IN THE HIGH COURT OF DELHI
Decided On: 06.11.2015
Appellants: L'
Oreal
Vs.
Respondent: Sigma Enterprises and Ors.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Ajay Amitabh Suman
and Vinay Kumar Shukla , Advs.
JUDGMENT
1. The plaintiff has
filed a suit under Section 134 and 135 of Trade Marks Act, 1999, Section 55 of
Copyright Act, 1957 for permanent injunction restraining infringement, passing
off, delivery up, rendition of accounts etc. against the defendants.
2. The defendants were
served by way of publication. They failed to appear before the Court. They have
also not filed the written statement. They were proceeded ex-parte by order
dated 19th August, 2015.
3. Ex-parte evidence was
filed by the plaintiff by way of affidavit of Ms. Surbhi Bansal, Constituted
Attorney of the plaintiff. A copy of Power of Attorney in favour of Ms. Surbhi
Bansal has been exhibited as Ex. PW-1/1. The suit was initially instituted by
Shri Sheel Bansal, the then Constituted Attorney of the plaintiff. A copy of
Power of Attorney in his favour has been placed on record and has been
exhibited as Ex. PW1/2.
4. The 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, non-medicated preparations for the care and the beauty
of the skin, toilet soaps, dentifrices, suntan preparations, personal
deodorants and other allied/related products (hereinafter referred to as
"the said goods" and "the said business").
5. Ever since its bonafide
adoption in about the first decade of 1900, the plaintiff since about 1910-1915
has been using the word/mark L'OREAL word per se, stylized, formative/bearing
and labels as a trademark as also as an essential part of its trade name in
relation to its said goods and business. In addition to its word per se user,
the plaintiff over a period of time has been using its trademark in various
stylized and artistic formats and labels and which have been created and are
being created over a period of time. The word/mark L'OREAL remains a key and
material part thereof. The word/mark L'OREAL has all the trappings of an
invented mark and as such is extremely a strong mark. The specimen of
plaintiff's said trademark/labels has been exhibited as Ex. PW- 1/3.
6. As of now the
plaintiff's said goods under its said trademark/trade name are branded and sold
in about 130 countries of the world and across all continents and regions
including in India, wherein, in addition the plaintiff also enjoys its
trans-border reputations and users. The plaintiff's said goods are sold and
traded by the plaintiff directly or through a wide network of its associates,
affiliates, subsidiary companies, licensees and through a wide marketing
network including through retail as also through internet and e-commerce.
7. The plaintiff's
trademarks L'OREAL word and ELVIVE word mark is duly registered in India under
the Trade Mark Act, 1999 (hereinafter referred to as 'the Act') as per the
following particulars:
Copy of Certificate of
Registration with respect to Trademark No. 165778 in class 3 in favour of the
plaintiff along with its advertisement in Trade Marks Journal and its renewal
certificates have been exhibited as Ex.PW-1/4 (Colly). Status of the said
registered trademarks of the plaintiff as appearing on the web-site of the
Trade Mark Registry have been exhibited as Ex.PW-1/5 (Colly.)
8. The plaintiff has been
regularly and continuously promoting its said distinctive trademark/trade name
and the goods and business there under, through various means and modes
including through visual, print and electronic media, in leading Newspapers,
trade literature and magazines, word of mouth, over the internet etc. and all
of which have tremendous reach, availability and circulation world over
including in India. The plaintiff has placed on record various advertisements
and other sales promotional literature of the plaintiff as published and
circulated in India. The same has been exhibited as Ex.PW-1/9.
9. The plaintiff's said
trademark/trade name has acquired enviable and enduring goodwill, reputation
and users, and which the plaintiff owns, in the international markets including
in India, wherein in addition to the aforesaid the plaintiff also enjoys trans-border
reputations and users as extending into India. Downloads from the plaintiff's
website have been exhibited as Ex.PW-1/10 (Colly.)
10. It is claimed that the
plaintiff's said trademark/trade name are well known trademarks within the
meaning of Section 2(1)(zg) of the Act. A copy of Memorandum and Articles of
Association of its subsidiary M/s. L'Oreal India Pvt. Ltd., has been exhibited
as Ex. PW- 1/11.
11. As alleged in the
plaint, the defendant No. 1, M/s. Sigma Enterprises, A-804, Madhuban Height,
Bhayander, Thane, 401106 and defendant No. 2 were initially impleaded as My
Dollar Store, Phoenix Mill, Mumbai and also at M-1, Main Market, Greater
Kallash, New Delhi. The defendants are engaged in trading of cosmetics,
toiletries, hair care products, shampoos and other allied/related goods
(hereinafter referred to as "the impugned goods" & "impugned
business"). Defendant No. 2 is a dealer/agent of defendant No. 1 and owner
of 'My Dollar Store'. Defendant Nos. 1 and 2 are acting in connivance and in
unison with each other. The defendants have adopted and started using the
trademarks L'OREAL (hereinafter referred to as the "impugned trade
mark") in relation to their impugned goods. The defendants are also using
word PARIS and ELVIVE along with the impugned trademark in order to give a
false description to its impugned goods. Specimens of defendants' impugned
trademark have been exhibited as Ex. PW-1/12.
12. The impugned trademarks
L'OREAL along with PARIS and ELVIVE have been 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 trademark/trade name L'OREAL in
each and every respect including phonetically, visually, structurally, in its
basic idea and in its essential features. Defendants have also copied the
artistic features involved in the plaintiff's trademark and thus, infringing
the plaintiff's copyrights involved in its said trademark. The defendants are
using all kinds of false description on its impugned goods to wrongly link the
impugned goods with the plaintiff and to wrongly convey to the public and
customers that the impugned goods are coming from the source and origin of the
plaintiff. The impugned goods and business thereunder are also of the same/similar/allied/cognate
to that of the plaintiff's.
13. It is stated that the
defendants have adopted and started using the impugned trademark/trade name
dishonestly, fraudulently and out of positive greed with a view to take
advantage and to trade upon the established goodwill, reputation and
proprietary rights of the plaintiff in the plaintiff's trademark/trade name. By
the defendants' impugned adoption and use, deception and confusion in the
market is ensuing or is likely to so ensue. The plaintiff's said
trademark/trade name are otherwise being diluted and eclipsed thereby. Any
person not knowing clearly the relationship between the parties to this action
is bound to be confused by the defendants' impugned adoption and use and might
as well do business with the defendants thinking that he is dealing with the
plaintiff or that some strong, vital and subtle links exist between the
plaintiff and the defendants.
14. From the averments made
in the plaint and the statements made in the affidavit of PW-1 as well as the
material placed on record, the plaintiff has been able to prove its case. There
is no rebuttal on part of the defendants. The plaintiff's counsel at the time
of hearing has made the statement not to press the relief of damages and
rendition of accounts.
15. Therefore, the suit of
the plaintiff is decreed as per the prayer clause 38 (a) and (b) of the plaint
which are reproduced here as under:-
"(a) For a decree of
permanent injunction restraining the defendants by themselves as also through
its individual proprietors/partners, agents, representatives, distributors,
assigns, heirs, successors, stockists and all others acting for and on their
behalf from importing into India in any manner or form the products of the
plaintiff under the trademark/trade name and label/trade dresses L'OREAL and
ELVIVE or deceptively similar thereto and from commercially and in the course
of trade, selling, advertising, distributing or in any other manner, mode or
from dealing with them or offering services in connection therewith.
(b) Restraining the
defendants from disposing off or dealing with its assets including its
shops/workshop/factory and premises at A- 804, Madhuban Heights, Bhayander,
Thane - 401106; My Dollar Store, Phoenix Mill, Mumbai and M-1, Main Market, Greater
Kailash, New Delhi and its stocks-in-trade or any other assets as may be
brought to the knowledge of this Hon'ble Court during the course of the
proceedings and on the defendants disclosure thereof and which the defendants
are called upon to disclose and/or in its ascertainment by the plaintiff as the
plaintiff is not aware of the same as per Section 135(2)(c) of the Trade Marks
Act, 1999 as also it could adversely effect the plaintiffs' ability to recover
costs and accounts of profits."
16. The other prayers 38
(c), (d) and (e) of the plaint i.e. for delivery up, rendition of accounts and
damages are given up.
17. The plaintiff is also
entitled for costs.
18. Decree be drawn
accordingly.
