Delhi District Court
M/S. Lancome Parfums Et Beaute & Cie vs M/S Shree Prem Cosmetics on 16 March, 2018
IN THE COURT OF SH. SUMIT DASS, ADDITIONAL DISTRICT JUDGE - 01,
PATIALA HOUSE COURTS, NEW DELHI DISTRICT, NEW DELHI
TM No. 13525/2016
M/s. Lancome Parfums Et Beaute & Cie
29, Rue Du Faubourg,
Saint-Honore, 75008 Paris,
France.
Technical Office At:
C-33, First Floor, Above Zodiac Show Room,
Opp. PVR Plaza, Connaught Place,
New Delhi. 110001. ... Plaintiff
Versus
M/s Shree Prem Cosmetics
78, Bima Nagar,
Near Canara Bank, Anand Bazar,
Old Palasia, Indore (M.P.)
Also at :
1-B, Ground Floor,
The Mark, 20/A, Old Palasia
Opp. Rafeal Tower,
Indore M.P.
And also at :
17, Khatipura,
Behind Maharaja Complex,
Indore ... Defendant
Suit presented On : 17.05.2014
Arguments Heard On : 16.03.2018
Judgment Pronounced On : 16.03.2018
JUDGMENT
TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 1 of 15
1. The plaintiff has filed the suit for under Section 134 & 135 of Trade Marks Act, 1999; Section 55 of Copyright Act, 1957 for permanent injunction, restraining infringement; passing off; delivery up and rendition of accounts etc.
2. Brief facts of the case are :
(a) Plaintiff is engaged in the business of manufacture, distribution and trade of a wide range of cosmetics, perfumery, skin care and toilet preparations including perfumes, non-medicated toilet waters and perfumes lotions, non-medicated soaps, bath and shower forming compositions and gels and accessories used therefore and other allied / related products.
(b) Plaintiff in year 1935 honestly adopted the word /mark LANCOME which is also an important, key and distinguishing features of its trade name in relation to its said goods and business.
Plaintiff ever since their honest and bonafide adoption in year 1935 and over a period of time has been using its said LANCOME trade mark / trade name in relation to its said goods & business, continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade as a proprietor thereof has built up a worldwide and globally valuable trade, goodwill and reputation and acquired proprietary rights therein.
(c) The plaintiff's goods under its said trade mark / trade name are branded and sold in about 140 countries of the world and across all continents and regions including in India. It's goods are sold and TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 2 of 15 traded by the plaintiff directly or through a wide network of its associates, affiliates, subsidiary companies, licensees and through a wide marketing network including through retail as also through internet and e-commerce.
(d) The trademark of plaintiff LANCOME word per se, label & formative are duly registered in India under the Trademark Acts. The art work involved in the plaintiff's various LANCOME stylized, formative / bearing and labels are original and artistic works and plaintiff holds copyright therein. With the advent of e-commerce and internet the plaintiff adopted the word/mark LANCOME as important part of its domain name www.lancome.com.
(e) The plaintiff has built up a globally valuable trade under its said trademarks / labels and conducted handsome business running into billions of Euros worldwide. The plaintiff's said trade mark / trade name has become distinctive, associated and acquired secondary significance with the plaintiff and plaintiff's said goods and business.
(f) The grievance of the plaintiff is that the defendant is engaged in trading of cosmetics and toiletries, perfumes, hair care products and beauty products including make-up preparations and accessories used thereof and other allied / related products. He adopted and started using the trademark LANCOME (hereinafter referred as impugned goods).
(i) The plaintiff learnt about the defendant and its impugned adoption in first week of May, 2014 when it came across the impugned goods of the defendant in the markets of New Delhi. The TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 3 of 15 impugned trademarks / labels adopted and used by the defendant in relation to its impugned goods and business and packaging thereof are identical with and deceptively similar to the plaintiff's trademark / labels and packaging in each and every respect including phonetically, visually, structurally in its basic idea and in its essential features.
(j) The defendant was using false description on its impugned goods to wrongly link the impugned goods with the plaintiff and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiff. The defendant is not the proprietor of the impugned trademarks / labels and have no rights to use it in any manner.
(k) The defendant adopted and started using the impugned trademark / labels dishonestly, fraudulently and out of positive greed with a view to take advantage of plaintiff's established goodwill and reputation and due to defendant's impugned activities the plaintiff is suffering huge losses both in business and in reputation.
(l) The plaintiff instituted the present suit against the defendant, seeking reliefs of permanent injunction, rendition of accounts of profits illegally earned by defendant, decree for permanent injunction restraining defendant from infringement of plaintiff's registered trademark, passing off and violation of plaintiff's rights in plaintiff's trademarks / labels and infringing the Copyright in the artwork of the plaintiff's trademarks / labels.
TM no. 13525/16M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 4 of 15
3. When the suit came up for hearing, on 19.05.2014, summons were issued to defendant and on the same day ex-parte ad-interim injunction was granted against defendant. On the same day while disposing of application under order 26 rule 9 r/w 151 of Civil Procedure Code, Local Commissioner was appointed to visit the premises of defendant. Pursuance thereto raid was conducted at premises no. 2 and 3 of defendant where alleged counterfeit products of LANCOME i.e. 3 and 1 were recovered respectively., however no product of LANCOME was found at the premises no.1 of defendant.
4. Pursuant to notice issued defendant appeared and filed the written statement. It is submitted that there is no cause of action against the defendant, as the defendant was not selling the product of the plaintiff. The products were owned by the beauty advisors of the defendant shop for their personal use. The report of local commissioner is biased and wrong and defendant informed the local commissioner that the products were original and inspite of the information local commissioner mechanically did his job. It is further submitted that the suit is not maintainable either in law or on facts, it has been filed with malafide and on false assertions and vitiated by the plaintiff's willful suppression and concealments. The alleged cause of action in the plaint is purely imaginary and the same has been intentionally placed with a view to harass the answering defendant. The plaintiff has instituted the instant suit out of business rivalry and jealousy. It is planned act by the plaintiff to finish the small business men who are trying to earn their living honestly. On merits the case of the plaintiff was denied in toto and the contents of the preliminary objections were reiterated. Rest of the contents of the plaint are denied.
TM no. 13525/16M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 5 of 15
5. From the pleadings the following issues were settled:
1. Whether the defendant has infringed the plaintiff's trademark and / or passed off the goods as those of the plaintiff?OPP
2. Whether the plaintiff is entitled to any damages and / or rendition of accounts? If so, at what extent? OPP
3. Whether there is any cause of action to file the present suit?
OPD
4. Relief.
6. In order to substantiate its case plaintiff Ms. Surbhi Bansal, Constituted Attorney stepped in witness box as PW1. She tendered her evidence by way of an affidavit in lieu of examination in chief Ex. PW1/A. She reiterated the facts mentioned in the plaint and had proved the following documents as under :-
(i) resolution cum authority letter Ex. PW1/1(OSR)
(ii) specimen of plaintiff's products bearing trademark Ex.
PW1/2(colly)
(iii) copy of Glamour magazine of July 2007 Ex.PW1/3
(iv) copy of L'Oreal group statistics of sale growth and financial
standing Ex. PW1/4(colly)
(v) internet download information about plaintiff's mark Ex.
PW1/5.
(vi) specimen of defendant's products is Ex. PW1/6 (colly)
(vii) report of local commissioner Ex. PW1/7
7. She was cross-examined at length by Sh. Neeraj Gogia, ld counsel for defendant. She in her cross-examination stated that she was authorized by the company to represent them on their behalf. Although she was not present at the spot when raid was conducted however advocates engaged by her had informed about defendant activity and seizure of non cataloged and fake goods TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 6 of 15 of the plaintiff company. As to the question how it is differentiated between fake goods and original goods, she answered that it done on the basis of their prices, quality, shapes and moreover there are many products which LANCOME does not manufacture.
8. Plaintiff examined Sh. Rajesh Oberoi, Assistant Examiner from the office of Trademark Registry as PW1 and he produced certified copies of summoned record pertaining to Trademarks Registry, Delhi jurisdiction as Ex. PW2/1 to Ex. PW2/3.
9. In defence, Sh. Vasudev Dewani stepped in witness box as DW1 and tendered evidence by way of affidavit Ex. DW1/A. He relied upon documents as Ex. DW1 (colly). He was cross-examined at length by Sh. S.K. Bansal, ld counsel for plaintiff. Thereafter none appeared on behalf of defendant and defendant's evidence was closed vide order dated 31.05.2017
10. I have heard arguments advanced by Ld counsel for plaintiff and gone through material on record. Despite opportunity granted number of times, none appeared on behalf of defendant for addressing arguments. My issue-wise findings are as under :
ISSUE NO. 1Whether the defendant has infringed the plaintiff's trademark and / or passed off the goods as those of plaintiff? OPP TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 7 of 15
11. The plaintiff has led evidence by way of affidavit of PW1 Ms Surbhi Bansal affirming the averments made in the plaint. The plaintiff over the period of time plaintiff has creating various LANCOME stylized trade mark formats and various LANCOME bearing and formative labels and trade dresses of which the word / mark LANCOME word per se or stylized or artistic is an important key and distinguishing part and the same are collectively referred to as "LANCOME" trade mark / name word per se and stylized and as also the formative labels and trade dresses, the LANCOME trade name all individually as well as jointly. The specimen of plaintiff's products bearing the said trademark has been proved as Ex. PW1/2(colly), copy of Glamour magazine of July 2007 Ex. PW1/3, copy of L'oreal group statistics of sale growth and financial standing Ex. PW1/4(colly), internet download information about plaintiff's mark Ex. PW1/5. The specimen of defendant's product proved as Ex. PW1/6 (colly) and report of local commissioner Ex. PW1/7. The plaintiff also examined Sh. Rajesh Oberoi, Assistant Examiner from Trademarks Registry as PW2 who proved plaintiff's registration of trademark as Ex. PW2/1 to Ex. PW2/3.
12. On the other hand, defendant examined Sh. Vasudev Dewani as DW1. He in his evidence by way of affidavit relied upon invoices mark DW1/1a to DW-1 (colly). However perusal of record reveals that the documents filed with affidavit as annexure DW-1(colly) was not filed with the written statement so they were not read here. This witness was cross-examined by Sh. S.K. Bansal, ld counsel for plaintiff.
13. The plaintiff has claimed that the trademark / label LANCOME with TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 8 of 15 respect to cosmetics industries is recognized as well as a well known trademark within the meaning of the provisions of Section 2(i) (zg) of the Trade Mark Act 1999. The defendant was fully aware of plaintiff's rights, goodwill, reputation etc and have adopted and started using the impugned trademark / labels dishonestly with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff. There is no rebuttal to the testimony of plaintiff and the plaintiff has therefore established from the record that defendant's use of impugned trademark LANCOME in relation to cosmetics and related products are deceptively similar marks to the plaintiff's trademarks duly registered under Nos. 128980, 128986, 144882, 128980, 489396, 643586, 643587 amounts to infringement of registered trade mark of the plaintiff under Section 29 of Trade Marks Act 1999 and also amounts to passing off under Section 27 (2) of the Trade Marks Act, 1999 and Copyright Act.
14. In order to constitute an infringement, the act complained of must fulfilled the following requirements :
(i) The mark used by the person must be either identical with or deceptively similar to the registered trademark.
(ii) The goods in respect of which it is used must be specifically covered by the registration
(iii) The use made by the mark must be in the course of areas covered by the registration.
(iv) The use must be in such manner as to render it likely to be taken as being used as a trademark.
15. Section 29 of the Trade Mark Act 1999 accords special protection to the registered trademark and grants an injunction even if the goods of the defendant are similar or dissimilar. Section 29 of the Act is as under:-
TM no. 13525/16M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 9 of 15
29. Infringement of registered trade marks.--
(1) A registered trade mark 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 trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark 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 because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark 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--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--TM no. 13525/16
M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 10 of 15
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
16. Further the law of passing off provides a remedy against a false representation tending to deceive customers into believing that the goods which the defendant is selling are really the plaintiff's. The false representation may be by statement or by conduct i.e. by adopting the distinctive mark, name, design, get up or appearance of another goods. The basic question in this tort is that whether defendant conduct is such as to tend to misled the public to believe that the defendant's business is the plaintiff's or to cause confusion between the activities of the two. The essential characteristics such as (a) misrepresentation,
(b) made by person in the course of trade, (c) to the prospective customers (d) TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 11 of 15 which is calculated to injure the business or goodwill of traders (e) which causes actual damage to business or goodwill of the person by whom the action is brought are to be present so at to create a valid cause of action for passing off.
17. In present case, it has been established on record that defendant was engaged into a line of business where the selling of the products bearing trade mark "LANCOME" can not be ruled out. The only question remains whether these goods /products were sourced from original and were merely being retarded or the source was from illegitimate source which could be counterfeit causing damage to the plaintiff. Though in written statement defendant has taken plea that the products were original and the said fact was also informed to Local commissioner. However, defendant has not been able to show any purchase bills which could show that he is procuring goods from legitimate source for the purpose of reselling but yet in his written statement he claims that the products were original. If there is no legitimate purchase how can there be sale of legitimate products. Under these circumstances a cloud of doubt is casted over the activities of trade of the defendant even though no evidence of conclusive nature could be mustered but yet the plaintiff under its own rights is entitled to a direction against the defendant to resist from selling any counterfeit goods bearing the tradename /trade mark of the plaintiff. The plaintiff is entitled for protection of its trademark "LANCOME" accordingly this issue is decided in favour of plaintiff.
ISSUE NO. 2 and 32. Whether the plaintiff is entitled to any damages and / or rendition of accounts? If so, at what TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 12 of 15 extent? OPP
3. Whether there is any cause of action to file the present suit? OPD
18. Both the issues are taken up together being interconnected. The plaintiff has claimed a decree of rendition of accounts of profits illegally earned by defendant by use of mark / logo / label LANCOME from selling impugned goods alongwith damages. However, it is settled law that though the plaintiff has not proved the actual damages suffered by it on account of infringement by the defendant but it is open for the court to award punitive damages for the conduct of the defendant with the objective of deterring future egregious conduct with a note of caution emphasizing that the punitive damages must rationally relate to the award of compensatory damages. Both the parties have neither lead any evidence in support of the rival contentions nor any arguments were addressed on these issues. The plaintiff has failed to show some particular benefit which has accrued to the defendant and further failed to prove by leading evidence that it has suffered actual loss. In these set of circumstances no decree for rendition of accounts can be passed in this case, however, damages can be awarded on the basis of estimation. In consideration of totality of circumstances and low turnover of the defendant, it would be expedient if a sum of Rs. 50,000/-are awarded as damages in favor of plaintiff against the defendant. Issue no. 2 is decided accordingly.
19. Ld counsel for plaintiff argued that in the first week of May 2014 plaintiff came across the impugned goods of the defendant in the markets of New Delhi and the present suit was filed on 17.05.2014 and the cause of action is still TM no. 13525/16 M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 13 of 15 continuing and is accruing day by day and shall continue to so accrue till the defendant cease with impugned adoption and user. Though defendant put his appearance at the stage till recording of defendant evidence but thereafter did not turn up. Hence issue no. 3 is also decided in favour of plaintiff.
RELIEF
20. In view of the above, suit of the plaintiff is decreed for permanent injunction and recovery of damages of Rs.50,000/- against the defendant. Defendant by himself also through their individual proprietors / partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on its behalf are hereby permanently restrained from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the word / mark LANCOME or any other word / mark identical with or confusingly similar thereto as a trade mark, material part of its trade name or in any other manner whatsoever in relation to its impugned goods and business of cosmetics and toiletries, perfumes, hair care products and beauty products including make up preparations and accessories used thereof and other allied/related products and from doing any other acts or deeds amounting to or likely to infringement of plaintiff's registered trade mark LANCOME (word mark) under no. 128986, 144882, 128980, 489396, 643586, 643587 in class 3 and passing off as those of plaintiff's.
TM no. 13525/16M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 14 of 15
21. Decree sheet be prepared on filing of advolorum court fee. Plaintiff shall also be entitled to costs and costs to be quantified as per rules. File be consigned to record room.
Pronounced in open Court
on 16.03.2018 (Sumit Dass)
Additional District Judge-01
NDD/PHC/New Delhi/16.03.2018
TM no. 13525/16
M/s. Lancome Parfums Et Beaute & Cie vs. M/s Shree Prem Cosmetics Page no. 15 of 15