Delhi High Court
Gurnam Singh vs G.I. Cosmetics on 12 November, 2018
Equivalent citations: AIRONLINE 2018 DEL 2029
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 827/2018
GURNAM SINGH ..... Plaintiff
Through: Mr. C.M. Lall, Sr. Adv. with Mr.
Sanjay Aggarwal, Mr. Ashok Kumar
Mittal and Mr. Partha J. Deka, Advs.
Versus
G.I. COSMETICS ..... Defendant
Through: Mr. Neeraj Malhotra, Sr. Adv. with
Mr. Cassandra Zusan Gliani, Mr.
Suwarn Rajan Chauhan, Mr. Akshay
Srivastava, Mr. Sanchay Mehrotra
and Ms. Uma Devi, Avs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
ORDER
% 12.11.2018 IAs No.5743/2018 (of plaintiff u/O XXXIX R-1&2 CPC) & 8080/2018 (of defendant u/O XXXIX R-4 CPC)
1. The plaintiff has instituted this suit for permanent injunction to restrain the defendant from selling, advertising and dealing in cosmetic products like nail polish, lipstick, kajal and other similar products, using the trade mark 'MISS HEAVEN' or any other mark/name which is identical to or deceptively similar to the plaintiff's trade mark 'BLUE HEAVEN'.
2. The suit came up first before this Court on 27th April, 2018, when while issuing summons/notice thereof, vide ex-parte ad-interim order, the defendant was restrained from using the word 'HEAVEN' on the cosmetic products being manufactured and sold by the defendant. The said ex-parte order has continued till now. The defendant has also filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (CPC).
CS(COMM) No.827/2018 Page 1 of 10The counsels were heard on 2nd November, 2018 and have been further heard today.
3. It is deemed appropriate to, at this stage, depict herein below the danglers of the products of the plaintiff and the defendant:
Product of the Plaintiff Product of the defendant A. B. C. D. E. F.
4. It is not in dispute that the plaintiff entered the market with the CS(COMM) No.827/2018 Page 2 of 10 aforesaid trade mark in the year 1972 and the defendant entered the said market in the year 2016. It is also not in dispute that while the plaintiff has a registration as trade mark of 'BLUE HEAVEN', the registered trade mark of the defendant is 'VALENFINE', which is barely visible in two only of the aforesaid three danglers and the third dangler does not even contain the same.
5. The senior counsel for the defendant has however argued that the objection of the defendant is to the injunction against use of the mark 'HEAVEN'. It is contended that the defendant is willing to change the danglers aforesaid and to write the trade mark 'VALENFINE' in font of the same size as font of the words 'MISS HEAVEN' and also make other changes, to make the danglers of the products of the defendant different from that of the plaintiff. It is further argued that the plaintiff does not have a separate registration for the word 'HEAVEN' and thus cannot claim exclusivity with respect thereto. Attention is drawn to Section 15(1), Section 17(2)(a)(ii) and to Section 17(2)(b) of the Trade Marks Act, 1999. On being asked, as to what is the test to be applied to find out the 'matter which is common to the trade' within the meaning of Section 17(2)(b) of the Act, attention is drawn to List of Documents dated 29th September, 2018 containing the list of trade marks applied for by third parties, under Class 03, having the word 'HEAVEN' and it is argued that since large number of marks use the word 'HEAVEN' in relation to goods falling in Class 03, in which the products of plaintiff and defendant fall, the word 'HEAVEN' is common to the trade.
6. The senior counsel for the defendant, on enquiry states, that the aforesaid list contains 21 registered marks and the other in the said list are CS(COMM) No.827/2018 Page 3 of 10 pending registration.
7. A perusal of the said list shows the registrations to be of 'HEAVEN'S GARDEN', 'HEAVEN SCENT', 'HEAVENS GARDEN BORO ACTIVE', 'HEAVENS CARE', 'HEAVENS DOOR', 'HEAVENLY', 'HEAVEN FRESH BACK TO NATURE' etc. The same are found to be distinct from the marks of the plaintiff and defendant, owing, either to the prefix or suffix to the word 'HEAVEN' or use of the word 'HEAVENS' or 'HEAVENLY' which are distinguishable from the word 'HEAVEN'. Even otherwise, without knowing the weight and volume in the market of the said products, merely from the list, it cannot be said at this stage that the word 'HEAVEN', which otherwise is not relatable to cosmetics is common to the trade of cosmetics.
8. The senior counsel for the defendant has urged that since cosmetics are associated with beauty, a beautiful person is considered to be on the 'seventh heaven' or said to be having 'heavenly looks'; thus, the word 'HEAVEN' qualifies as common to trade.
9. At least I have not known of 'looking heavenly' being used to complement beauty of face or being considered in praise of a beautiful face. Similarly, I cannot comprehend anyone, even if considering self beautiful, describing self as in 'seventh heaven'. The same, can be comprehended in praise of a place or locale or weather, but neither of which is attributable to cosmetics.
10. The senior counsel for the defendant has handed over a compilation of
(i) Rajesh Jain Vs. Amit Jain MANU/DE/2585/2014; (ii) order dated 14th November, 2014 in FAO(OS) No.472/2014 titled Rajesh Jain Vs. Amit Jain; (iii) Bhole Baba Milk Food Industries Ltd. Vs. Parul Food CS(COMM) No.827/2018 Page 4 of 10 Specialities Pvt. Ltd. 2011 (48) PTC 235 (Del.) (DB); (iv) Aravind Laboratories Vs. Modicare MANU/TN/2708/2011; (v) Bigtree Entertainment Pvt. Ltd. Vs. Brain Seed Sportainment Pvt. Ltd. MANU/DE/5189/2017; (vi) Ultratech Cement Ltd. Vs. Dalmia Cement Bharat Ltd. MANU/MH/2013/2016; (vii) S.B.L. Ltd. Vs. Himalaya Drug Co. MANU/DE/0311/1997; (viii) Rhizome Distilleries P. Ltd. Vs. Pernod Ricard S.A. France MANU/DE/2742/2009; (ix) Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. MANU/DE/6904/2011; (x) Radico Khaitan Limited Vs. Carlsberg India Private Limited MANU/DE/3581/2011; (xi) Skyline Education Institute (Pvt.) Ltd. Vs. S.L. Vaswani MANU/SC/0009/2010; and, (xii) order dated 10th July, 2007 in IA Nos.525/2007 and 1632/2007 in CS(OS) No.82/2007 titled Canon Kabushiki Kaisha Vs. B. Mahajan, with Rajesh Jain supra being the first judgment in the compilation, and has with reference thereto contended that no injunction to use of the mark 'BLUE VERY' was granted in the suit at the instance of the holder of the registered mark 'BLUE VALLEY'. The senior counsel for the defendant has drawn attention to paras 3, 14 & 15 of the said judgment as reported in Manupatra.
11. However, the test applied by the Court in refusing injunction in that case, is to be found in para 16.2 of the judgment, where the Court, after having looked at the two marks 'BLUE VALLEY' and 'BLUE VERY' in the setting in which they appeared, held that the Court was unable to persuade itself at that stage that there was any similarity of the nature which is likely to cause confusion or have the consumers associate defendants' goods with those of the plaintiff.
12. The senior counsel for the plaintiff draws attention to para 17 of the CS(COMM) No.827/2018 Page 5 of 10 said judgment, where another reasoning has been given, of the averments in the plaint in that suit lacking the element of candour and to the plaintiff in that suit having not made a clean breast of state of affairs with respect to disclaimer in the registration of the word 'BLUE'. The senior counsel for the plaintiff contends, that in the registration of the plaintiff herein, of 'BLUE HEAVEN', there is no disclaimer of the word 'HEAVEN'.
13. The defendant herein fails in the tests aforesaid.
14. From a bare perusal of the danglers aforesaid, an attempt by the defendant, to ride on the goodwill of the plaintiff, by making the consumers of the goods of the plaintiff, under deception, buy the goods of the defendant, is evident. The consumers, in the habit of and / or used to buying the goods of the plaintiff, identifying them on the danglers aforesaid hung in the shops selling the said goods, owing to similarity in the danglers of the defendant with the danglers of the plaintiff, are likely to ask for and buy the goods of the defendant, without noticing the trade mark 'VALENFINE' written in font size hardly visible from a distance of 4 to 5 feet at which such danglers are normally hung in the shops. Such consumers, considering the other similarities in the two set of danglers and the size and shape of the product therein, are also unlikely to distinguish between the two from the difference in the word preceding the word 'HEAVEN', i.e. 'BLUE' in the mark of the plaintiff and 'MISS' in the mark of the defendant. Even otherwise, the word 'HEAVEN' is found to be the dominant part of the mark of the plaintiff, by which the consumers thereof are likely to remember / recall the product of the plaintiff. The tests in this regard are discussed in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346 affirmed by the Division Bench in Shree Nath CS(COMM) No.827/2018 Page 6 of 10 Heritage Liquor Pvt. Ltd. Vs. Allied Blender & Distillers Pvt. Ltd. 221 (2015) 221 DLT 359 and in Prathiba M. Singh Vs. Singh and Associates 2014 SCC OnLine Del 1982, Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health and Beauty Care Pvt. Ltd. (2016) 234 DLT 331 (DB) and The Gillette Company LLC Vs. Tigaksha Metallics Pvt. Ltd. (2018) 251 DLT 530 and need to burden this order with details thereof is not felt. Reference in this regard may also be made to Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai Patel (2006) 8 SCC 726 concerned with broad and essential features of the mark and negating the contention that since only a label had been registered and not the name 'RAMDEV', the plaintiff was not entitled to claim infringement. The test to be applied, was held to be of deceptive similarity.
15. The manner, in which the defendant has commenced marketing its goods, reeks of an attempt to not only cause prejudice to the plaintiff but also confuse the consumer and lead the consumer who wants to buy the product of the plaintiff, into buying the product of the defendant.
16. There is no need to deal with the other judgments in the compilation, and which will only add to delay in disposal of the application for interim relief and which results in such suits remaining pending for years. It is assumed that the judgment placed first in the compilation and referred to in the arguments, is the best judgment which the counsel relies upon.
17. I am satisfied that a case for grant of interim injunction is made out.
18. The defendant, during the pendency of the suit, is restrained from using the trade mark 'MISS HEAVEN' or any other mark/name which is identical or deceptively similar to the plaintiff's trade mark 'BLUE HEAVEN' and/or from otherwise passing off its goods as those of the CS(COMM) No.827/2018 Page 7 of 10 plaintiff.
19. Resultantly, IA No.5743/2018 under Order XXXIX Rules 1&2 of CPC is allowed and disposed of and IA No.8080/2018 under Order XXXIX Rule 4 of the CPC is dismissed.
20. However, it will be open to the defendant to, after making the requisite changes, apply to the Court and the Court shall at that stage consider, whether the changes made by the defendant distinguish the goods of the defendant from that of the plaintiff.
CS(COMM) 827/2018
21. Though, I am of the opinion that no purpose will be served in framing issues and with the parties examining their self-serving witnesses on the aspect of confusion, but the senior counsel for the defendant, under instructions, states that the suit be proceeded with.
22. The following issues are framed in the suit:
(I) Whether the act of the defendant of commencing selling the same goods under the mark 'MISS HEAVEN', as being sold by the plaintiff under the mark 'BLUE HEAVEN', amounts to infringement of the trade mark 'BLUE HEAVEN' of the plaintiff and the defendant passing off its goods as that of the plaintiff? OPP (II) Whether the defendant, along with the words 'MISS HEAVEN', uses the word 'VALENFINE' and if so, whether such uses distinguishes the product of the defendant from that of the plaintiff and if so, to what effect? OPD (III) Whether the packaging and trade dress adopted by the defendant amounts to the defendant passing off its goods as that of the plaintiff and also amounts to infringement of the copyright, if any of CS(COMM) No.827/2018 Page 8 of 10 the plaintiff? OPP (IV) Whether the plaintiff is disentitled by virtue of Sections 15(1), 17(2)(a)(ii) and 17(2)(b) of the Trade Marks Act, 1999 from restraining the defendant from using the word 'HEAVEN'? OPD (V) Whether the use by the defendant of the trade mark 'MISS HEAVEN' and/or 'VALENFINE MISS HEAVEN' is honest and if so, to what effect? OPD (VI) If the above issues are decided in favour of the plaintiff and against the defendant, to what relief is the plaintiff entitled to against the defendant? OPP (VII) Relief.
23. No other issue arises or is pressed.
24. The parties to file their list of witnesses within fifteen days.
25. The plaintiff to file affidavits by way of examination-in-chief of its witnesses within six weeks.
26. The counsels are agreeable to recording of evidence on commission.
27. A commission is issued to Mr. P.K. Saxena, Additional District Judge (Retd.) (Mob.9910384668) to record evidence in the suit. He is requested to record the evidence within the Court Complex and to complete the same within six months of the date of first appearance of the parties before him. He is granted liberty to have the matter placed before the Court, if any of the parties are found delaying recording of the evidence.
28. The fee of the Court Commissioner is fixed at Rs.5,000/- per hearing, besides out of pocket expenses, to be shared equally by both the parties.
29. The Registry is directed to send the file of the suit at the place and time fixed by the Court Commissioner for recording of evidence.
CS(COMM) No.827/2018 Page 9 of 1030. The counsels to mutually fix a date for recording of evidence before the Commissioner within eight weeks of today.
31. List after the recording of evidence is completed.
RAJIV SAHAI ENDLAW, J.
NOVEMBER 12, 2018 bs CS(COMM) No.827/2018 Page 10 of 10