Clinique Laboratories Llc & Anr. vs Gufic Limited & Anr.
2009 Latest Caselaw 1268 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

  +I.As No.15425/2008, 217/2009 & 2769/2009 in CS(OS)
                     No.2607/2008

%09.04.209                                      Date of decision:09.04.2009

CLINIQUE LABORATORIES LLC & ANR.                                     .......Plaintiffs

                                Through: Mr. Sandeep Sethi, Sr. Advocate with
                                         Ms. Anuradha Salhotra, Mr. Rahul
                                         Chaudhary, Mr. Sumit Wadhwa and
                                         Mr. Sindhu Sinha, Advocates

                                            Versus

GUFIC LIMITED & ANR.                                                ....... Defendants

                                Through: Mr. Sudhir Chandra, Sr. Advocate with
                                         Abhinav Vasisht with Mr. Ginija K.
                                         Verma, Ms. Harshita Priyanka and Mr.
                                         Debajyoti Bhattacharya, Advocates


CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.      Whether reporters of Local papers may
        be allowed to see the judgment?   Yes

2.      To be referred to the reporter or not? Yes

3.      Whether the judgment should be reported
        in the Digest?                                               Yes


RAJIV SAHAI ENDLAW, J.

1. The applications of the plaintiff for interim relief, of the

defendant for vacation of the ex-parte order dated 16th

December,2008 and of the plaintiff under Section 124 (1) (ii) of the

Trademark Act, 1999 are for consideration. The plaintiff has sued

for injunction restraining infringement of its registered trademark

CLINIQUE and for restraining defendants from passing off its goods

as that of the plaintiff. It is the case in the plaint itself that the

defendant is the registered proprietor of the trademark CLINIQ; that

the plaintiff prior to the institution of the suit has initiated

rectification action before the Registrar. According to the plaintiff,

the plaintiff from the pleadings of the defendant in this suit learnt of

other registrations including DERMA CLINIQ in the name of the

defendant and which the plaintiff contends it was not aware of at the

time of institution of the suit. The plaintiff has thus applied for

permission to file an application for removal of the registrations in

the name of the defendant and for stay of the present suit till the

disposal of the rectification application.

2. As far as the application under Section 124 (1) (ii) is

concerned, there is no contest. It has not been disputed that the suit

has to be stayed pending the decision on the rectification

application. Arguments were addressed on the interim relief

pending such proceedings before the Registrar. It is the contention

of the senior counsel for the defendant that it being now the

admitted position that the defendant is also the registered proprietor

of the trademark, while considering the interim relief, test of passing

off only which are stated to be liberal and not of infringement of

trademark which are stated to be stricter are to be applied.

3. It is deemed expedient to consider first, the test to be applied

for interim orders, whether of infringement or of passing off. The

senior counsel for the defendant has contended that though Section

124 (5) provides for grant of interim relief while staying the

proceedings in the suit, the said interim relief in cases falling under

Section 124 (1) (b) cannot be of injunction restraining the defendant

from using its registered trademark. The reason given is that Section

28 (3) of the Act expressly provides that where two or more persons

are registered proprietor of the trademark which are identical or

resembling each other, the exclusive right to the use thereof shall

not be deemed to have been acquired by any one of those persons as

against the other of those persons merely by registration. It is

contended that if the interim relief of injunction restraining a

registered proprietor of trademark is held to be possible under

Section 124(5), the same would render Section 28(3) otiose and

which ought not to be done. It is argued that harmonious

construction is possible only by so reading Section 124(5), as limiting

the interim relief to reliefs other than of injunction against user by

the registered trademark. It is further argued that Section 27 of the

Act expressly excludes from the purview of the Act action for passing

off and the plaintiff can be entitled to interim injunction against a

registered proprietor of a trademark only if satisfies the ingredients

of passing off and which it is argued, the plaintiff does not in the

present case.

4. The contention is that registration does not enure against

another registered proprietor; that relief of injunction against user

under Section 124 (5) can be granted only in cases falling in Section

124 (1) (a) i.e. where the defendant pleads that registration of the

plaintiff‟s trademark is invalid - in those cases the defendant is not

the registered proprietor and in those cases the interim injunction

against user is possible against the defendant; reference was made

to Section 31 to contend that there is a presumption of validity of

registration and thus at this interim stage this court cannot hold

otherwise; Section 124 does not have any non obstante clause and in

the absence thereof, Sub-section (5) thereof cannot be read so as to

make Section 28 (3) redundant or otiose; that a registered mark is

the one which continues to remain on the register and since

admittedly the marks of the defendant are on the register, and action

for infringement there against does not lie. Judgments on the

principle of harmonious construction were cited.

5. It was further sought to be contended that Section 124(5)after

providing that the stay of the suit thereunder would not preclude the

court from making any interlocutory order further clarifies

"including any order granting an injunction directing accounts to be

kept, appointing a receiver or attaching any property"; that the

interim interlocutory order within the contemplation thereof are of

the types indicated in those in the bracketed portion thereof and

cannot include the drastic ultimate order of restraining the

registered proprietor of use of registered trademark.

6. Per contra the senior counsel for the plaintiff has contended

that Section 124(5) does not limit the interlocutory orders which can

be made by the court while staying the suit; it does not make any

distinction between 124 (1) (a) & (b); the bracketed portion is only

explanatory and not exhaustive; that Section 30 (2) (e) indicates that

the Act contemplated a suit for infringement against a registered

proprietor; that the word interlocutory order in Section 124(5) is

preceded by the word "any" making its scope unlimited; that the

presumption of validity under Section 31 is prima-facie only and the

court while granting interim order, if satisfied on material on record,

is entitled to presume to the contrary and in which case there would

be no validity of the mark. It was further contended that Section 31

(2) carves out an exception for Section 9 only but not for Section 11;

that in the present case the registration of the defendant is contrary

to Section 11; that the mark of the defendant could not have been

registered owing to the bar contained in Section 11(1) which does

not even require any opposition and which under Section 11(5) has

been placed on a higher pedestal than the matters under Section

11(2) & (3); that no restrictions can be read under Section 124(5) as

suggested - where the legislature wanted prohibition against certain

orders being passed, the legislature has provided so, as in Section

135 of the Act. Reference was made to a recent judgment of a single

judge of this court in order dated 26th February, 2009 in I.A.No.612

& 919/2009 in CS(OS) No.2/2009 where it has been held on a prima

facie view that a suit by a registered proprietor of a trademark

against another registered proprietor of the same trademark cannot

be refused to be entertained at the threshold - such a suit can lie but

may have to be stayed pending adjudication of the defence raised by

the defendant. However, in this judgment no final opinion was

expressed on this issue and in any case the question of interim relief

to be granted was not discussed.

7. The senior counsel for the plaintiff further referred to Section

137 (2) to contend that the registration was only a prima-facie

evidence of the same having been done in accordance with the Act

and did not prohibit the court from adjudicating if the registration

had been done contrary to the provisions of the Act and if the court

finds so, there was no bar to the court restraining user of a

registered trademark also pending the rectification proceedings

before the Registrar. Reliance was also placed on Section 28 (1) to

contend that the rights of the registered proprietor as defined

therein were subject to the other provisions of the Act i. e. they must

give way to Section 124 (5) of the Act.

8. In my view, Section 29 of the Act providing for infringement of

the registered trademark does not contemplate infringement by

another registered proprietor. Sections 29(1), (2) & (4) expressly

provide that "registered trademark is infringed by a person who, not

being a registered proprietor ..........." Though, Section 29(5) which

has been newly introduced in the 1999 Act does not use the same

language but in my view the same would be irrelevant for the

present purposes. Section 30 (2) (e) further fortifies the said

position by expressly providing that the registered trademark is not

infringed where the use being as one of two or more trademarks

registered under the Act which are identical or nearly resemble each

other and in exercise of the right to use of that trademark given by

registration thereof. However, Sections 28(3), 29 & 30(2) (e) cannot

be read in isolation. If the intent was that there could be no action

for infringement against the registered proprietor, the legislature

while giving the right for rectification before the Registrar would not

have in Section 31 made the registration as only prima-facie

evidence of validity thereof. If that had been the intention all that

would have been said is that as long as the registration exists it is

valid, without any question of prima-facie or not. Then the courts

would have had to wait for the outcome of the rectification

proceedings.

9. Registration has been made only prima-facie evidence of the

registration otherwise being in accordance with the Act under

Section 31(1) as contended by senior counsel for plaintiff but I find

that even Section 28 (1) while being subject to other provisions of

Act, further provides that "registration of the trademark, if valid,

give to the registered proprietor" exclusive right to use the

trademark. Thus the validity of registration can be gone into,

wherever permissible under the Act. Section 124(1) (b) also indicates

that it was within the contemplation of the legislature that there

could be a suit for infringement of trademark where the defendant

takes a plea under Section 30 (2) (e) i.e. that use by him is not

infringement because of his mark being also registered. The

legislature while further providing for stay of suit in such cases, in

sub Section (5) expressly provided that such stay would not preclude

the court from making any interlocutory order. Section 31 r/w the

scheme of 124 leads to an un-escapable conclusion that (A) there can

be a suit for infringement against the registered proprietor (B) that

upon the defendant taking the plea of his registration and of there

being thus no infringement, such suit has to be stayed awaiting the

rectification proceedings and (C) the court is empowered in such

case to pass any interlocutory order. The court while passing

interlocutory order will necessarily have to prima facie adjudicate

the validity of the two competing registrations. Upon inquiry, it was

informed that the Registrar while trying the rectification application

has no power to grant interim relief. The legislature under Section

124 (5) has thus empowered the court under Section 124 (5) to grant

injunction against use of a registered trademark also if the court is

satisfied of the invalidity thereof. Though in view of Section 31, the

test would be much stricter;

10. In my opinion, unless the provisions are so read, effect cannot

be given thereto.

11. Once having reached a conclusion that registration is only

prima facie evidence of validity, it is axiomatic that if the court is

satisfied otherwise on the basis of material on record and in the facts

of the case, the court is empowered to injunct use of registered

trademark also. I do not find any reason to limit/restrict the

applicability of sub Section (5) as suggested by the senior counsel for

the defendant, in the absence of the legislature providing so. If the

legislature had felt that there could be no infringement by a

registered trademark, there was no need to provide for such a suit as

in Section 124 (1) (b) and (i). In fact, sub-clause (i) of 124 (1) shows

that the suit can be instituted even where the rectification

proceedings are pending i.e. where the plaintiff is even at the time of

institution of the suit aware of the defendant having a registered

trademark.

12. I also find merit in the contention of the senior counsel for the

plaintiff with reference to Section 31 (2) of the Act. Section 31 (2)

suggests that the court notwithstanding registration being prima-

facie evidence of validity as provided in Section 31(1) can hold the

registered trademark to be invalid. The court can hold the

registration to be invalid, on any ground or for non compliance of

any of the conditions for registration provided under the Act. It

further provides that if the invalidity of registration is averred for the

reason of non compliance of Section 9 (1), i.e. of evidence of

distinctiveness having not been submitted before the Registrar, then

the party pleading validity of registration shall be entitled to give

evidence in legal proceedings where validity is challenged, of the

mark having acquired distinctiveness on date of registration.

Section 32 permits evidence of acquisition of distinctive character

within the meaning of Section 9(1) post registration, also being led in

such proceedings. It follows that where validity of registration is

challenged on grounds other than provided in Section 9(1) of the Act,

the test is whether the criteria laid down in such other provisions of

the Act, for registration has been satisfied or not. Since, Section 124

otherwise provides for stay of proceedings in such suit and only

permits passing an interlocutory order, such finding of invalidity

naturally has to be on the touchstone of principles for interlocutory

order only and not as at the time of final decision of the suit, in as

much as the finding in the rectification proceedings has been

otherwise made binding in the suit and on all aspects of validity i.e.

under Section 9 as well as under Section 11.

13. Neither counsel has cited any direct judgment on this aspect.

Nor have I been able to find any.

14. I thus conclude that a suit for infringement of registered

trademark is maintainable against another registered proprietor of

identical or similar trademark and in such suit, while staying the

further proceedings pending decision of the registrar on

rectification, an interim order including of injunction restraining the

use of the registered trademark by the defendant can be made by the

court, if the court is prima facie convinced of invalidity of

registration of the defendant‟s mark.

15. Coming now to the facts of the case, the plaintiff No.1, a

foreign company is the registered proprietor of the trademark

CLINIQUE since 13th July, 1981 in relation to cosmetic creams, lotion

and oils in cleansing creams, lotions and make-up, astringent,

foundation, bases, eye make-up remover, bath oils and anti

perspirants etc. in class 3. The plaintiff is also the registered

proprietor of the trademark CLINQUE WATER THERAPY,

CLINUQUE MOISTURES SURGE and CLINIQUE SKIN SUPPLIES

FOR MEN in relation to cosmetic and toilet preparations w.e.f. 6th

May, 1992. The plaintiff is also the registered proprietor of the

trademark CLINIQUE & C DEVICE w.e.f. 4th May, 1978 in relation to

allergy tested cosmetics and toiletries including anti perspirants. The

registration in favour of the plaintiff of the trademark CLINIQUE IN

TOUCH for computer chip cards for use in the selection of the

cosmetics and skin care products is w.e.f. 26th May, 1993; the

trademark CLINIQUE EXCEPTIONALL Y SOOTHING CREAM FOR

UPS in relation to medicated anti-itch skin cream class 5 is w.e.f. 10th

December, 1996; the trademark CLINIQUE HAPPY in relation to

cosmetics, toiletries and perfumery is w.e.f. 31st October, 1997. The

trademark CLINIQUE ANTI GRAVITY & CLINIQUE GENTLE LIGHT

have also been registered by the plaintiff in relation to skin care

preparations and cosmetics, toiletries and perfumery respectively

w.e.f. 2000 & 2001. Several other registrations are stated to be

pending. The plaintiff No.2 is the Indian company which has been

licenced/permitted use of the aforesaid trademarks in India by the

plaintiff No.1.

16. It is further the case of the plaintiffs that the word CLINIQUE

forms the forepart and most distinguishing feature of its corporate

name and trading style and has been used since the year 1968; that

since then the said trademark has been recognized worldwide and

the cosmetic, toilet and other products of the plaintiffs are trusted by

women and recommended by dermatologists throughout the world.

17. The plaintiffs are stated to be carrying business in India since

the year 2007 and have cited their sale figures and advertisement

expenses. The plaintiffs have also cited their advertisements in the

leading magazines and the plaintiffs claim CLINIQUE to be an

internationally well-known mark.

18. The plaintiffs plead to have learnt in or about September, 2006

of the application of the defendant for registration of the trademark

SKIN CLINIQ STRETCH NIL label in respect of cosmetic and toilet

preparations from the Trade Mark Journals published on 1st

September, 2005 and made available to the public on 3rd January,

2006. The defendant in the said application claimed use of the mark

since 1st May, 1998. The plaintiffs found the same objectionable and

filed notice of opposition thereto. Since the application aforesaid of

the defendant was found to be associated with another trademark,

the plaintiffs on making inquiries learnt that the other trademark

namely the label SKIN CLINIQ STRETCH NIL had proceeded for

registration. It is the case of the plaintiff that the said trademark

had not been advertised properly as the word CLINIQUE thereon

was hazy and illegible making it impossible for a prospective

opponent to ascertain the contents thereof or to file an opposition

thereto. During the course of hearing the plaintiff produced its copy

of the Trade Mark Journal where the said label was published and a

perusal thereof does show that the word CLINIQUE cannot be

deciphered therefrom. Though the senior counsel for the defendant

contended the publication was better but nothing was shown.

19. The plaintiff immediately on coming to know of the label which

had proceeded for registration, applied for rectification/ cancellation

thereof and which is still pending.

20. The plaintiff claims to have then made enquiries and to have

learnt that the defendant was manufacturing and selling Herbal

Lotion for stretch marks under the trademark SKIN CLINIQ

STRETCH NIL.

21. The plaintiff finding the said action of the defendant to be in

infringement of its trademark sent a cease and desist letter dated

12th September, 2006 to the defendant. The same however remained

un-replied. The plaintiff however claims to have conducted a market

inquiry and learnt that though the goods were available in the

market but the defendants had no stocks of the said goods. The

plaintiff claims to have believed that the defendant had given up use

of the offending mark and a letter dated 23rd March, 2007 was sent

to the defendant seeking an assurance. The said letter also

remained un-replied.

22. The plaintiff however upon coming to know that the defendant

was continuing to use the mark, sent further letters dated 7 th March,

2008 and 2nd October, 2008 to the defendant. Finally, a reply dated

6th October, 2008 was sent by the defendants refusing to comply with

the request of the plaintiff. The plaintiff thereafter instituted the

present suit which came up first before the court on 16th December,

2008 when vide ex-parte order the defendants were restrained from

marketing goods under the impugned trademark.

23. The defendants in their application under Order 39 Rule 4 CPC

and the written statement have disclosed besides the label which as

aforesaid was registered on 27th September, 1999, also registrations

of the trademarks SKINCLINQ in relation to cosmetics and toilet

preparations w.e.f. 17th December, 1998, in relation to

pharmaceutical and medical preparation w.e.f. 5th October, 1998, of

the trademark DERMACLINQ in relation to cosmetics and toilet

preparation w.e.f. 17th December, 1998 and in relation to

pharmaceutical and medical preparations w.e.f. 5th October, 1998.

24. It is further the contention of the defendants that the word

CLINIQ is derived from the word CLINIC meaning a facility

associated with a hospital or medical school and that the letter „Q‟

instead of the letter „C‟ had been used so as to give the word CLINIC

distinguishing characteristics. The applications of the defendant for

registration of the mark SKINCLINQ STRETCH NIL in relation to

cosmetics and toilets are being opposed by the plaintiffs. It is

further the contention that the oppositions though pending have

been filed beyond limitation. If is further the contention of the

defendant that the trademark SKINCLINIQ STRETCH NIL forms a

integral and distinguishing feature of the product and trading style

of the defendants; that the defendants are engaged in manufacture

and sale of prescription and bulk drugs and allied consumer products

since 1984 and have a huge turnover; that the defendant has spent

huge monies on advertising and marketing of SKINCLINIQ

STRETCH NIL since the year 1999-2000; that the defendants have

been using the said trademark since 1998-1999 and have acquired

goodwill and reputation over the period of 11 years; per contra, the

plaintiff‟s products are hardly seen in the market and the

advertisements of the plaintiff are also recent only; that the present

suit is an attempt by an multi national company to kill a indigenous

company. The sale figures of the product with the label SKINCLINIQ

STRETCH NIL have been cited.

25. It is further contended that SKINCLINIQ STRETCH NIL is not

similar or deceptively similar to the plaintiff‟s trademark CLINIQUE;

that the customers paying for the products are a affluent class

having awareness of what they are purchasing; that the trade dress

and design of the product of the defendant was entirely different

from that of the plaintiff. The plea of delay, laches and waiver not

only from 1998-1999 but w.e.f. 2006 when the plaintiffs admittedly

became aware is also taken. It is further the contention that word

CLINIQUE is descriptive and common expression incapable of

monopolistic use.

26. The senior counsel for the defendants has also repeatedly

urged that the defendants owing to the ex-parte order are suffering

loss of Rs.1 lac per day and of which there is no way of compensation

in the event of the plaintiffs ultimately not succeeding in their claim

and that in the meanwhile irreparable loss would be caused to the

defendant.

27. It is further argued by the senior counsel for the defendant

that the rectification application filed by the plaintiffs ought to be

dismissed under the Proviso to Section 9(1) or under Sections 31 or

32 in as much as the defendant‟s mark had acquired distinctiveness.

28. Since, the senior counsel for the defendant had argued that

there could be no case of infringement against a registered

proprietor, it was contended that in an action for passing off,

deceptive similarity is the essence. There was no deceptive

similarity in the present case. The products of the plaintiff and the

defendants were entirely different. While the products of the

plaintiff were highly priced, above Rs.1,000/- or Rs.1,500/-, that of

the defendant was an Ayurvedic Medicine and priced at less than

Rs.200/-; that the plaintiff was not in the business of marketing any

cream for the purposes of removal of stretch marks; that a search on

Google would show a large number of persons and businesses using

the mark CLINIQ; that the word CLINIQUE as of the plaintiff was a

French word and in fact the pronounciation was also different; that

while the plaintiff‟s mark was with a huge logo of „C‟, there was no

such logo on the defendant‟s mark; the trade dress, packaging and

colour combination was different; that the mark of the defendant was

SKINCLINIQ and not CLINIQUE alone. On inquiry it was informed

that SKIN was not merely a prefix but was descriptive. It was also

argued that the defendant‟s mark in fact was STRETCH NIL and

about the said marks STRETCH NIL, the words SKINCLINQ were

mentioned to show the nature of the product - in fact it is STRETCH

NIL which is in bold and SKIN CLINIQ is written in comparatively

smaller font which is not even visible from a distance. It was further

contended that had the intention of the defendant been to copy or

ape the plaintiff, the defendant would have used CLINIQUE rather

than „Q‟ only. The products of Kaya Skin Clinic were also shown to

contend that SKIN CLINIQ was only indicative of

medicinal/therapeutic quality.

29. Besides relying on Kaviraj Pandit Durga Dutt Sharma Vs.

Navaratna Pharmaceuticals Laboratories AIR 1965 SC 1980 on

the principles of passing off and the test being of deceptive

similarity, not similarity, reliance was also placed on Cadila

Healthcare Ltd. Vs. Gujrat Cooperative Federation Ltd & Anr.

2008 (36) PTC 168, Cadila Healthcare Vs. Dabur India Ltd. 2008

(38) PTC 130 both in relation to sugar free, where the interim

injunction was not granted.

30. On the aspect of delay and laches, main thrust was placed on

Power Control Appliances Vs. Sumeet Machines Pvt. Ltd.

(1994) 2 SCC 448 and it was urged that the criteria for the grant of

interim injunction had to be entirely different where the defendant

was a running concern as in the present case, in contra distinction to

the case where the defendant had recently started or was yet to

start. I may notice that the defendant has filed a number of

magazines containing the advertisements of the product STRETCH

NIL SKIN CLINIQUE of the defendant and from which the sales by

the defendant of the said product since 1999 cannot be doubted.

31. Balsara Hygiene Products Vs. M/s Aksaar Enterprises

1997 PTC (17) 266 and BL &Co. Vs. Pfizer Products INCl 2001

(21) PTC 797 were cited to urge that merely giving of notice does not

cure delay.

32. It was further argued that in the case of the present nature,

the plaintiffs are required to prove by leading evidence that its

product though not admittedly sold in India till 2007 enjoyed the

Trans border reputation so as to be entitled to injunction. It was

stated that the product of the plaintiffs is not like Mercedes and not

a well-known product and the plaintiffs are yet to establish that they

had any goodwill or reputation. It is urged that the plaintiffs had no

reputation in India when the defendant adopted the mark in the year

1998. It was thus urged that the balance of convenience was in

favour of the defendant and in refusal of the interim injunction

claimed.

33. The plaintiff‟s action was stated to be totally frivolous and

vexatious and relief and actual costs on the application for injunction

and for during the period of operation ex-parte injunction were also

claimed. On inquiry, the counsel for the defendant after taking

instructions informed that the defendant is using the mark SKIN

CLINIQ only on the STRECHNIL product aforesaid and on no other

product.

34. I had put it to the senior counsel for the defendant also and am

of the opinion that in cases such as of the present nature the order of

injunction if the plaintiff is otherwise found entitled to, ought not to

be declined merely because it is the interim stage. In my view, in

cases such as the present one, awaiting evidence cannot be of much

significance. Even if one or two witnesses on the side of the

plaintiffs were to depose of the huge reputation and goodwill of the

plaintiff and knowledge thereof notwithstanding non-availability

thereof in India till 2007 and a few witnesses on the side of the

defendant to depose in the negative, the same would not make any

difference. The court even then, as it can now, of its own experience

and view of the prevailing conditions has to adjudicate on the

entitlement to injunction.

35. I had, at the beginning, of the hearing only put to the senior

counsel for the plaintiffs as to whether the distinctiveness, if any, in

a mark CLINIQUE of the plaintiff had not been diluted by the wide

scale advertisement and marketing and sale of the product CLINIC

Shampoo in India. It was informed that the same is manufactured

and marketed in India by Hindustan Liver Ltd. and the plaintiff has a

worldwide agreement with Levers Ltd. whereunder the plaintiffs are

not to enter the field of Shampoo and Hindustan Liver Ltd. is not to

enter the field of cosmetics and perfumery under the mark CLINIC.

Exemption was sought and granted from filing the said agreement

for the reasons of confidentiality.

36. Having prefaced as aforesaid I now proceed to consider the

claim of the plaintiffs to injunction.

37. It is the contention of the defendant also that the products of

the plaintiffs are meant for highest echelon /strata of the society and

are highly priced. The consumers of the said product, in my view,

because of travel and circulation of foreign magazines and word of

mouth would be aware of the brand/trademark CLINIQUE of the

plaintiffs. Thus, it cannot be said that merely because the plaintiffs

had no sales in India till 2007, the products of the plaintiffs could not

be known or could not have a reputation in India. The plaintiffs are

an affiliate/associate of Esteelauder a world renowned giant in the

field of cosmetics. Moreover, the international barriers have been

successively melting in the last 10 to 15 years. If the trademark of

the plaintiffs is well known internationally and which has not been

contested by the defendant also, then in my view considering the

targeted customers, it cannot be said that it is not well known and

does not have a reputation in India. In the court, a wide range of

products of the plaintiffs have been shown not only by both the

parties, the senior counsel for the defendant also handed over

download of the same from the internet. Though the plaintiff had at

the time of ex-parte hearing and even now laid emphasis on the

defendant having copied the green colour of the plaintiff but I find

that it is not as if the plaintiff has been using green colour only on all

its products. The wide range products of the plaintiffs come in all,

hues, shapes and sizes. They are not necessarily exclusively under

the trademark CLINIQUE and do not necessarily have the „C‟ logo.

The word CLINIQUE is used by the plaintiffs also in conjunction with

other words as various trademark registrations of the plaintiff itself

would show.

38. Not only so, the very fact that the plaintiffs had registrations in

India since the year 1981 would also show that the plaintiffs

considered India as a territory where depending upon governmental

and political restrictions, it intended to market its goods and/or

where it intended to protect itself from infringement.

39. Seen in the aforesaid light, the action of the defendants who

are engaged in the same business and to whom the presumption of

knowledge of the plaintiff‟s trademark has to be necessarily imputed,

appears to be not above board. In my view, not much distinction

from the words „Q‟ or „QUE‟ can be inferred. What the mind retains

is that the mark of the plaintiffs is spelt differently from „NIC‟ and a

customer cannot be expected to remember whether it was „Q‟ or

„QUE‟. All that will be associated with the plaintiffs is CLINIQ with

or without „UE‟

40. Another interesting aspect is that the defendant has from day

one given emphasis/prominence to STRETCH NIL. In fact of the

words SKIN CLINIQ written in much smaller font thereupon also, the

word CLINIQ is shaded in colour green. If the intent of the

defendant was to market its product under the name STRETCH NIL,

which during arguments also it was contended that the trademark of

the defendant was, why did the defendant opt not to register

STRETCH NIL but chose to register SKIN CLINIQ. No explanation

was offered for the same. I am firmly of the opinion that the

defendant used the word CLINIQ with the prefix SKIN in an attempt

to show that the said product of the defendant was in some way or

the other associated with the plaintiffs and to thereby pass off its

goods as that of the plaintiff.

41. In this respect, I also find the endorsement on the said

products of the defendant "Made in India by Gufic Bio Sciences Ltd."

to be intriguing. The name of manufactures in the product of Kaya

Skin Clinic shown by the defendant is described with the words

"Manufactured By". I had inquired from the senior counsel for the

defendant the reason for so writing and as to whether the defendants

were manufacturing the said product outside India also. The answer

after instructions was in the negative. This also leads one to believe

and gives an impression that the defendant was making the

STRETCH NIL cream in India under licence from or in association

with the plaintiffs whose trademark CLINIQUE, of course as CLINIQ

appears immediately above STRETCH NIL.

42. The invoices filed by the defendant, which of course have been

described by the senior counsel for the plaintiffs merely as stock

transfer and not proof of any sales, also describe the product as

STRETCH NIL and not SKIN CLINIQUE. The argument of the senior

counsel for the defendant himself was that SKIN CLINIQ is not even

visible from a distance. A customer is thus expected to know the

product and as in fact it appears from the face/packaging of the

product itself and its advertisement as STRETCH NIL only and not as

SKIN CLINIQ. If that be so, then I fail to see as to what loss the

defendant could be suffering or will suffer if injuncted from using the

word CLINIQ. It is not as if the defendant is being restrained from

using its trademark STRETCH NIL or from marketing its product.

The adoption by the defendant of the word CLINIQ with the expected

knowledge of trademark of the plaintiffs is found to be thus

dishonest and intended to take advantage of the goodwill of the

plaintiff.

43. The argument of the defendant of there being a large number

of other users and the word CLINIQUE also does not impress me.

Firstly, none of them are shown to be in relation to the same

products as the plaintiffs and merely because of the said reason, the

plaintiff if otherwise found entitled to injunction against the

defendant, cannot be denied so.

44. In the catalogue of the products of the plaintiffs handed over

by the senior counsel for the defendant is a product CLINIQUE

DERMA WHITE. The defendant had disclosed registration in the

name of DERMA CLINIQ. Is there likely to be confusion between

CLINIQUE DERMA WHITE and DERMA CLINIQ? The answer, in my

opinion, has to be necessarily in affirmative.

45. There is yet another aspect of the matter. The question of

infringement/passing off has to be seen under the Indian context,

marketing conditions and users. Cosmetics in India are not sold at

exclusive stores; they may be expected in a few large malls in the

recent times. The cosmetics here are generally sold in chemist

shops, generally of small sizes, departmental stores or even in

provision stores. Cosmetics are applied in beauty parlors; found at

each and every nook and corner of every lane in cites and town of all

sizes. Such services are also available on call where beauty products

are carried to customers in vanity boxes. The possibility of

deception, infringement, passing off has to be seen in those

conditions and circumstances and not where a customer has all the

time in the world to inspect, examine and discern. The beauty

saloons/parlors in India are well-known to refill the cartons of well

known brands with local products. In these circumstances, the

possibility of the goods of the defendant being palmed of and applied

as that of the plaintiffs and the query if any of a customer choosing

to see the name of the manufacturer being answered with the

defendant making STRETCHNIL in India under licence from the

plaintiff when such arrangements are now well known, is extremely

high.

46. Though, the senior counsel for the defendant choose not to

argue on infringement, having argued that there cannot be

infringement of a registered trademark, I otherwise find the mark of

the defendant to be satisfying the test of infringement as laid down

in Section 29.

47. However, prior thereto, the test of prima facie validity of

registration of the mark of the defendant has to be applied. The

registration of the plaintiff is undoubtedly prior in point of time.

Section 9 lays down the absolute grounds for refusal of registration.

Section 9 (1) provides that trademarks which are devoid of any

distinctive character or which designate the quality or intended

purpose of goods shall not be registered. One of the contentions of

defendant has been that SKIN CLINIQ is indicative of the

clinical/therapeutic nature of its product STRETCH NIL. If that is so,

then registration of SKIN CLINIQ fails the test in Section 9 (1) (a) &

(b). No evidence of distinctiveness led before the Registrar is shown.

Similarly, no prima facie evidence of having post registration

acquired any distinctiveness has been shown. On the contrary

reliance was placed on Kaya Clinic. I have already held that use of

CLINIQ by the defendant is likely to deceive the public and cause

confusion, owing to similarity with plaintiffs prior registered

trademark. Thus, the bar of Section 9 (2) (a) is also attracted.

Section 11 prescribes the relative grounds for refusal of registration.

One such ground in Section 11(1)(a) is because of its

identity/similarity with earlier trademark and similarity of goods or

services covered by the trademark coupled with likelihood of

confusion including likelihood of association with earlier trademark.

Section 11(2) deals with well known trademark in India. Well known

trademark is defined in Section 2 (zg) - the test there is vis-à-vis the

segment of the public which uses such goods. I have already found

above in this regard. The mark CLINIQUE of the plaintiffs in my

view satisfies the test of a well known trademark also. The argument

of senior counsel for plaintiffs of the bar of Section 11(1) not

requiring any opposition even has already been noticed above.

48. Nothing has been shown that the Registrar at the time of

registering the mark of the defendant considered the question of

identity/similarity of mark of defendant with that of plaintiffs, since

there was identity/similarity of goods covered by the said mark.

49. Prima facie it appears that the registration of the mark of the

defendant suffers from non compliance of requirements of Section

11(1) & (2). From the arguments of defendant before this court, no

satisfaction of ingredients of Section (1)(a) & (b) is also made out.

50. Once having reached the aforesaid conclusion, there can be no

doubt that if the mark of the defendant were to be held to be

invalidly registered, a case of infringement under Section 29 is made

out. It cannot be lost sight of that CLINIQUE also forms the

dominant part of the trade name itself of the plaintiffs. The products

of both are cosmetic and beauty enhancing.

51. The senior counsel for plaintiff has also relied upon:-

a. Judgments/orders, copies of which have been filed,

where the mark of the plaintiffs has been protected.

b. Judgments of the single judge, Division Bench and Apex

court in Whirl Pool Vs. N.R. Dongre that the test of,

knowledge of Indians from frequent travels abroad, first

there principle had been applied and also on the aspect

of delay.

c. Milmet Oftho Industries Vs. Allergan Inc (2004) 12

SCC 624 on worldwide reputation and First to Market

Test. The factum of plaintiffs having admittedly

commenced marketing here makes the exception carved

out in para 8 of judgment inapplicable to the plaintiffs.

d. Judgments in William Grants, Benz and Caterpillar cases

on the aspect of dilution.

e. Judgment of Allahabad High Court in case of Bata in

support of, there being no reason for defendant to adopt

CLINIQ except to take advantage of goodwill of plaintiff,

the consumers believing that STRETCH NILL was also

from the house of plaintiff and the possibility of injury to

plaintiff by defect in quality of goods of defendant under

the similar/deceptively similar mark.

f. Judgment of this court in Hindustan Pencils and in

Ansul Industries Vs. Shiva Tobacco Co. (2007) 34

PTC 392 & of Apex court in Midas Hygiene on the

defence of laches being not available if adoption is

dishonest.

g. Judgment in Mahindra case and Indian Shaving

Products Ltd. to canvass that CLINIQUE has acquired

secondary meaning associated with plaintiffs only.

h. Judgment in Essel Packaging and Info Edge (India)

Pvt. Ltd. Vs. Shailesh Gupta (2002) 24 PTC 355 (Del)

to canvass that merely because others are also using the

mark is no justification for the defendant to do so.

i. Judgment in Century Traders, on test being of prior

user.

j. Judgments in Cibaca, Dunhill cases on distinctiveness.

k. Power Control Appliances (Supra) and Beirsdort AG

Vs. Ajay Sukhwani (2009) 39 PTC 38 (Del) on what is

acquiescence. Ramdev Food Products was also cited

in this regard.

l. Yash Arora Vs. Tushar Enterprises (2008) 36 PTC 523

(Del.) (DB) to urge that the plaintiffs as anterior user of

the mark were also entitled to relief on principles of

passing off, notwithstanding registration in favour of

defendant.

m. Finally the Tata Iron & Steel Co. Ltd. Vs. Mahavir

Steels 47 (1992) DLT 412 on need to curb imitation.

52. The senior counsel for defendant, in addition to judgments

cited & noted above, also relied upon:-

a. Judgment of this court in Austin Nicholas. However, I

do not find the said judgment to be advancing the case of

defendant in any manner. In this it was held that merely

because the defendant was first past the post in India

would not confer on it any benefits if the plaintiff is the

prior user. In this case, I find that the plaintiff being the

prior user, registration in favour of defendant since,

1998, will not deprive the plaintiff of the relief.

b. T.T.K. Prestige Ltd. Vs. Harprasad Gupta 1999 PTC

72 Del. and P.M. Diesels Pvt. Ltd. Vs. Thukral

Mechanical Works, AIR 1988 Del. 282 on concurrent

use right under Section 28(3) and relief of injunction

being not maintainable. However in these, the provision

as in Section 124 (5) of 1999 Act was not concerned.

c. Gillette Company case on relevancy of prior use in

India. However, in this case the registration of plaintiff

in India was subsequent to use by defendant of the mark

in India, unlike in the present case. The passage from

THE LAW OF PASSING OFF by Christopher Wadlow

on the relevance of delay at the stage of grant of

interlocutory relief, cited in this judgment was also read.

Reliance was also placed on Sri Gopal Engg. Vs. Pomx

Laboratory AIR 1992 Del 302, B.L. & Co. Vs. Pfizer

Products 2001 PTC 797 (Del) (DB) and Balsara

Hygiene Products Ltd. Vs. Aksaar Enterprises 1997

PTC 17 was also placed in this regard. In the latter, it

was held that giving of notice did not cure delay.

d. Finally Websters dictionary qua "CLINIC" was shown to

urge that the word had been derived from "CLINIQUE"

of Greek language. In my view this is also irrelevant. In

English language, the word is CLINIC only and not

CLINIQUE and the plaintiff being the prior user of

CLINIQUE in relation to same products, even if being the

source of the word in English language, would not give

the defendant a right to use CLINIQUE for products

targeted at consumers knowing English and not Greek.

53. At this stage, the contention of the senior counsel for

defendant on the basis of judgments with respect to Sugar Free

needs to be dealt with. In the case against Dabur, this court found

the words to be descriptive of the product and used as a catchy

legend and not as a brand name or trademark and which in

conjunction with the well known brand Dabur were found not

capable of causing any confusion qua plaintiffs goods. In the other

case against Gujarat Cooperative Milk Marketing Federation,

the possibility of confusion was not ruled out and though interim

injunction was not granted, directions for change were issued to the

defendant therein. However, in the present case I have found the

possibility of deception and the word CLINIQ to be not descriptive

but indicating a connection of product of defendant to the plaintiff.

STRETCH NIL, by no stretch of imagination can be equated to Dabur

Chyawanprakash in terms of popularity. Thus merely because it was

held that use of Sugar Free of plaintiff in that case on Dabur

Chyanprakash could cause no confusion does not persuade me to

hold that use of STRETCH NIL by defendant along with mark

similar/deceptively similar to plaintiffs is enough to distinguish the

goods of defendant from that of plaintiff.

54. The injury to the plaintiff from continued use of their mark or a

mark deceptively similar thereto by defendant is implicit. The

argument of price difference in my view can cut both ways. Much

lower price of the goods of the defendant than that of plaintiffs can

lower the esteem in which the connoisseurs of the goods of the

plaintiffs hold the same. Otherwise, as aforesaid, I find injury to the

defendant in the event of ex-parte order being confirmed, to be much

lower than that which the plaintiff will suffer if the defendant is

permitted to continue using CLINIQ. The Annual Report, Invoices of

the defendant do not show that till now, the marketability of the

product of the defendant is dependent upon use of CLINIQ, which

otherwise, till now forms insignificant and inconsequential part of

defendant‟s product. If the defendant contends that its sales are

dependent only upon use of CLINIQ, the defendant walks into the

trap of riding on association with plaintiff. Conversely, CLINIQUE is

the dominant mark of the plaintiff.

55. The actions of the plaintiff in the present case also do not show

the plaintiff to have in any manner encouraged expansion of

defendants trade under the mark under CLINIQ. On the contrary the

conduct of the defendant of not replying to notices and even when

finally replying not disclosing other registrations is found to be one

of hide and seek. The defendant appears to have been aware of the

consequences and therefore attempted to defer the matters till

possible. The plaintiffs immediately after they started sales in India

and becoming aware of defendants product issued notices. The

senior counsel for the defendant is correct that the version of

plaintiff of their enquiries showing discontinuance of mark by

defendant is not believable. However, juxtaposed against defendants

conduct, no such case of waiver as to disentitle the plaintiff from

relief is made out.

56. I.A.No.217/2009 of the defendant under Order 39 Rule 4 CPC

is dismissed. I.A. No.2769/2009 of the plaintiff under Section 124 (1)

(ii) CPC is allowed. The rectification application filed by plaintiff

prior to institution of suit is already pending. The pleadings in the

suit having been completed, it is found that the pleas of the plaintiff

regarding the invalidity of the other marks aforesaid of the

defendant, already registered are prima facie tenable. The

proceedings in the suit are adjourned under Section 124 (1) pending

the final disposal of rectification proceedings already instituted and

to enable the plaintiff to apply for rectification of register regarding

the other marks. The parties shall have liberty to apply for revival of

suit as and when need arises. I.A.No.15425/2008 of plaintiff under

Order 39 Rule 1&2 is allowed. The ex parte order dated 16 th

December, 2008 is made absolute during the period of stay of the

suit. The question of costs shall be considered at time of final

disposal of suit. Needless to state that nothing said herein shall

come in the way of the proceedings, pending which suit has been

stayed.

RAJIV SAHAI ENDLAW (JUDGE) April 09, 2009 PP