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IN THE
HIGH COURT OF DELHI AT NEW DELHI
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Decided
on: 21st August,2017
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CS(COMM) 322/2016
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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
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Suman,
Advocate.
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versus
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Sh.
YOGESH JATHI & ANR.
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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.
By the present suit, plaintiff seeks the following
reliefs:
(a)
“For a decree of permanent injunction restraining all the defendants by
themselves as also through their individual proprietors/partners, employees,
agents, representatives, distributors, assigns, heirs, successors, stockiest
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 GARNIER or any other word/mark which may be
identical with and/or deceptively similar to plaintiff’s said trade mark/trade
name GARNIER in relation to impugned goods and business of toiletries; personal
care, scalp care, hair care products, 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 trademark
GARNIER registered under No.
491768, 1041162, 1335359 in Class 3;
CS(COMM) 322/2016 Page 1
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ii.
Passing off and violation of the plaintiff’s rights in the plaintiff’s
said trade mark GARNIER.
iii.
Violation of plaintiff’s proprietary right in its trade name i.e.
GARNIER.
iv.
Infringement of
plaintiff’s copyrights in its
GARNIER Label.
(b)
For an order for delivery up of all the impugned finished and unfinished
materials bearing the impugned and volative trade mark GARNIER or any other
word/mark which may be identical with or deceptively similar to the plaintiff’s
said trade mark/trade name GARNIER including its blocks, label display boards,
sign boards, trade literatures and goods etc. to the plaintiff for the purposes
of destruction and erasure.
(c) For a money
decree of damages
to the tune
of ₹
40,00,000/- (Rupees Forty Lakh
Only) to be paid by the defendants, jointly and severally.
(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 restraining them from using trade
mark ‘GARNIER’
in relation to toiletries and other related products.
Defendant No. 1 entered appearance
on 3rd March,
2009. Since
Defendant No. 2 could not be served, he was directed to be served
through publication vide order dated 14th January, 2010 and subsequently, through affixation on 9th May, 2011. However
defendant no. 2 did not enter appearance, and was
proceeded ex-parte vide order dated 4th November, 2011. Though Defendant no.1 initially
appeared and filed written statement, however, he stopped appearing from
4th February, 2013 and did not file any written statement to the
CS(COMM) 322/2016 Page 2
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amended plaint. Defendant No. 7 was thus proceeded ex-parte vide order
dated 29th August, 2014.
3.
As per the amended plaint,
plaintiff is a company duly incorporated under the laws of France. Plaintiff
had acquired all the rights pertaining to the subject matter trade mark/label
GARNIER from M/s. Laboratorie Garnier & CIE vide dissolution deed dated 28th
November, 2011. Defendant No.1 Yogesh Jethi and Defendant no. 2 Hanif
Rahim Memom alias Pappu are engaged in the trading of toiletries, hair care
products and other allied products.
4.
It is the case of the plaintiff
that the impugned trade mark GARNIER was adopted and used by the defendants in
relation to their impugned goods and business which is identical and
deceptively
similar to the plaintiff’s trade mark GARNIER. The defendants also
copied the artistic features involved in the plaintiff’s mark. The defendants
are using all kind of false description on its goods to wrongly link the goods
with that of the plaintiff. The defendants are not the proprietor of the
impugned trade mark, however, by adopting the trade mark, are violating the
plaintiff’s trade mark and thereby passing off of their goods as that of
plaintiff’s and diluting plaintiff’s proprietary rights therein.
5.
Plaintiff came to know in
December, 2007 that some unknown persons have illegally adopted and were using
the impugned trade mark. A complaint was filed and consequently FIR No. 56/2008
was registered at PS Economic Offences Wing under Sections 103 and 104 of
Trademark Act 1999 and Section 63 of Copyright Act. During the investigation,
raids were conducted and defendant no. 1 was found to
CS(COMM) 322/2016 Page 3
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be dealing with goods bearing the impugned trade
mark. In May 2008, plaintiff came to know that defendant no. 2 was also dealing
in goods bearing impugned trade mark. Consequently, FIR No. 125/2008 was lodged
at PS Bhyculla Mumbai under Sections 419 & 420 IPC and Sections 51 & 63
of Copyright Act.
6.
Plaintiff led ex parte evidence
and examined Ms. Surbhi Bansal, constituted Attorney of the plaintiff company,
as PW-1. She tendered her evidence by way of affidavit (Ex. PW-1/A). Copy of
the resolution-cum-power of attorney in her favour was exhibited as Ex. PW-1/7
and copy of Memorandum and Articles of Association of the plaintiff company as
Ex. PW-1/13.
7.
On behalf of the plaintiff it is
deposed that the plaintiff company is the absolute owner and proprietor of the
trade mark GARNIER on account of prior, honest and bona fide adoption in the
year 1904 and continuous, commercial and exclusive use thereof in relation to
cosmetics, toiletry products, hair care products, Sun care cream, tooth paste,
shampoos, hair colours etc. The mark GARNIER also formed a key and material
part of its predecessor M/s. Laboratorie Garnier & CIE which was dissolved
vide deed of dissolution dated
28 th November, 2011 exhibited as Ex. PW-1/18. The
plaintiff’s trade
mark has become distinctive, associated and
acquired secondary significance with the plaintiff and plaintiff’s goods and
business. Specimens of plaintiff’s trade mark are exhibited as Ex. PW-1/1 and
Ex. PW-1/2 as under:
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Ex.
PW-1/1
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Ex.
PW-1/2
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8.
Plaintiff uses the trade mark
GARNIER individually as well as in combination of other formative/bearing
marks, such as Belle Colour, Ultra Doux, Fructis, Synergie, Ultra Rich, AMbre
Solaire etc. The plaintiff company obtained registration of the aforesaid trade
mark in numerous countries of the world. The plaintiff company also obtained
registration of the trade mark in India under the provisions of Trade Marks
Act, 1999. Copy of Certificates of registration with respect to trade mark nos.
491768, 1041162 and 1335359 in class 03 are exhibited as Ex. PW-1/9, Ex.
PW-1/10 and Ex. PW-1/10A respectively.
9.
The plaintiff is the absolute
owner and proprietor of the artistic work involved in the aforesaid trade mark
and holds copyright therein.
10.
The plaintiff has been regularly
promoting its trade mark through extensive advertisements in print and
electronic media. The plaintiff has spent enormous amount of money, effort,
skills and time on popularizing the said trade mark. Advertisements and other
sales promotional literature of the plaintiff published and circulated in India
is Ex. PW-1/6.
11.
The defendants adopted and
started using the trade mark GARNIER in relation to its impugned goods.
Specimens of defendants mark infringing the plaintiff’s trademark and copyright
are exhibited as Ex. PW-1/5 and Ex. PW-1/5A as under:
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Ex.
PW-1/5
Ex.
PW-1/5A
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12.
Copies of various advertisements
as published in Trade Marks Journal are exhibited as Ex. PW-1/11 (Colly). Copy
of FIR No. 56/2008 registered at PS Economic Offences Wing under Sections 103
and 104 of Trademark Act 1999 and Section 63 of Copyright Act is Ex. PW-1/14.
Copy of FIR No. 125/2008 lodged at PS Bhyculla Mumbai under sections 419 &
420 IPC and Sections 51 & 63 of Copyright Act is Ex. PW-1/15. Copy of sale
invoices of the plaintiff’s
subsidiary/associate company in India are exhibited as Ex. PW-1/12
(colly).
13.
Evidence of the plaintiff has
gone unrebutted. Thus the plaintiff has been able to prove that the defendants
were infringing the trade mark of the plaintiff as well its copyright in the
artistic work. Since the plaintiff has not led evidence with respect to the
damages caused to it, prayer (c) cannot be allowed.
14.
Consequently, the suit is decreed
in favour of the plaintiff and against the defendants in terms of prayer (a)
and (b).
(MUKTA GUPTA)
JUDGE
AUGUST 21, 2017
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