Delhi District Court
M/S L'Oreal vs Mr. Harish on 12 April, 2023
DLND010000442013
IN THE COURT OF ADDITIONAL DISTRICT JUDGE- 01,
NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
Presided over by :- MS. VIJETA SINGH RAWAT (DHJS)
T.M. No. 362/2019
M/s L'Oreal
14, rue Royale, 75008,
Paris, France
Technical office at :
C-33, First Floor,
Above Zodiac Show Room,
Opp. PVR Plaza, Connaught Place,
New Delhi - 110001
.... Plaintiff
Versus
Mr. Harish
House No. 327,
Top Floor, Gali Shravan,
Mahavir Bazar, Teliwara,
Delhi - 110006
.... Defendant
Suit presented on : 23.08.2013
Arguments concluded on : 25.03.2023
Judgment pronounced on : 12.04.2023
CS (Comm) NO. 362/19
M/s L'Oreal S.A. Vs. Harish Page 1 of 24
EX-PARTE JUDGMENT
1.The present suit u/s 134 and 135 of The Trademarks Act (hereinafter, referred to as "TM Act") and u/s 55 of The Copyright Act (hereinafter, referred to "Copyright Act".) has been filed by L'OREAL initially seeking a "John Doe" order whose identity was subsequently established as Sh. Harish (hereinafter, referred to as the defendant) seeking a decree of permanent injunction restraining the defendant from infringing the plaintiff's registered trademark L'OREAL or any other word / mark identical with or deceptively similar to plaintiff's aforesaid trademark, passing off and violating the plaintiff's rights in the aforesaid trademark, violating the plaintiff's proprietary rights in its trademark namely L'OREAL ; restraining the defendant from infringing plaintiff's copyright in its L'OREAL label, restraining the defendants from disposing off or dealing with their assets ; requiring the defendant to deliver up all the impugned finished and unfinished materials bearing the trademark L'OREAL and for rendition of accounts alongwith damages and cost of litigation.
2. The plaintiff has claimed to be a reputed company having worldwide goodwill in the business of manufacture, distribution and sale of wide range of hair care, skin care, toiletries and beauty products including perfumery preparations, essential oils, cosmetics, preparations for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 2 of 24 shampoos, hair sprays, non-medicated preparations for the care and the beauty of the hair, non-medicated preparations for the care and the beauty of the skin, toilet soaps, dentifrices, sun-tan preparations, personal deodorants and other allied / related products. It is the case of the plaintiff that for aforesaid business it bonafidely adopted word / mark L'OREAL (word per se, stylized, formative / bearing) and labels as a trademark since 1910, and thus, the aforesaid word / mark also has all the trappings of an invented mark. The plaintiff has stated that by bonafide, continuous, commercial, open, exclusive and uninterrupted usage of the word / mark as its trademark, has also acquired global business, goodwill and reputation apart from proprietary rights therein. It has been stated that the plaintiff has been operational in 130 countries including India. The following trademarks is stated to have been duly registered also in India:
S. Trade Reg. Date of Status Goods No. Mark No. registration & Class 1 L'OREAL 165778 14.09.1954 Registration Perfumery, soaps, (word 03 valid upto non-medicated toilet mark) 14.09.2010 preparations, shampoos, toilet preparations for the permanent waving of hair, toilet preparations (coloured and otherwise) for the rinsing of hair, dyes for hair and beards, non-medicated hair CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 3 of 24 lotion 2 L'OREAL 473298 08.06.1987 Registration Perfumery (LABEL) 03 valid upto preparations, 08.06.2018 essential oils, cosmetics, preparations for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, non-
medicated preparations for the care and the beauty of the hair, non-
medicated preparation for the care and the beauty of the skin, toilet soaps, dentifrices, sun tan preparations, personal deodorants 3 L'OREAL 499858 25.10.1988 Registration Perfumery PROGRE 03 valid upto preparations, SS 25.10.2009 essential oils, (word cosmetics, mark) preparations for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, non-
medicated preparations for the care and the beauty of the skin, toilet soaps, dentifrices, personal deodorants included in Class 3 4 L'OREAL 477223 20.08.1987 Registration Perfumery CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 4 of 24 PLENTIT 03 valid upto preparations, UDE 20.08.2008 essential oils, (word cosmetics, mark) preparations for colouring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, hair sprays, non-
medicated preparations for the care and the beauty of the hair non-
medicated preparations for the care and the beauty of the skin, toilet soaps, dentifrices, sun tan preparations, personal deodorants 5 L'OREAL 1493028 04.10.2006 Registration Perfume, Toilet SOLAR 03 valid upto Water, Gels, Salts EXPERTI 04.10.2016 for the bath and SE shower not for medical purposes, toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the ahnds, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 5 of 24 Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 6 L'OREAL 1493024 04.10.2006 Registration Perfume, Toilet PREFER 03 valid upto Water, Gels, Salts ENCE 04.10.2016 for the bath and shower not for medical purposes, toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 7 L'OREAL 1714865 28.07.2008 Registration Perfume, Toilet ULTRA 03 valid upto Water, Gels, Salts VOLUM 28.07.2018 for the bath and E shower not for CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 6 of 24 COLLAG medical purposes, EN toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 8 L'OREAL 1778491 28.01.2009 Registration Perfume, Toilet EXTRA 03 valid upto Water, Gels, Salts VOLUM 28.01.2019 for the bath and E shower not for COLLAG medical purposes, ENE toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 7 of 24 Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 9 L'OREAL 1832958 25.06.2009 Registration Perfume, Toilet STRAIG 03 valid upto Water, Gels, Salts HT 25.06.2019 for the bath and PERFEC shower not for T medical purposes, toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 8 of 24 personal use included in Class 03 10 L'OREAL 1836274 03.07.2009 Registration Perfume, Toilet (Label) 03 valid upto Water, Gels, Salts 03.07.201 for the bath and shower not for medical purposes, toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 11 L'OREAL 1887201 20.11.2009 Registration Perfume, Toilet 5 03 valid upto Water, Gels, Salts PROBLE 20.11.2019 for the bath and MS, 1 shower not for SOLUTI medical purposes, ON toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 9 of 24 face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03 12 L'OREAL 1832961 25.06.2009 Registration Perfume, Toilet 18 valid upto Water, Gels, Salts 25.06.2019 for the bath and shower not for medical purposes, toilet Soaps, Body Deodorants, Cosmetics namely Creams, Milks, Lotions, Gels and Powders for the face, the body and the hands, Sun Care Preparations (Cosmetic Products), Make up preparations, Shampoos, Gels, Sprays, Mousses and Balms for the Hair styling and Hair Care and Hair Lacquers, Hair Colouring and Hair CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 10 of 24 Decolorant Preparations, Permanent Waving and Curling Preparations, Essential Oils for personal use included in Class 03
3. It has been claimed that the plaintiff's trademark / trade name have become distinctive and are associated and have acquired a secondary significance with the plaintiff. The plaintiff has heavily invested in R&D and its products are of highest quality, safety, innovation and reliability. The plaintiff has also averred that it has also invested heavily in advertising its goods under the aforesaid trademark / trade name. But, now the plaintiff is aggrieved that the defendant has adopted and started using plaintiff's trademark L'OREAL in relation to cosmetics including facial kits and allied / related goods in complete violation of the plaintiff's statutory and common law right. It has specifically been mentioned that the impugned trademark adopted and being used by the defendant is identical and deceptively similar (phonetically, visually, structurally and in its essential features) to the trademark L'OREAL of the plaintiff. Also, it is the case of the plaintiff that by using the impugned trademark upon impugned goods (cosmetics and skin products), the defendant has also tried to mislead the customers qua the origin of impugned goods. The plaintiff is aggrieved that by his acts, the defendant has not only infringed and violated the rights of the plaintiff but CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 11 of 24 by doing so, has also diluted the reputation and goodwill of the plaintiff. It has been stated that the defendant has unfairly gained at the cost of plaintiff's reputation and the loss of business and reputation of the plaintiff cannot be assessed in monetary terms. It has also been stated that the defendant has been supplying the impugned goods also the dealers /retailers and distributors in the markets of New Delhi where the defendant also has its business.
4. Vide order dated 23.08.2013, Ld. Predecessor of this Court, allowed application under Order XXVI Rule 9 and Order XXXIX Rule 7 of CPC read with Section 151 of CPC and a Local Commissioner was appointed to seize all impugned products and prepare an inventory of the same.
5. Thereafter, the Ld. Local Commissioner, executed the commission on 24.08.2013 and seized 100 boxes of L'OREAL Ultra Diamond Facial Kit (A Set of 5 jars per box) and 350 boxes of L'OREAL Ultra Diamond Facial Kit (A set of 5 jars per box) from House no. 327, Top floor, Gali Shravan, Mahavir Bazar, Teliwara, Delhi - 110006.
6. The defendant did not enter appearance despite service of summons and vide order dated 07.04.2015 was proceeded ex- parte.
7. In support its case, the plaintiff examined Sh. Nirmal CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 12 of 24 Singh, Constituted Attorney of the plaintiff as PW1. He tendered his evidence by way of affidavit Ex. PW1/A and relied upon following documents :
Sl. no. Name of the document Exhibited as
1. True representation of the Ex. PW1/1 (colly) plaintiff's Trademark / label
2. True representation of impugned Ex. PW1/2 Trademark / label of the defendant
3. List of plaintiff's registered Ex. PW1/3 Trademark alongwith copies of legal proceedings certificates of plaintiff's registered trademark in India
4. Downloads from the plaintiffs Ex. PW1/4 (Colly) website
5. Copies of various advertisement Ex. PW1/5 (colly) material and other sales promotional literature of the plaintiff as published and circulated in India
6. Copy of Power of Attorney in Ex. PW1/6 (colly) favour of Ms. Surbhi Bansal (OSR)
7. Copy of Power of Attorney in Ex. PW1/7 (colly) favour of Sh. Nirmal Singh (OSR)
8. Copy of Local Commissioner Ex. PW1/8 report
9. Copy of invoices of the plaintiff Ex. PW1/9 (colly) agency Anand Enterprises
10. Copy of VAT invoices of the Ex. PW1/10 (colly) plaintiff
11. Copy of license agreement Ex. PW1/11 (colly) CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 13 of 24
12. Copy of documents in support Ex. PW1/12 (colly) of plaintiff business in New Delhi Jurisdiction
13. Details of world wide Mark A registration / application of the plaintiff
14. Statistic / report showing the Mark B plaintiff's sales, growth and economic strength
15. Memorandum of Article of Mark D Association
8. The Court has heard arguments advanced by Ld. Counsel for plaintiff and gone through the material available on record.
9. Section 28 and 29 of the Trademarks Act reads as under :
"28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 14 of 24 permitted use) as he would have if he were the sole registered proprietor.
Section 29 in The Trade Marks Act, 1999
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
(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.the trade mark is registered; and (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 15 of 24 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--
(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.
10. In Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai Civil Appeal no. 404 of 2022 decided on 19.01.2022, the Apex Court has once again, clarified the law u/s 29 to 31 of TM Act, and observed as under :
"43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 16 of 24 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 it is likely to cause confusion on the part of the public."
11. Further, placing reliance upon Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories 1965 SCR (1) 737 the Court has also pointed out the distinction between the causes of action and rights of relief based upon passing off and infringement of registered trademark as it has held as under :
"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 trade mark, 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 a 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 trade mark of the plaintiff is a sine qua non in the case of an action for CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 17 of 24 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 a 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.
46. Again, while considering the provisions of Section 21 of the 1940 Act, this Court in the case of Ruston & Hornsby Limited (supra), observed thus:
"4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may by so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.
5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get−up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham, L.C., in Millington v. Fox [3 My & Cr 338] held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 18 of 24 injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule.
6. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. [58 RPC 147 at 161] :
"The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing−off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing−off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive."
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 the 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 is such as is likely to deceive or cause confusion."
CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 19 of 2412. In present case, the plaintiff has relied upon documents Ex. PW1/3 and Ex. PW1/4 (colly) to establish that he is the registered owner of trademarks / labels L'OREAL to which protection has been accorded u/s 29 of Trademark Act. The genuineness of the documents remained non-traversed as none on behalf of the defendant appeared to cross examine the plaintiff's witness. The testimony of PW1 that the nature of goods manufactured and sold by the plaintiff as well as those being dealt with by the defendant are same is also uncontroverted. Comparison of Ex. PW1/1 (colly.) (representation / photographs of plaintiff's trademarks / labels) with Ex. PW1/2 (photographs / representation of impugned trademarks / labels of defendant) which are not controverted also leads to an inference that the trademarks / labels of the plaintiff L'OREAL are same / deceptively similar. Even the Local Commissioner's report Ex. PW1/8 corroborates the claim of the plaintiff qua seizure of such impugned goods from the possession of the defendant. The report remained un-challenged. Thus, as the trademarks of the defendant are identical with the registered trademarks of the plaintiff and the goods are identical, a presumption qua likelihood of confusion on the part of the public is liable to be drawn. This presumption was not rebutted as no evidence was led by the defendant being ex-parte. Hence, the plaintiff has been able to establish infringement of its registered trademarks /labels L'OREAL.
CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 20 of 2413. As regards the issue of passing off, the testimony of the plaintiff qua the trademarks / labels identical with that of the plaintiff being used upon similar products in order to wrongly link their products with those of the plaintiff and mislead the customers qua the origin of the goods has also remained unrebutted.
14. Further, the plaintiff has also sought relief to restrain the defendant from infringing upon the registered copyright of L'OREAL. However, no such document has been adduced in evidence to establish that the plaintiff is entitled to any protection under the Copyright Act qua the artistic work in compliance with Copyright Act. However, common law rights qua it has been asserted.
15. As regards the claim for a decree for rendition of accounts of profits illegally earned by defendant by use of mark / logo / label L'OREAL from selling deceptively similar goods as well as by infringement of copyright no evidence was led. However, considering that the Local Commissioner appointed by the Court in his report did find counterfeit goods in the possession of the defendant, this Court deems it appropriate that the plaintiff should be compensated with damages. Reliance is placed upon Disney Enterprises, INC vs. Mr. Rajesh Bharti & Ors, CS(OS) 1878/2009 & I.A. 12833/2009 decided by High Court of Delhi on 13.02.2013 where it has been held as under:
CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 21 of 24'...15. Moreover, in India courts are sensitive to the growing menace of infringement and have started granting punitive damages even in cases where due to absence of the defendants exact figures of sales by the defendants under the infringing copyright and/or trademark exact damages are not available. This Court in The Heels Vs. V.K. Abrol & Anr., CS(OS) 1385/2005 decided on 29th March, 2006 while granting damages has held "This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that an enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable."
16. Further, this Court in Microsoft Corporation Vs. Rajendra Pawar & Anr., CS(OS) 530/2003 decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."
17. This Court is also of the view that before award of damages it is not necessary that the plaintiff must show some particular benefit has accrued to the defendant or that the plaintiff must satisfy the Court by leading evidence that it has suffered actual loss. In Microsoft Corporation Vs. Ms. K. Mayuri & Ors., 2007 (35) PTC 415 Del., this Court has held "The practice of grant of CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 22 of 24 exemplary damages needs to be strengthened particularly in those cases where flagrant infringement is found. Such an exercise of power is not to be fettered by any requirement that the plaintiff must show some particular benefit which has accrued to the defendant or that the plaintiff must satisfy the court by leading evidence that he has suffered actual loss. In a case where the plaintiff proves such actual loss, he would be entitled to the same. However, even without such a proof, in case of flagrant infringement, the court has the complete discretion to make such award of damages as may seem appropriate to the circumstances, so that it acts as deterrent. In some cases, it is not possible to prove the actual damages, namely, that there is a normal rate of profit or that there is a normal or establish licensed royalty. Yet, clearly, the damages have to be assessed."
16. As it is apparent that the plaintiff's trade mark/ trade name/ label/ copyright is well known and is therefore, required to be protected and hence, considering that the nature of counterfeit goods would have adversely impacted the business and reputation of the plaintiff, a nominal compensatory and punitive damage @Rs.2,00,000/- is fixed to be recoverable from the defendant.
RELIEF
17. In view of the above discussions, defendant is restrained by itself / themselves as also through his / their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on his/their behalf from using, selling, soliciting, exporting, CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 23 of 24 displaying, advertising or by any other mode or manner dealing in or using the impugned trade marks L'OREAL with or without the word PARIS or any other word/mark which may be identical with and/or deceptively similar word/mark to the plaintiff's said trade mark/label/trade name/Copyright in L'OREAL in relation to its impugned goods and business of cosmetics including facial kit an other related/allied products and from doing any other acts or deeds amounting to or likely to infringe plaintiff's registered trade mark as mentioned in para 6 of the plaint and also passing off their goods as those of the plaintiff.
18. Decree sheet be prepared on filing of ad valorem Court fee. Plaintiff shall also be entitled to costs of the Local commissioner as per rules.
19. File be consigned to record room.
Pronounced in open Court on 12.04.2023 (Vijeta Singh Rawat) Additional District Judge-01, New Delhi District, Patiala House Courts, New Delhi CS (Comm) NO. 362/19 M/s L'Oreal S.A. Vs. Harish Page 24 of 24