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IN THE
HIGH COURT OF DELHI AT NEW DELHI
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Decided on: 3rd November, 2017
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CS(COMM) 567/2017
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M/S. L’OREAL
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..... Plaintiff
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Represented
by:
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Mr.Ajay
Amitabh Suman,
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Mr.
Kapil Kumar Giri and
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Mr.
Vinay Shukla, Advocates.
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versus
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SHRI
YOGESH JETHI & ANOTHER.
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.....Defendants
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Represented
by:
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None.
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CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
MUKTA GUPTA, J. (ORAL)
1.
As per the plaint, the plaintiff prays for the
following reliefs:
a)
For a decree of permanent injunction restraining all the defendants by
themselves as also through 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 or by any other mode or manner dealing in or using the
impugned trade mark 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/trade name L’OREAL in relation to their
impugned goods and business of cosmetics and other related/allied products and
from doing any other acts or deeds amounting to or likely to:-
i)
infringement
of plaintiff’s aforesaid registered trademark
L’OREAL.
CS(COMM) 567/2017 Page 1 of
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ii)
Passing off and violation of the plaintiff’s rights in the plaintiff’s
said trade mark L’OREAL.
iii)
violation of plaintiff’s proprietary rights in its trade name i.e., L’OREAL.
iv)
Infringement
of plaintiff’s copyrights in its L’OREAL Label.
b)
for an order for delivery up of all the impugned finished and unfinished
materials bearing the impugned and violative trade mark L’OREAL or any other
word/mark which may be identical with or deceptively similar to the plaintiff’s
said trade mark/trade name L’OREAL including its blocks, labels, display
boards, sign boards, trade literatures and goods etc. to the plaintiff for the
purposes of destruction and erasure.
c)
for a money decree for grant of damages of ₹40,00,000/-(Rupees Forty
Lakh only) from and against the defendants, jointly and severally to the
plaintiff.
d) for an order for cost of proceedings.
2.
Summons in the suit were issued to the defendants
on 7th
January,
2009 and
an ex-parte interim order was passed in favour of the plaintiff and
against
defendants from using trade mark ‘L’OREAL PARIS’. Defendant
No. 1
entered appearance on 13th
February, 2009. Since Defendant No. 2
could not be served, he was directed to be served through publication
vide order dated 5th February, 2010. Defendant no. 2 entered appearance on 27th
October, 2010. However, defendant no. 2 failed to file written
statement, thus, he was proceeded ex-parte vide order dated 5th September, 2011.
3.
Vide order dated 5th
December, 2011, following issues were settled:
i.
Whether
the suit has been filed by a competent person? OPP
ii.
Whether
the plaintiff is the owner and proprietor of the trademark
‘L’OREAL’? OPP
iii.
Whether the
defendants are guilty
of infringing the
registered
trademark ‘L’OREAL’ of the plaintiff? OPP
CS(COMM) 567/2017 Page 2 of
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iv.Whether the defendants are
passing off their goods as that of plaintiff? OPP
v.Whether defendant no. 1 has never
dealt with the goods of the plaintiff at any point of time? OPD-1
vi.
Whether
the defendants are guilty of infringing the copyright of the
plaintiff in the trademark ‘L’Oreal’? OPP
vii.
Relief.
4.
Defendant no.1 was also proceeded ex-parte vide
order dated 18th
December,
2014. Thus, the plaintiff led its ex-parte evidence.
5.
As per the plaint, plaintiff is a
company duly incorporated under the laws of France. Plaintiff is engaged in the
business of manufacture, distribution and sale of a 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, shampoos,
hair sprays, non-medicated preparations for the care and the beauty of the hair
and skin, toilet soaps, dentifrices, sun-tan preparations, personal deodorants
and other allied/related products.
6.
Plaintiff
has been using
the word/mark ‘L’OREAL’
in stylized,
formative and label as a trade mark since about
1910-1915 in relation to the aforesaid goods and business. Plaintiff’s goods
under the trademark ‘L’OREAL’ have acquired goodwill and reputation globally
and in India as well. Plaintiff’s goods under the aforementioned trademark are
sold in about 130 countries across the world including India.
7.
Plaintiff’s trademark ‘L’OREAL’ as a word mark was
registered in
India in
class 3 in the year 1954 and was renewed subsequently from time to
CS(COMM) 567/2017 Page 3 of
10
time. Apart from the aforesaid registration,
plaintiff had filed various other applications for registration of its said
mark in India.
8. It is the case of the plaintiff that the art
work involved in various ‘L’OREAL’ stylized, formative/bearing and labels are
original artistic works and plaintiff holds copyright therein. The plaintiff
had been continuously promoting its distinctive mark/ trade name and the goods
and business through extensive advertisements, publicity, promotion and
marketing research and the plaintiff has spent enormous amount of money,
effort, skill and time thereon. It is the claim of the plaintiff that the
plaintiff’s trademark has acquired enviable and enduring goodwill, reputation
and users. Plaintiff also enjoys trans-border reputation.
9.
Plaintiff’s trademark has become
distinctive and has acquired secondary significance with the plaintiff’s goods
and business. In view of
plaintiff’s proprietary rights both statutory and
common law, it’s goodwill, reputation and it’s copyright, the plaintiff has the
exclusive right to the use of the trademark.
10.
Defendants are engaged in trading
of cosmetics, toiletries, hair care products and other allied/related goods.
Defendants have adopted and started
using the trade mark L’OREAL in relation to its
products. Defendants are also using the word ‘PARIS’ along with the impugned
trademark in order to give a false description to its goods.
11.
The impugned trade mark L’OREAL adopted and being
used by the
defendants in relation to their impugned goods and
business is identical with and deceptively similar to the plaintiff’s said
trade mark/trade name L’OREAL in each and every respect including phonetically,
visually, structurally, in its basic idea and in its essential features.
Defendants have
CS(COMM) 567/2017 Page 4 of
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also copied the artistic features involved in the
plaintiff’s trade mark and is thus infringing the plaintiff’s trade mark as
also the copyright involved in its trade mark.
12.
Defendants are not the proprietor of the impugned
trademark and
their adoption and use of the trademark violates
the plaintiff’s trademark and thereby passing off and enabling others to pass
off their goods and business as that of the plaintiff as well as diluting the
plaintiff’s proprietary rights therein.
13.
In December, 2007 when the
plaintiff came to know that some unknown persons and firms have illegally
adopted and are using the impugned trade mark plaintiff filed a complaint under
Sections 103/104 of the Trade Marks Act, 1999 before Additional Chief
Metropolitan
Magistrate, Delhi complaining violation of
plaintiff’s said trademark and copyrights. Ld. ACMM directed the police to
investigate the matter. Consequently FIR No. 55 dated 24th March, 2008 was registered at
Police Station Economic Offences Wing under sections 103 and 104 of the Trade
Marks Act, 1999 and Section 63 of the Copyright Act, 1957. During the
investigation the police on 25th March, 2008 conducted raids at the premises of defendant No. 1, where
defendant No. 1 was found to be dealing in impugned goods bearing the impugned
trade mark.
14.
In May 2008, plaintiff also came
to know that defendant No. 2 is also dealing in impugned goods bearing impugned
trade mark. Being aggrieved by the acts and conduct of defendant No. 2,
plaintiff lodged FIR being FIR No. 125 dated 3rd May, 2008 at Police Station
Bhyculla, Mumbai. Consequent to this FIR raids were conducted at the premises
of defendant No. 2 on 3rd May, 2008 from where impugned goods bearing impugned
CS(COMM) 567/2017 Page 5 of
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trade mark were seized in large quantities. During
investigations, defendant No. 2 disclosed that defendant No. 1 supplies
impugned goods bearing impugned trade mark to defendant No. 2.
15.
The plaintiff led ex parte
evidence and examined Mr. Nirmal Singh as PW-1. He tendered his evidence by way
of an affidavit (Ex. PW-1/A) and additional affidavit (Ex. PW-1/A1). Copy of
the power of attorney in his favour was exhibited as Ex. PW-1/1. Specimen of
plaintiff’s
trademarks/labels were exhibited as Ex. PW-1/2 to
Ex. PW-1/8. Statistics/reports showing plaintiff’s sales, growth and economic
strength were exhibited as Ex. PW-1/9. Certified copy of the magazines like
Cosmopolitan, Star Dust and Filmfare in which various advertisements and sales
promotional literature of the plaintiff were published were exhibited as Ex.
PW-1/10 (colly). Specimen of defendants trademark/label was exhibited as Ex.
PW-1/12 and Ex. PW-1/13. Copy of the FIR No. 55/08 dated 24th March, 2008 registered at Police
Station Economic Offences Wing along with search and seizure memo was exhibited
as Ex. PW-1/14 (colly). English Translation of FIR No. 125 dated 3rd May, 2008 at Police Station
Bhyculla, Mumbai was exhibited as Ex. PW-1/15. Legal Proceeding Certificates of
registrations of trade mark L’OREAL were exhibited as Ex. PW-1/X (colly).
Affidavit under Section 65B of the Evidence Act with respect to Ex. PW-1/9 was
placed on record as Ex. PW-1/20.
16.
Specimen of plaintiff’s trademark/label is as
under:
CS(COMM) 567/2017 Page 6 of
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18.
The evidence of the plaintiff has
gone unrebutted. On the basis of the documents placed on record, this Court is
of the view that the plaintiff has
established that plaintiff is the owner of the
trademark ‘L’OREAL’ and is also the copyright owner in the artistic work of the
stylized, formative/bearing and label ‘L’OREAL’. Plaintiff has also established
that it enjoys reputation and goodwill with respect to the aforesaid trademark.
Plaintiff has also been successful in demonstrating that the defendants by
adopting plaintiff’s trademark ‘L’OREAL’ are infringing the trade mark of the
plaintiff, copyright therein and passing off their goods as those of the
plaintiff. Thus, plaintiff is entitled to a decree of permanent injunction
against the defendants
CS(COMM) 567/2017 Page 9 of
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19.
Since the plaintiff has not led evidence with
respect to the damages
caused to them except for a court fee of ₹21,000/-, prayer (c) of the
plaint is allowed partially.
20.
Consequently, the suit is decreed
in favour of the plaintiff and against the defendants in terms of prayer (a) with
a cost of ₹21,000/-.
(MUKTA GUPTA)
JUDGE
NOVEMBER 03, 2017
‘yo’
CS(COMM) 567/2017 Page 10
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