Ms. Divya Sood vs Ms. Renu Bajaj
2011 Latest Caselaw 543 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                    Judgment Reserved on: 20.01.2011
                     Judgment Pronounced on: 31.01.2011

+           CS(OS) No. 496/2009

MS. DIVYA SOOD
PROPRIETOR M/S. THE BODY CARE                  .....Plaintiff

                           - versus -

MS. RENU BAJAJ
PROPRIETOR M/S. PERFECT BODY CARE .....Defendant

Advocates who appeared in this case:
For the Plaintiff: Mr. M.K. Miglani and Mr. Kapil Kumar
For the Defendant: None.

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

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 Yes in Digest?

V.K. JAIN, J

1. This is a suit for permanent injunction, rendition

of accounts and damages. The plaintiff Ms. Divya Sood,

who is carrying business under the name and style M/s

THE BODY CARE in engaged in providing beauty and health

care services through slimming centres, beauty clinics,

spas, etc. The case of the plaintiff is that she began her

operation in the year 1997 and is now recognized as the

leader in providing beauty and health services, through a

team of dedicated and trained professionals, who are

acknowledged to be the best trained in the industry. She

also claims to be well known for setting up professional and

ethical standards and claims reputation as a world-class

beauty and health care specialists. She is operating 23

beauty body and health care clinics all over the country

with branches in all major Indian cities.

2. The case of the plaintiff is that the mark THE

BODY CARE was coined and adopted by her in the year

2000 and since then she has been continuously,

uninterruptedly and extensively using the aforesaid mark.

She has also applied for the registration of the mark THE

BODY CARE and her application was advertised in

Trademark Journal on 18th November 2003. The plaintiff

also claims a unique and distinctive reputation of the

trademark/label of THE BODY CARE and claims it to be an

original artistic work, within the meaning of Section 2(d) of

the Copyright Act, 1957. The plaintiff has been granted

copyright registration in respect of the said artistic work

vide registration No. A-71352/2005. The plaintiff has

claimed revenue of Rs.19,10,38,917/- in the year 2005-06,

Rs.18,34,73,107/- in the year 2006-07 and

Rs.13,42,06,684/- between April to December 2007. She

also claimed to have incurred advertisement expenditure of

Rs.2,27,39,315/-, Rs.2,08,15,930/- and Rs.1,68,99,309/-

respectively during these periods. This is also the case of the

plaintiff that on account of the long, continuance and

extensive use, coupled with extensive sales promotion

activities, the trademark/label THE BODY CARE has

acquired enviable goodwill and impeccable trade reputation

and has come to be associated solely and exclusively with

the plaintiff and, therefore, the use of an identical and/or

deceptively similar trademark by another person for

same/similar goods/services is bound to be considered by

the public as user by the plaintiff in one manner or the

other.

3. Defendant Renu Bajaj is carrying business under

the name and style of M/s. Perfect Body Care. It is alleged

that the trademark/label PERFECT BODY CARE being used

by the defendant is identical and/or deceptively similar to

the trademark/label of the plaintiff in writing style, get-up

and colour combination and the defendant has deliberately

copied the writing style, get-up and distinctive pink and

white colour combination of the plaintiff's trademark/label

with a view to trade upon the benefit earned by the plaintiff.

It has also been stated that the defendant is carrying

business at B-291, Saraswati Vihar,1st Floor, Outer Ring

Road, Pitam Pura, New Delhi where business was earlier

being carried by the plaintiff from January 1998 to October

2001. It is also alleged that the persons who avail services

of the plaintiff come from all walks of life, including illiterate

and unwary customers, who demand and recognize services

of the plaintiff by the unique and distinctive

trademark/label adopted and being used by her. The

plaintiff has, therefore, claimed an injunction restraining

the defendant from providing, marketing, selling and

offering or advertising health and beauty care services

under the trademark/label PERFECT BODY CARE or any

other trademark/label which would infringe the registered

copyright of the plaintiff in label THE BODY CARE. She has

also sought injunction restraining the defendant from

passing off her services as those of the plaintiff. She has

also claimed rendition of accounts and damages amounting

to Rs.20 Lacs from the defendant.

4. The defendant was proceeded ex parte vide order

dated May 21, 2010. Earlier the defendant failed to appear

before Delhi High Court Mediation and Conciliation Centre,

to which the matter was referred for making efforts for an

amicable resolution of the disputes between the parties.

5. The plaintiff has filed the affidavit of one Mr. B.P.

Sood by way of ex parte evidence. In his affidavit Mr. Sood

has supported on Oath, the case setup in the plaint and has

stated that the plaintiff began her operations in the year

1997 at a small beauty clinic in Patel Nagar and her

business has since grown in leaps and bounds and she has

become one of the premier beauty and health care service

provider in the Country. He has further stated that the

plaintiffs is widely recognized as the leader in providing

beauty and health care services and she offers

comprehensive beauty and health care packages through a

team of dedicated and trained professionals. He has also

claimed that plaintiff is known for setting up professional

and ethical standards in the industry and has established

reputation as a world class beauty and health care

specialist. He has also stated that the trademark/label THE

BODY CARE is being used by the plaintiff openly,

continuously and extensively since the year 2000 and it has

acquired a secondary meaning connoting and denoting to

the members of trade and customers at large as the

trademark exclusively of the plaintiff. He has also stated

that the defendant was offering services from premises

No.B-291, Saraswati Vihar, 1st Floor, Outer Ring Road,

Pitam Pura, New Delhi from where the plaintiff was earlier

carrying business between January 1998 to October 2001

using the trademark/label THE BODY CARE.

6. Ex.PW1/3 are the list of 54 beauty and health care

clinics, which the plaintiff has established in various States.

Ex.PW1/44 and Ex.PW1/45 are the certificates issued by

the Chartered Accountant of the plaintiff, which show that

the turnover of the plaintiff was Rs. 19,10,38,917/- in the

year 2005-06, Rs.18,34,73,107/- and Rs.13,42,06,684/-

between April to December 2007 and that she incurred

advertisement expenditure of Rs.2,27,39,315/-,

Rs.2,08,15,930/- and Rs.1,68,99,309/- respectively during

these periods.

7. The deposition of PW-1 Shri B.P. Sood, coupled

with the list Ex. PW-1/3 shows that the plaintiff has

established as many as 54 Beauty and Health Care clinics

since the time she adopted the trademark THE BODY

CARE. The certificates Ex.PW-1/44 and PW-1/45, issued by

the Chartered Accountant of the plaintiff, shows that she

had a large turnover in the years 2005-06, 2006-07, 2007-

08 from the services being rendered by her and she incurred

huge expenditure during those years on advertising the

services being offered by her, through various clinics. Since

the defendant has chosen to remain ex parte and has not

come forward to controvert the oral and documentary

evidence produced by the plaintiff, I see no reason to

disbelieve the claim of the plaintiff that the trademark THE

BODY CARE, on account of its continuous and extensive

use by the plaintiff through various clinics set up by her

and the expenses incurred by her and building and

promoting the trademark, it has come to be associated with

her and the services being offered under the brand name

THE BODY CARE have come to be identified as the services

being offered by the plaintiff. Also, I see no reason to

disbelieve the claim of the plaintiff that she has been

recognized as the leader in providing comprehensive beauty

and health care through a team of dedicated and well-

trained professionals and, therefore, the persons, who

choose to buy the services being rendered by her, expect a

certain professional and ethical standard to be maintained

by the provider of those services.

8. The Registration Certificate dated 29th April, 2005,

in respect of Registration No. A-71352/2005, issued by

Registrar of Copyrights, shows that the plaintiff is the

registered owner of the work, annexed to the certificate and

that she claimed before the Registrar of Copyrights that this

work was first published by her in India in the year 2000.

Page 2 of the Certificate, which, in fact, is an annexure to

the document, shows that the copyright has been claimed

and registered in the artistic work involved in writing the

words THE BODY CARE which have been written in a

particular unique style and particular getup, using a

distinctive font for the purpose. The sketch of a woman

drawn by the plaintiff has been shown on the left side of the

words THE BODY CARE. The picture/sketch of the woman

is not the photograph of a woman, but is only a sketch

drawn by the plaintiff. The sketch of a woman drawn by the

plaintiff does not depict the full body of the woman and her

hairs are shown flying backwards in a distinct style. The

right arm of the woman is shown touching her left hand. It

is, therefore, difficult to dispute that the work in respect of

which copyright has been granted to the plaintiff is a result

of an idea conceived by her which was expressed in a

unique way, using a lot of skill, labour and ingenuity in the

process and, therefore, qualifies as an artistic work within

the meaning of Section 2(c)(i) of Copyright Act. The work of

the plaintiff has been recognized by Registrar of Copyright,

by granting requisite registration in her favour. Prima facie,

registration of such a work under Copyright Act covered at

least prima facie evidence of its being an artistic work within

the meaning of the Act. No one can claim copyright in

general in the picture or sketch of a woman. However, since

such a picture/sketch can be drawn in a number of forms

and using different styles, getups and expressions, a lot of

skill and labour is involved in conceiving, conceptualizing

and producing such a work and, therefore, a particular

picture or sketch may constitute an artistic work in which

copyright can be claimed by its author. No one has a right

to reproduce such a work or another work using the

essential features of that work.

9. A comparison of the work in respect of which

copyright has been granted to the plaintiff with the name

and logo/image being used by the defendant reveals a

number of similarities. The sketch of a woman is being

used by the plaintiff on the left side of the name THE BODY

CARE. The defendant is also using the sketch of a woman

on the left side of the name PERFECT BODY CARE. The

words "SLIMMING AND BEAUTY CLINIC FOR MEN AND

WOMEN" have been written under the words THE BODY

CARE in the registered work of the plaintiff. Exactly same

words have been written by the defendant under the name

PERFECT BODY CARE, though not in capital letters. The

font used by the defendant for writing the words PERFECT

BODY CARE is almost identical to the font used by the

plaintiff in writing the words BODY CARE. The minimal

difference in font and shape of the letters can be noticed

only when both the words are kept side by side and on

meticulous examination in this regard is carried out. If a

person having once or more seeing the work of the plaintiff

comes across the work of the defendant at a later date,

there is a strong likelihood of his mistaking the work of the

defendant as that of the plaintiff. Even the colour scheme

adopted by the parties is similar being pink and white. If

there are substantial similarities in the work, in which the

copyright is claimed and the impugned work, minor

dissimilarities will not non suit the plaintiff and

infringement of the copyright would still be made out.

10. It is not necessary that in order to constitute

infringement of a copyright, the impugned work should be

an exact or verbatim copy of the original work and it will be

sufficient if it is shown that though not a verbatim copy of

the original work, the impugned work resembles to it in a

substantial degree by extensive use of the main feature,

which are found in the work in respect of which copyright is

claimed. In fact any intelligent person copying a work, in

which the copyright vests in another person, would make

some changes here and there so as to claim that his work

does not constitute infringement of the work in which a

copyright subsists in favour of another person. But, such

rather minor dissimilarities between the work of the plaintiff

and the impugned work would not deprive the plaintiff of

injunction in case degree of resemblance in the two works is

substantial and there is an attempt to encash upon the

goodwill of a well established work.

11. In R.G. Anand v. Delux Films & Ors., AIR 1978

SC1613, Supreme Court inter alia laid down the following

propositions:

One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets and unmistakable impression that the subsequent work appears to be a copy of the original.

Whether the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.

Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence.

Thus the artistic representation of the mark/label

being used by the defendant appears to be a copy of the

writing style, getup and colour scheme combination being

used by the plaintiff.

12. The trademark THE BODY CARE is being used by

the plaintiff since the year 2000. The plaintiff came across

the trademark PERFECT BODY CARE being used by the

defendant in the second week of November 2008. The

defendant has not come forward to claim that she was a

prior user of the words BODY CARE, which forms part of

her trademark PERFECT BODY CARE. The necessary

inference, therefore, is that it is the plaintiff who is the prior

user of the trademark THE BODY CARE, she having

commenced the use in the year 2000. The defendant has

incorporated almost whole of the trademark of the plaintiff

by adopting and using the mark PERFECT BODY CARE.

The defendant has not come forward to explain to the Court

as to why she chose to include the words BODY CARE in

the trademark adopted by her. As noted earlier, on account

of its extensive user since the year 2000 and huge

expenditure incurred by her on building and promoting the

trademark THE BODY CARE, this mark has come to be

associated with the plaintiff. The plaintiff is running a large

number of clinics throughout the Country offering health

and beauty care treatment through those clinics. If a

person, who has availed services of the plaintiff or who

wants to avail her services on account of the reputation,

which has come to be associated with her brand THE BODY

CARE, and he happens to come across the mark PERFECT

BODY CARE being used by the defendant, it is likely to

cause confusion in his mind and he may presume that the

clinic being run by the defendant was a clinic of the plaintiff

or was in some manner or the other associated with her and

that is why the work BODY CARE is being used by her while

offering similar services. An unwary consumer, whether

purchasing goods or availing services attaches considerable

importance to the essential features of the work or the mark

as the case may be and the basis to be adopted by the Court

is as to what the general impression of such a customer of

imperfect recollection would be on seeing the impugned

work/mark, where he would consider it to be the

work/mark of the plaintiff. Hence, there is a genuine

likelihood of the defendant being able to pass her services

as those of the plaintiff, by her using the mark PERFECT

BODY CARE. The case of the plaintiff is that on account of

high quality of the services being offered by her through

trained personnel, the customers using her services expect

them to be of high standard and superior quality. If a

person avails the services being offered by the defendant, on

a misconception that she was somehow or the other

connected with the plaintiff and it transpires that the

quality of the services being provided by the defendant to

the customer is not as good as the quality of the services

being provided by the plaintiff, this may not only damage

the goodwill and reputation of the plaintiff, it may also

adversely affect the interest of a common citizen to pays for

services of a high standard but, gets services of a lower

standard.

13. The word THE BODY CARE of course appears to be

a descriptive word but, as observed by Supreme Court in

2005 (30) PTC 1 (SC) even a descriptive word may be entitled

to protection if it has assumed a secondary meaning which

identifies it with a particular product or as being from a

particular source. The case of the plaintiff before this Court

is that on account of continuous user since the year 2000,

the efforts made and the expenditure incurred by her on

building and promoting this mark, it has come to be

associated with the services being offered by her alone.

Similar view was taken by this Court in 2002 (24)

PTC 355 (Del) observing that if a product of a particular

character or composition is marketed in a particular area or

place under the descriptive name and has gained a

reputation thereunder, that name which distinguishes it

from competing products of different composition, the

goodwill in the name of those entitled to make use of it are

protected against deceptive use there of the name by

competitors. In that case, the plaintiff had adopted the

domain name NAUKRI.COM. The defendant, who adopted

the domain name NAUKARI.COM had taken the plea that

the trademark NAUKRI.COM was generic and, therefore,

incapable of achieving the trademark significance or

secondary meaning. It was observed during the course of

judgment that when a defendant does business under the

name, which is sufficiently close to the name under which

the plaintiff is trading and the name has acquired a

reputation, the public at large is likely to be deceived and

misled that the business of the defendant is business of the

plaintiff or branch or department of the plaintiff. It was

further observed that if it is found by the Court that such a

mark has attained distinctiveness and is associated with the

business of the plaintiff for a considerable time and

thereafter the defendant adopts a similar word, to induce

innocent users to come to its website, which establishes

dishonest intention and bad faith, the Court would have

justified in granting injunction to the protect business of the

plaintiff.

14. In Parle Products (P) Ltd. v. J.P. & Co., Mysore,

AIR 1972 SC 1359, Supreme Court inter alia observed as

under:-

According to Karly's Law of Trade Marks and Trade Names (9th Edition Paragraph 838) "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with the one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.

It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

The above referred observations made by the

Supreme Court in respect of a trademark would equally

apply in a case for infringement of a registered trademark.

The plaintiff has, thus, been able to prove

infringement of her copyright as also that the defendant by

using the mark PERFECT BODY CARE is passing off her

beauty and health related services as those being offered by

the plaintiff. The case of the plaintiff finds further strength

from the fact that the defendant is provided their services

from the same premises where the plaintiff was earlier

running a beauty and health care clinic, thereby giving an

impression that the clinic was being run by the plaintiff or

was associated with her.

15. The relief of rendition of account was not pressed

during the course of arguments. The plaintiff has also

claimed damages to the tune of Rs.20Lacs. No actual

damages have been proved by the plaintiff and the only

prayer made during the course of arguments was to award

punitive damages. The reliance in this regard was placed on

the decisions of this Court in Time Incorporated v. Lokesh

Srivastava & Anr., 2005 (30) PTC 3 (Del) and Dabur India

Ltd. v. Emami Ltd., 2006 (32) PTC 125 (Del). In the case of

Times Incorporated (Supra), this Court observed that

punitive damages are founded on the philosophy of

corrective justice and as such, in appropriate cases these

must be awarded to give a signal to the wrong doers that the

law does not take a breach merely as a matter between rival

parties but feels concerned about those also who are not

party to the lis but suffer on account of the breach. In the

case of Hero Honda (Supra), this Court noticing that the

defendant had chosen to stay away from the proceedings of

the Court felt that in such case punitive damages need to be

awarded, since otherwise to the defendant, who appears in

the Court and submits its account books would be liable for

damages whereas a party which chooses to stay away from

the Court proceedings would escape the liability on account

of the failure of the availability of account books. Also, the

Court needs to take note of the fact that a lot of energy and

resources are spent in litigating against those who infringe

the trademark and copyright of others and try to encash

upon the goodwill and reputation of other brands by

passing of their goods and/or services as those of that well

known brand.

16. For the reasons given in the preceding paragraphs,

the defendant is hereby restrained from offering and/or

providing beauty and health care services under the name

PERFECT BODY CARE. The defendant is also restrained

from using the words BODY CARE as a part of its corporate

name, in respect of beauty and health care services. The

defendant will, however, be entitled to use the trademark

PERFECT BODY CARE as also the tradename PERFECT

BODY CARE in respect of any services other than beauty

and health care services such as beauty clinics, health

clinics, slimming centres, etc. Taking into consideration all

the facts and circumstances of the case, punitive damages

amounting to Rs.20,000/- are awarded to the plaintiff.

Decree sheet be prepared accordingly.

(V.K. JAIN) JUDGE JANUARY 31, 2011 Ag/BG