007, the case of the plaintiff squarely falls within the definition of 'Right Holder'.
56. Further, Rule 9 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 provides as under:-
"9. Supply of information to the right holder.
- At the request of the right holder , the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, shall inform the name and address of the importer and without prejudice to the protection of confidential information the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may also provide additional relevant information relating to the consignment which has been suspended from clearance."
57. Further, Rule 7 (Suspension of clearance of imported goods) and Rule 11 (Disposal of infringing goods) lays down the complete procedure of suspension of release and disposal thereof as under:-
11. Disposal of infringing goods. -
(1). Where upon determination by the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, it is found that the goods detained or seized have infringed intellectual property rights, and have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination, the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, shall, destroy the goods under official supervision or dispose them outside the normal channels of commerce after obtaining "no objection" or concurrence of the right holder or his TM/18/2021 Page 30 of 33 -31- authorized representative:
Provided that if the right holder or his authorized representative does not oppose or react to the mode of disposal as proposed by the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, within twenty working days after having been informed, or within such extended period as may have been granted by the Commissioner at the request of the right holder, not exceeding another twenty working days, he shall be deemed to have concurred with the mode of disposal as proposed by the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be:
Provided further that the costs toward destruction, demurrage and detention charges incurred till the time of destruction or disposal, as the case may be, shall be borne by the right holder.
(2) There shall not be allowed the re-exportation of the goods infringing intellectual property rights in an unaltered state.
(3) The Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may on his own, or at the request of the right holder, retain samples of goods infringing intellectual property rights prior to their destruction or disposal and provide the same to the right holder or importer if such samples are needed as evidence in pending or future litigation."
58. Thus, it is quite evident from bare perusal of the aforesaid Rules that the infringed seized goods can be destroyed by the Custom Authorities and the cost is to be borne by the 'Right Holder', which is plaintiff in this case.
59. In view of the foregoing reasons and the discussions made hereinbefore, the defendant nos.2 and 3 are hereby restrained from releasing the infringed seized goods, vide BILL OF LADING NO: 024A566574 dated 30.11.2020 to defendant no.1 and they are further directed to consider the TM/18/2021 Page 31 of 33 -32- destruction of the infringed seized goods as per the procedure laid down in this regard in the light of rules quoted above and also keeping in view all the enabling provisions governing the situation in hand and while complying with relevant directions, if any, issued by Hon'ble Superior Courts in this regard.
RELIEF:
60. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant(s) and the following reliefs are granted:-
(i) Suit is decreed in favour of plaintiff and against the defendant no.1 qua permanent injunction thereby restraining the defendant no.1 by itself as also through its individual proprietors/ partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using, selling, soliciting, importing (in any manner or from any other port), exporting, displaying, advertising or by any other mode or in any manner using impugned trademarks / labels HUDA BEAUTY, , any other trademarks/ labels which may be identical with and/ or deceptively similar to the plaintiff's said registered TM/18/2021 Page 32 of 33 -33- trademarks / labels HUDA BEAUTY, , thereby infringing plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff.
(ii) Suit is also decreed in favour of plaintiff and against the defendant nos. 2 and 3, whereby the said defendants are hereby restrained from releasing the infringed seized goods vide BILL OF LADING NO:
024A566574 dated 30.11.2020 to the defendant no.1 and they are further directed to consider the destruction of the infringed seized goods as per the procedure laid down in this regard in the light of rules mentioned above and also keeping in view all the enabling provisions governing the situation in hand and while complying with relevant directions, if any, issued by Hon'ble Superior Courts in this regard.
(iii) Cost of the suit is also awarded in favour of the plaintiff.
61. Decree sheet be prepared accordingly.
62. File be consigned to Record Room, after due compliance.
Announced in the open court VIDYA
Digitally signed by
VIDYA PRAKASH
on 9th Day of August, 2024. PRAKASH Date: 2024.08.09 16:33:16 +0530 (VIDYA PRAKASH) DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI TM/18/2021 Page 33 of 33