Delhi District Court
M/S L'Oreal vs Bansal Das Mohan Lal on 8 July, 2024
IN THE COURT OF MR. SATYABRATA PANDA, ADJ-04,
PATIALA HOUSE COURTS, NEW DELHI
CS No.449/2019
Date of Institution: 02.11.2017
Date of Arguments: 08.07.2024
Date of Judgment: 08.07.2024
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
Vs.
Bansal Das Mohan Lal
2844, Pratap Market, Sadar Bazar,
Delhi-110006.
Also as:
Naresh K. Jain,
Trading as Bansal Das Mohan Lal,
2844, Pratap Market, Sadar Bazar,
Delhi-110006.
Also at:
5401, N/16, Pratap Market, Sadar Bazar,
Delhi-110006.
.....Defendant
08.07.2024
Present: Sh. Aviral Srivastava, Ld. Counsel for the plaintiff
through VC.
JUDGMENT (ORAL)
CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 1 of 13
1. Heard the ex parte submissions of the Ld. counsel for the plaintiff.
2. The plaintiff has filed the present suit for permanent injunction restraining infringement of trademarks and passing of, delivery up, and rendition of accounts etc.
3. The case of the plaintiff as pleaded in the plaint is as follows. The plaintiff is a company incorporated in France. The plaintiff is engaged in the business of manufacture, distribution and sale of wide range of hair care, skin care, toiletries and beauty products as stated in detail in paragraph 2 of the plaint. The plaintiff since about 1910- 1915 has been using the mark L'OREAL. The plaintiff is also owner and proprietor of the well known mark 'MAYBELLINE'. In the year 2009, the plaintiff in relation to its product of lip balm adopted and started using trademark BABY LIPS with or without conjunction trademark MAYBELLINE. The visual depiction of the said trademark BABY LIPS is as under:
CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 2 of 134. In paragraph 14 of the plaint, the plaintiff has mentioned the details of its trademark registrations in India. One of CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 3 of 13 the trademark registration is of the trademark BABY LIPS which is as follows:-
Trademark Date of registration Registration Goods BABY LIPS 11/11/2009/Renewed 1882848/03 LIP GlOSS, and subsisting till LIP 11/11/2019 COLOURS AND LIP BALM BEING COSMETIC PRODUCTS INCLUDED IN CLASS 03
5. It is further stated that the plaintiff also holds copyright in the artwork in the mark BABY LIPS. The plaintiff's product under the trademark BABY LIPS is duly registered in over 100 countries. The said trademark is a globally valued trademark for the plaintiff. The plaintiff has its business running into billions of dollars worldwide. The plaintiff has been using its trademark continuously, openly and exclusively. The plaintiff's trademark BABY LIPS is distinctive of the plaintiff's products and has acquired secondary significance.
6. It is further stated that the defendant is engaged in trading of cosmetics and toiletries etc. The defendant is also an e- retailer who has been selling its impugned goods of identical nature through online platforms. The defendant has adopted and started using the infringing marks of CRAZYLIPS and BABY LIPS. These marks are visually CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 4 of 13 and phonetically identical and similar to the plaintiff's trademark BABY LIPS and are being used in respect of identical goods. The defendants was also selling its goods through online mode which could be accessed from within the territorial jurisdiction of this court. The visual depiction of the impugned goods carrying the infringing trademark is shown as follows:
7. On this basis, the plaintiff has prayed for the following relief:
"40. The plaintiff, therefore, prays:CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 5 of 13
a) For a decree of permanent injunction restraining the defendant 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 their behalf from using, selling, soliciting, exporting, displaying, advertising offline or online selling, soliciting, networking through online platforms like FLIPKART, AMAZON, SHOPCLUES, e-bay etc or by any other mode or manner dealing in trademarks/labels/packaging/trade or using the dress viz CRAZYLIPS, BABY LIPS (with or without word "MAYBELLINE"), and/or any other word/mark/label/packaging/trade dress which may be identical with and/or deceptively similar to the plaintiff's said trademark BABY LIPS (with or without word "MAYBELLINE") and/or other MAYBELLINE formative trademark/labels and mark/labels/packaging in relation to their goods and business of Cosmetics and beauty products including make-up preparations, lip balm, lip gloss, lipstick, petroleum jelly, and accessories used thereof and other allied/related products and from doing any other acts or deeds amounting to or likely to:-
(i) Infringement of plaintiff's registered trademarks/labels under No. 12045 in class 03, 145497 in class 03, 928652 in class 03, 935901 in CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 6 of 13 class 03, 1142165 in class 03 and under No. 1653813 in class 03, BABY LIPS under no.1882848 in class 03.
(ii) Passing off and violation of the plaintiff's rights in the plaintiff's said trademark/labels/packaging/trade dress BABY LIPS (with or without word "MAYBELLINE") and/or other MAYBELLINE trademark/labels.
(iii) Infringing the Copyright in the artwork of the plaintiff's BABY said LIPS trademarks/labels/packaging (with OF without word "MAYBELLINE") and/or other MAYBELLINE formative trademark/labels.
b) Restraining the defendant from disposing off or dealing with its assets including their shops/workshop/factory at the addresses mentioned in the Memo of Parties and their stocks-in-trade or any other assets as may be brought to the knowledge of the Hon'ble Court during the course of the proceedings and on the defendant' disclosure thereof and which the defendant is called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135 (2) (c) of the Trade Marks Act, 1999 as it could adversely effect the plaintiff's ability to recover costs and accounts of profits.CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 7 of 13
c) For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned trademarks/labels or any other word/mark which may be identical with or deceptively similar to the plaintiff's said trademarks/labels including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
d) For an order for rendition of accounts of profits earned by the defendant by its impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.
e) For order of specific take-down of the impugned contents related to the impugned goods with respect to the impugned mark/label from the online platforms like FLIPKARI, AMAZON, SHOPCLUES, e-bay etc and other internet sources etc.
f) For an order for cost of proceedings and
g) For such other and further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
8. Vide order dated 03.11.2017, ex parte injunction was granted in favour of the plaintiff restraining the defendant CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 8 of 13 from using the marks CRAZYLIPS or BABY LIPS (with our without the word MAYBELLINE) and a Local Commissioner was also appointed to seize the infringing goods from the premises of the defendant.
9. The Local Commissioner executed the commission and has filed his report dated 02.01.2018.
10. The defendant initially appeared in the suit and filed its written statement, in which it is inter alia stated that the defendant never manufactured, sold or dealt with in the impugned products bearing the impugned trademarks and as such, the defendant has sought dismissal of the suit.
11. Subsequently, the proceedings remained pending for one reason or the other and the defendant stopped appearing in the suit. Vide order dated 08.02.2024, the defendant was proceeded ex parte.
12. Since the defendant was proceeded ex parte , Ld. counsel for the plaintiff relied upon the judgments of the Hon'ble High Court of Delhi in Imagine Marketing vs. Green Accessories, CS (Comm) No.564/2020, decided on 21.03.2022; Disney Enterprises Inc. Vs. Balraj Mutheja, CS (OS) No.3466/2012, decided on 20.02.2014 and 2013 (SS) PTC 414 (Del) and submitted that since the defendant was proceeded ex parte, there was no necessity of leading any ex parte evidence and the matter could be straight away put up for final arguments. Accordingly, the matter was put up for final arguments.
CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 9 of 1313. Ld. counsel for the plaintiff has made his ex parte submissions.
14. Ld. counsel has submitted that the plaintiff's trademark BABY LIPS is undisputedly the plaintiff's registered trademark. Ld. counsel has referred to the report of the Local Commissioner and has submitted that the infringing goods were clearly seized from the defendant's premises. It is submitted that impugned mark of CRAZY LIPS as visually portrayed by the defendant on identical goods was deceptively similar to the trademark BABY LIPS of the plaintiff. It is submitted that the defendant has used the same font and has also displayed the letters of the mark in a manner which is identical or deceptively similar to that of the plaintiff's trademark. It is further submitted that the impugned mark CRAZY LIPS is evidently very similar to the plaintiff's trademark BABY LIPS. It is submitted that not only this but the Local Commissioner also seized goods carrying the trademark of BABY LIPS and these products were counterfeit. It is submitted that as such the defendant has not only infringed the trademark of the plaintiff by using the mark CRAZY LIPS but was also selling counterfeit products under the mark BABY LIPS. It is submitted that although in its written statement, the defendant has sought to claim that it was not manufacturing, selling or dealing in the products carrying the infringing trademark, however, the seizure of the impugned products as evident from the Local Commissioner's report clearly falsifies this. It is submitted CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 10 of 13 that as such, the plaintiff would be entitled for decree for permanent injunction. It is submitted that the defendant also abandoned the suit and did not come forward at the stage of trial and was thus proceeded ex parte. It is submitted that the defendant stopped appearing in the suit so as to only evade the disclosure of the exact extent of infringement and to evade rendition of accounts. It is submitted that as such, the defendant is liable to pay exemplary damages to the plaintiff.
15. I have considered the submissions of the ld. counsel for the plaintiff and I have perused the record.
16. From the report of the Local Commissioner, it has clearly come out that the products of lip balm containing the mark CRAZY LIPS and BABY LIPS were seized. The defendant has also abandoned the suit and has not come forward to give any defence. As submitted by the Ld. counsel for the plaintiff, the products containing the trademark BABY LIPS seized from the premises of the defendant were counterfeit. The defendant has not come forward to dispute this. In so far as the products carrying the mark CRAZY LIPS is concerned, this mark is deceptively similar to the registered trademark BABY LIPS of the plaintiff. It is seen that the defendant has copied the same style which is used in the plaintiff's trademark. The defendant has used the same font and trade dress is also similar in nature. Further, the words CRAZY LIPS are phonetically very similar to the words BABY LIPS. The defendant was thus dealing with the counterfeit CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 11 of 13 products carrying the mark BABY LIPS and along with this was also using the deceptively similar trademark of CRAZY LIPS. Clearly, the defendant was doing this with the dishonest intention of riding on the goodwill of the plaintiff. The defendant has abandoned the suit so as to evade the rendition of accounts and disclosing the true extent of the infringement. The defendant cannot be permitted to take advantage of his evasion of the suit proceedings.
17. Accordingly, the plaintiff would be entitled to decree of permanent injunction in terms of the prayer clause 40(a) of the plaint. The plaintiff is also entitled for order of delivery up of the goods containing the infringing marks of CRAZY LIPS and BABY LIPS as prayed for in prayer clause 40(c) of the plaint. The plaintiff is also entitled to decree directing the defendant to take down the contents relating to the impugned goods and impugned marks from its online platform as prayed for in prayer clause 40(e) of the plaint.
18. In so far as the damages are concerned, it has clearly come out that the defendant was dealing with goods containing the infringement trademark. The local commissioner had seized 108 items carrying the infringing marks. The true extent of the infringement could not come out due to evasion by the defendant of the suit proceedings. It cannot be ruled out that the infringement would have been on a larger scale, however, the defendant has evaded the suit proceedings to avoid complete disclosure. The defendant CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 12 of 13 cannot take advantage of this and the case calls for punitive damages. In the facts and circumstances of the case, I deem it fit proper to grant damages of Rs. 2,00,000/-.
19. Accordingly, decree is passed in favour of the plaintiff and against the defendant for permanent injunction in terms of prayer clause 40(a) of the plaint, for delivery up in terms of prayer clause 40(c) of the plaint, and directions to take down content from the online platform as per prayer clause 40(e) of the plaint. Damages of Rs. 2,00,000/- are decreed to the plaintiff. Costs are decreed in favour of the plaintiff. The pleader's fees is fixed as Rs.30,000/-. The costs shall also include the Local Commissioner's fees of Rs.67,500/-.
20. Let the decree sheet be drawn up accordingly.
21. File be consigned to record room after due compliance.
(SATYABRATA PANDA) Additional District Judge-04 Judge Code- DL01057 PHC/New Delhi/08.07.2024 CS No.449/19 M/s L'Oreal Vs. Bansal Das Mohan Lal Page 13 of 13