Delhi District Court
Anuj Kumar Jain vs . Hindustan Unilever Ltd. on 3 January, 2015
IN THE COURT OF SH. DEVENDER KUMAR, ADJ-04, NEW DELHI DISTRICT,
PATIALA HOUSE COURTS, DELHI.
TM / CS No. 30/14
Anuj Kumar Jain Vs. Hindustan Unilever Ltd.
03.01.2015
ORDER :
Vide this order, I shall dispose off two cross interim applications under order 39 rule 1 & 2 CPC filed by both parties against each other in this suit for declaration and permanent injunction filed by the plaintiff against the defendant and a counter claim made by the defendant thereby seeking dismissal of suit and restraining order against the plaintiff. Arguments on applications heard.
1. It is submitted by Ld. counsel for plaintiff that the plaintiff is a sole proprietor of M/s. Sidhii Cosmetics which is engaged in the business of manufacturing and trading of cosmetics and in continuation of his business in the year 2013, plaintiff honestly and bonafidely conceived and adopted the trademark 'Fine Lovely' (word per se and artistic) and also an artistic label constituted the word mark 'Fine Lovely' and artistic device of a lady and artistic background containing artistic features of getup, writing style, make up etc. of the product. It is further submitted that the trademark/ label 'Fine Lovely' adopted by the plaintiff is an original artistic work within a meaning TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 1/10 of Indian Copyright Act, 1957 and plaintiff is an author, owner and proprietor of copyright therein. It is further submitted that the plaintiff has been using this trademark and copyright bonafidely, honestly, continuously, commercially, openly, exclusively and to the exclusion of others and in the course of trade and business this trademark has earned a good reputation and goodwill in the market and trade. It is further submitted that the goods of the plaintiff are well known in public at large and this trademark and copyright have become distinctive, associated and acquired secondary significance with plaintiff and plaintiff has become the owner and proprietor of this trademark and even has applied its registration which is still pending. It is further submitted that the defendant claims to be a proprietor of trademark / label 'FAIR & LOVELY' in respect of cosmetics but cannot claim proprietary rights in the word / mark 'FAIR & LOVELY' and 'FAIR and LOVELY' formative either as trademarks or otherwise being descriptive, generic and having character, quality, value, purpose and characteristic for which no trademark can be claimed. It is further submitted that the trademark adopted by the plaintiff is under creation and claim of the defendant regarding word / mark FAIR & LOVELY and is an ordinary and monopolized and even common to trade and numerous third parties are using this trademark. It is further submitted that the trademark of the defendant cannot be considered as infringed by adoption of trademark 'FINE LOVELY' by the plaintiff in terms of Section 30 of Trade Marks Act,1999. It is further submitted that the plaintiff has been using this trademark since the year 2013 but defendant has started sending threats to institute legal proceedings on groundless, misconceived and malicious grounds just to hamper the trade and business of the plaintiff in the trade name 'FINE LOVELY' which is not infringed or TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 2/10 violating the right of the defendant but defendant has spoiled the goodwill and reputation of the plaintiff in the market and trade. It is further submitted that the defendant through its agents, distributors and dealers is spreading rumors in the market thereby jeopardizing and ridiculing the plaintiff's business under the said 'FAIR & LOVELY' trademark / label / logo and this act of the defendant is in violation of Section 142 (2) of Trademark Act, 1999. It is further submitted that the defendant may take any action against the plaintiff if there is any violation of any right of the defendant, but it cannot extend any groundless threats and defendant is liable to be restrained.
It is further submitted that the defendant has filed a counter claim thereby seeking injunction against the plaintiff thereby claiming proprietorship rights regarding trademark / label 'FAIR & LOVELY' of the defendant. It is further submitted that as per the registration of trademark 'FAIR & LOVELY', it is clear that the defendant cannot claim any copyright or trademark regarding word 'FAIR & LOVELY' and even the alleged adoption of subsequent changes in the original trademark and logo have not been got registered by the defendant and in the absence of these registrations, no trade mark can be claimed by the defendant. It is further submitted that the defendant has alleged in the written statement / counter claim that the defendant initiated the suit / proceedings against the agents of the plaintiff but neither those litigations have been annexed with this case file nor plaintiff was impleaded as a party to the said litigation due to it is of no use. It is further submitted that even it is assumed for the shake of arguments that the defendant filed the litigation against the agents of the plaintiff, even then it was not required that the agents must have informed the plaintiff about the TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 3/10 litigation filed against them and in the absence of any impleadment of the plaintiff, disclosure of those facts was neither required nor amounts to concealment on the part of the plaintiff. It is further submitted that the trademark of the plaintiff 'FINE LOVELY' is an exclusive work of copyright and trademark of the plaintiff and defendant cannot restrain the plaintiff from using the said trademark and application of the defendant is liable to be dismissed alongwith counter claim and defendant is liable to be restrained from extending any groundless threats to the plaintiff. It is further argued that the plaintiff has a prima facie case on merit and would suffer irreparable loss if no injunction is granted as balance of convenience lies in favour of the plaintiff.
2. On the other hand, Ld. counsel for defendant has opposed this application thereby submitting that the plaintiff has claimed herself to be the proprietor of M/s. Sidhi Cosmetics and this firm has already been restrained on the basis of earlier litigation instituted by the defendant against the plaintiff and in that case plaintiff did not claim that the defendant had been extending any groundless threats to institute any proceedings against the plaintiff, whereas proceedings have already been initiated. It is further submitted that the defendant has earlier filed two suits against the representative / franchisee / agents of the plaintiff and in that suits it was well disclosed that the plaintiff has been doing this business and supplying material to agents and it could not be said that the plaintiff has any right to carry on this business in violation of trademark of the defendant 'FAIR & LOVELY' which is well known trademark in the business and trade. It is further submitted that the plaintiff has filed this suit just to get undue benefits and to overcome from earlier injunction orders TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 4/10 passed by other courts against the plaintiff. It is further submitted that the trademark of the defendant is registered trademark and this trademark was adopted by the defendant way back in the year 1978 and since then the same is being used continuously and uninterruptedly alongwith logos and labels and every change in the word or logo is a copyright in terms of Copyright Act, 1957 and is an innovative work and creation of the defendant. It is further submitted that the plaintiff is the brother of Mr. Amit Jain who is the proprietor of M/s. Vinayak Industries and dealing with the goods bearing the trademark 'Sneha & Lovely', but a settlement was arrived between the parties and even earlier this trademark 'FINE LOVELY' was being manufactured and marketed by Sh. Amit Jain, but after settlement with the defendant by which the brother of the plaintiff has been allowed to use the trademark 'Sneha & Lovely' products and now the plaintiff is trying to take undue benefit of said settlement by using the same trademark 'FINE LOVELY' which was earlier a creation of M/s. Vinayak Industries. It is further submitted that the arguments of Ld. Counsel for plaintiff are misconceived that defendant cannot claim any proprietary rights on the basis of registration of the word 'FAIR & LOVELY' in combination or exclusively or any proprietary rights qua label depicting photograph of women or other rights. It is argued that even the plea of the plaintiff that he is a prior user of the trademark 'FINE LOVELY' or it is an innovative trademark etc. are also misconceived and trademark of the plaintiff is not a trademark in terms of Section 2 (1) (zg) of Trademarks Act, 1999 and even conditions of Section 60 of Copyright Act are not attracted in this case, and any adoption of trademark 'FINE LOVELY' is clear violation of trademark of defendant and plaintiff is liable to be restrained from using this trademark and application of the TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 5/10 plaintiff is liable to be dismissed. It is further argued that the suit of the plaintiff is not maintainable and plaintiff has no prima facie case on merit and is not going to suffer any irreparable loss if injunction is not granted. Rather defendant has a prima faacie case on merit and would suffer irreparable loss if no injunction is granted as balance of convenience lies in favour of defendant.
3. I have heard the arguments and perused the record. Plaintiff has filed this suit under Section 142 of Trade Marks Act, 1999 and under Section 60 of Copyright Act, 1957 thereby seeking declaration and permanent injunction against the defendant from issuing groundless threats to plaintiff. Plaintiff has claimed himself to be the proprietor of trademark / label 'FINE LOVELY' and has stated to be using since the year 2013. Even the plaintiff has applied for registration of this trademark for registration. As per averments of the plaint, it is revealed that in paras 15 & 16 of the plaint, plaintiff has disclosed that the defendant is causing interference in the business activities of the plaintiff being carved out under the said trademark / label 'FINE & LOVELY'. The defendant is allegedly threatening the plaintiff to stop trading under the trademark/ label 'FINE LOVELY', failing which, defendant would institute legal proceedings against the plaintiff and even threats are stated to be groundless, misconceived and malicious. In para 16 of the plaint, plaintiff has alleged that the defendant is spreading rumours and threats in the market through its agents, distributors and dealers etc. to jeopardizing the business of the plaintiff by using this trademark. In para 19 of the plaint, it is revealed that the plaintiff has learnt from the market and trade that the defendant is not keen to withdraw threats and threats are subsisting. In para 20 of the plaint, it is revealed that the agent and representatives of TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 6/10 the plaintiff are telephonically contacting and asking him to discontinue with the said business and trade and extending threats of legal action. In all these photographs, no specific instance has been given by the plaintiff as to when and which representatives of the defendant extended threats which was misconceived or groundless. Further, no specific occasion has been given in the entire plaint against extending legal proceedings by the defendant. As such, plaint of the plaintiff is lacking of it which is a main ground of the plaintiff to this court.
4. Now the issue arises as to whether the plaintiff is entitled for any injunction against defendant or not. Plaintiff has claimed his trademark as an innovative creation and genuine trademark / label 'FINE LOVELY' belonging to the plaintiff which has been challenged by the defendant as violative trademark of the defendant. Admittedly, the trademark 'FAIR & LOVELY' is registered trademark of the defendant since the year 1978 and defendant has been using this trademark since then without any interpretation from any side. Even the defendant has adopted this trademark with some changes during the course of years and even has protected this trademark by filing various litigations against violators. Some of the copies of litigations have been placed on record to prove this fact. Though the plaintiff has not annexed any such document on record to prove that the defendant ever extended any groundless threats to the plaintiff which compelled him to file this litigation, yet the defendant has filed copies of two plaints titled 'Hindustan Unilever Ltd. Vs. S. Kiranchand Jain' and 'Hindustan Unilever Ltd. Vs. Ravi International' and both these cases are pending before the court of Ld. ADJ Sh.Ajay Goel, Tis Hazari Courts, Delhi. Admittedly, these TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 7/10 suits were filed against the agents of the plaintiff and in reply to suit M/s. Hindustan Unilever Ltd. Vs. Ravi International, it has been disclosed by defendant therein that he was an agent of the plaintiff Sh. Anuj Kumar Jain, proprietor of M/s. Sidhi Cosmetics. In that case plaintiff herein was restrained by the court to use the said trademark and said suit was filed on 17.04.2014 i.e. soon prior to filing of this suit by plaintiff herein. This fact itself suggest that the defendant had already taken action against the plaintiff by filing of proceedings. As such, there was no such occasion to the defendant to extend groundless threats instead of taking action against the plaintiff. Further, the Hon'ble High Court of Delhi in CS (OS) 1230/10 titled Hindustan Unilever Ltd. V. Mohit Bhatia, the use of 'FINE LOVELY' trademark has been restrained and there was no occasion to the plaintiff to use this restrained trade mark in the year 2013. Even the defendant instituted a suit against M/s. Vidhi Cosmetics which was also proprietorship firm of the plaintiff Sh. Anuj Jain and said case is also pending and that case was filed way back on 30.04.2013 and this fact itself suggest that the defendant has been taking action against the plaintiff before various courts but plaintiff is keep on using this trademark on one ground or others. Even as per document annexed by the plaintiff, plaintiff earlier filed for a registration of trademark 'FOUR LOVELY' and now he has claimed that 'FINE LOVELY' is his trademark. It is settled proposition of law that the deception, confusion and similarity of trademark / label is to be decided on the point of view of a common user or layman and if a layman / common user may get confused by the appearance of goods with the goods of an established trademark then it may be termed as deceptively and confusingly similar to the goods of the registered user or prior user of the trademark. In the present case, 'FINE LOVELY' the trademark of the TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 8/10 plaintiff is in the similar colour combination and bearing essential features of the registered trademark of the defendant which may easily cause deception and confusingly amongst the public at large and any common man may consider the goods of the plaintiff as goods of the defendant and its amount to deceptiveness and confusingly similarity of the goods of the defendant. The submissions of Ld. Counsel for plaintiff cannot be accepted that the defendant cannot claim any right against the individual words of registered trademark / copyright 'FAIR & LOVELY' or its characteristics as the registration has been granted to use in combination of both words 'FAIR & LOVELY' and any individual use of words by plaintiff may not be a deceptive use of trademark of the defendant. As such, plaintiff cannot copy the trademark of the defendant in any manner without the permission and authorization of the defendant. The defendant has disclosed the entire similarity between the trademark / label of plaintiff and defendant in the plaint itself which render the trademark of the plaintiff 'deceptively and confusingly' similar to the trademark of the defendant. It is further revealed that earlier plaintiff was using the trademark 'FOUR LOVELY' and after restraining order he has started using 'FINE LOVELY' which was being used by M/s. Vidhi Cosmetics i.e. the firm of the brother of the plaintiff and that products bearing almost same address as of the plaintiff, but after settlement with the defendant to use the trade mark 'Sneh & lovely' plaintiff has started using 'FINE LOVELY' trade name and documents have proved this fact on record.
5. Keeping in view of the fact and circumstances of the case, I am of the considered opinion that the plaintiff has failed to substantiate any material on record to TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 9/10 prove that the defendant or its agent ever extended any groundless threats to the plaintiff to ruin his business and trade or to institute any legal proceedings against him. Plaintiff even is not going to suffer any irreparable loss if injunction is not granted as there is no balance of convenience in favour of plaintiff, whereas defendant has proved that the plaintiff is prima facie using the confusingly and deceptive trademark 'FINE LOVELY' which is similar to the trademark of the defendant 'FAIR & LOVELY', just to gain from reputation and goodwill of the defendant and defendant would suffer irreparable loss if injunction is not granted as balance of convenience lies in favour of the defendant.
6. In view of fact of the case, application of the plaintiff under Order 39 rule 1 & 2 is hereby dismissed and application of the defendant is hereby allowed. Plaintiff, his agents, successors, representatives, employees or any other acting on and on his behalf are hereby are restrained from using the trademark 'FINE LOVELY' and any other similar trade mark being the get up and trade dress of 'FAIR & LOVELY' and its copyrights etc., with regard to the cosmetics products and any other similar products as marketed and traded by defendant, during the pendency of this suit.
However, observation hereinabove shall not amount to the expression of opinion on the merit of the case.
Dated:- 03.01.2015 (Devender Kumar)
Announced in the open Court. ADJ-04, New Delhi District,
Patiala House Courts, Delhi.
TM/ CS No. 30/14 Anuj Kumar Jain Vs. Hindustan Unilever Ltd. 10/10