L’Oréal S.A. Vs. Registrar of Trademarks

Introduction

This case involves an appeal filed by L’Oréal S.A. under Section 91(1) of the Trade Marks Act, 1999, challenging the removal of its registered trademark “GARNIER SKIN NATURALS” (Registration No. 1021740) from the trademark register.

Appellant’s Argument

L’Oréal argued that it had been using the mark since 2001 and had acquired ownership after the merger of Laboratoire Garnier Et Cie with L’Oréal. The registration was valid till June 2011, and L’Oréal had applied to be recorded as the subsequent proprietor. During a random website check in 2017, they found the mark listed for removal due to non-renewal. Although they filed an interlocutory petition for restoration in January 2018, the Registrar proceeded to remove the mark without permitting fee deposit. L’Oréal claimed it never received the mandatory renewal notice under Section 25(3).

Respondent’s Argument

The Registrar produced a copy of the renewal notice allegedly sent on 6th April 2011 and maintained that removal was justified as L’Oréal did not renew the mark on time.

Court’s Analysis and Decision

The Court noted that although the Registrar claimed to have sent the notice, no proof of dispatch was provided. L’Oréal’s denial of receipt was consistent and recorded earlier in the interlocutory petition. Since the removal happened much later in 2019 and without clear evidence of notice, the Court found the removal unsustainable.

Conclusion

The Court allowed the appeal, set aside the removal order, and directed restoration and renewal of the trademark, instructing L’Oréal to deposit the necessary fee within two weeks.

Case Title: L’Oréal S.A. Vs. Registrar of Trademarks
Date of Order: 9th December, 2022
Case No.: C.A.(COMM.IPD-TM) 30/2021
Name of Court: High Court of Delhi
Name of Judge: Hon'ble Mr. Justice Sanjeev Narula

L’Oréal S.A. Vs. Registrar of Trademarks

Background

L'Oréal S.A. filed an appeal under Section 91(1) of the Trade Marks Act, 1999, challenging the order dated 24 September 2019, whereby the registration of its trademark "GARNIER SKIN NATURALS" (Registration No. 1021740) in Class 3 was removed. The trademark had been in use since 2001 and was initially registered to Laboratoire Garnier Et Cie, which later merged with L'Oréal. The appellant filed for a change in ownership in 2012, which was duly recorded.

Discovery of Removal

In 2017, during a random website check, L'Oréal discovered that the subject mark was slated for removal due to non-renewal. They promptly filed an interlocutory petition for renewal and restoration on 5 January 2018. Despite this, the trademark was removed without allowing L'Oréal to pay the renewal fee.

Arguments

L'Oréal contended that they had not received the mandatory renewal notice under Section 25(3) of the Act, which was a precondition before removal. In defense, the Registrar of Trademarks produced a copy of the notice dated 6 April 2011 but failed to provide proof of its dispatch. L'Oréal consistently denied receiving any such notice.

Court's Findings

The Court observed that mere production of the notice without proof of dispatch could not suffice. Since L'Oréal filed the interlocutory petition before the actual removal and asserted non-receipt of notice, the removal of the mark was found unjustified.

Conclusion and Directions

The Court set aside the impugned removal order, directed restoration and renewal of the trademark, and instructed L'Oréal to deposit the renewal fee within two weeks.

Case title: L’Oréal S.A. Vs. Registrar of Trademarks

Date of order: 9 December 2022

Case No.: C.A.(COMM.IPD-TM) 30/2021

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Mr. Justice Sanjeev Narula