Bourjois Limited vs Mr. Naunihal Singh & Ors.
2012 Latest Caselaw 6899 Del

       *         IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                        Judgment reserved on: 26.11.2012
                                         Judgment pronounced on: 03.12.2012

+      CS(OS) 258/2012
       BOURJOIS LIMITED                                            ..... Plaintiff
                                    Through:   Ms. Vaishali Mittal and Ms.
                                               Abhilasha Nautiyal, Advs.

                           versus

       MR. NAUNIHAL SINGH & ORS.                                  .... Defendants
                         Through:              None

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

V.K. JAIN, J.

1. The plaintiff before this Court is a foreign company and claims to have

coined and adopted the trademark BOURJOIS. The plaintiff is engaging in the

business of selling cosmetic products and claims presence in over 120 countries

including India. The plaintiff company had the following global turnover and

advertising expenditure during the period 2004-2010:

Year Advertising Spend in excess of Euro Sales Turnover in excess of million (M) Euro million(M) 2004 93M 210M 2005 76M 215M 2006 83M 245M 2007 95M 290M 2008 77M 300M 2009 86M 250M 2010 85M 270M

The plaintiff claims the following turnover and advertising expenditure in India during the period 2004-2009.

       Year            Advertising Spend in excess of Euro   Sales Turnover in excess of
                                   million (M)                    Euro million(M)

2. The plaintiff company is the registered proprietor of the following trademarks in India:

Trademark               Date                  Class                 Goods
BOURJOIS                August 31,1943        03                    Performed Soap,
                                                                    perfumery,
                                                                    Cosmetics,       hair
                                                                    lotions          and
                                                                    Dentifrices
                                                                    purpose
BOURJOIS                November 25,2003 03                         Preparations      for
                                                                    application to or
                                                                    care of skin, scalp,
                                                                    hair or nails, soaps,
                                                                    perfumes, essential
                                                                    oils,    cosmetics,
                                                                    non-medicated
                                                                    toilet preparations,
                                                                    tissues
                                                                    impregnated with
                                                                    cosmetics, cotton
                                                                    wool and cotton



                                                                  sticks         for
                                                                 cosmetics purposes

3. The defendant no.2 is stated to be an in-house concern of defendant no.3 and

believed to be engaged in providing spa services, beauty services, manicures,

pedicures, bridal spa and makeup under the name 'Bourjois Spa'. The defendant

no.1 is stated to be the Chief Executive Officer of Defendant no.2 and also a

Director in defendant no.3 company. The defendants are also operating a website

having domain name http://bourjois.co.in/. The plaintiff sent notices to the

defendants in December, 2009 and February, 2010 asking them to stop the use of

the name BOURJOIS, but the defendants did not respond to the notices. The case

of the plaintiff is that the use of the mark BOURJOIS by the defendants as a trade

name and trademark for running its services and as a part of its domain name

constitutes infringement of its registered trademark, besides constituting passing

off of their services as those of the plaintiff. The plaintiff has accordingly sought

injunction restraining the defendants from using, depicting or displaying the

trademark and domain name BOURJOIS or any other mark which is deceptively

similar to the mark of the plaintiff. The plaintiff has also claimed damages

amounting to Rs.20,05,000/- from the defendants, besides rendition of account.

4. Defendants were proceeded ex parte vide order dated 15.2.2012, since they

did not put in appearance despite service and did not file any written statement.

The plaintiff has filed affidavit of Mr. Martin Hamilton, the Constituted

Attorney of the plaintiff company, by way of evidence. In his affidavit, Mr. Martin

Hamilton has supported on oath the case set out in the plaint and has proved the

documents relied upon by the plaintiff company. He has further stated that the

plaintiff company had following sales turnover during the period 2003-2010:

                 Year                 Sales Turnover all figures in excess of US D
                                                      Million(M)

                 2002                                    169M
                 2003                                    161M
                 2004                                    180M
                 2005                                    184M
                 2006                                    212M
                 2007                                    261M

5. Ex.PW1/21 is the certified copy of the Trademark Register which shows that

the plaintiff company is the proprietor of the trademark BOURJOIS in India since

25.11.2003 in respect of preparations for application to or care of the skin, scalp,

hair or nails, soaps, perfumes, essential oils, cosmetics, non-medicated toilet,

preparations, tissues impregnated with cosmetics, cotton wool and makeup sticks

for cosmetics purposes.

There are two trademark registration in favour of the plaintiff is trademark

number 85461 valid since 31.08.1943 in respect of perfumery, soap, cosmetics,

hair lotion and dentifrices and trademark no.1252141 since November 25th , 2003

in respect of preparations for application to or care of skin, scalp, hair or nails

soaps, perfumes, essential oil, cosmetics, non-medicated toilet preparations, tissues

impregnated with cosmetic cotton wool and cotton sticks for cosmetic purposes.

6. A perusal of Ex.PW1/5 which are the photographs of the various products of

the plaintiff company would show that the plaintiff company is selling large

number of cosmetic products including healthy mix foundation, mineral matte

foundation, sleep effect foundation, bio detox foundation, anticerne healthy mix,

brush concealer, bronzing compact powder, compact powder, new blush, elastic

mascara, French manicure, nail polish remover, new khol and eyeshadow,

7. A perusal of Ex.PW1/19, which is the certificate issued by the Chartered

Accountant of the plaintiff company would show that the plaintiff had sale turnover

of USD 169M, 161 M, 180M, 184M, 212 M, 261 M, 290M, 235 M and 257 M in

the year 2002-2010. It would thus be seen that the plaintiff company has a big

presence in cosmetics etc. which it is selling under the trade name BOURJOIS and

it also holds two registrations of the said trademark in India in respect of various

products which are applied on human body and are meant for its upkeep,

maintenance and beautification.

8. A perusal of the documents filed by the plaintiff would show that the

defendants are running a Spa under the name BOURJOIS SPA at Chandigarh. The

defendants also appear to be running a saloon and spa under the name 'Strands'.

The brochures of the defendants would show that the Spa being run under the name

BOURJOIS SPA also have advertised along with the broacher of 'Strands Saloon

and Spa' by them. The visiting card filed by the plaintiff also shows that 'Strands

Saloon & Spa' and 'Bourjois Spa' are sister concerns having presence in London,

New Delhi, Chandigarh, Panchcula, Ludhiana, Trivandrum. Thus, the defendants

claims to be running Spa and Saloon services under the name BOURJOIS at

various places including Delhi.

9. Ex.PW1/10 is an article published in the Magazines 'Vogue India' in respect

of the products of the plaintiff being sold under the name BOURJOIS; and

Ex.PW1/11 is a printout from the website http://www.indianvanitycase.com taken

on 26.6.2012 which would show that the products of the plaintiff company under

the name BOURJOIS are being advertised on the said website. Ex.PW1/16 is a

copy of the advertisement in 'The Times of India, Illustrated Weekly' dated

16.1.1927 wherein products of the plaintiff company were advertised. This would

show that the plaintiff company has presence in India since 1927.

10. The law relating to passing off, which is an action in Common Law is by

now well settled. Every person, whether natural or juridical, is entitled to carry and

promote his business, under such mark or trade name as he may choose to adopt for

the purpose so long as such use does not give rise to a belief that the said business

is being carried by some other person or has some business association or

connection with that person. No one is entitled to use a trademark or a trade name

which is likely to deceive the members of the public and divert the business of

another person to him, on account of use of such trade mark/trade name. If a

trademark/trade name has acquired a reputation in the mark, use of an identical or

similar mark by other person for carrying his business is likely not only to be

detrimental to the business of the person who adopted and built the mark, but is

also likely to mislead and deceive the members of the public. Such use, besides

being injuries to the owner of the trademark is also likely to create confusion with

respect to origin/source of the goods since a person coming across goods and/or

services in respect of which the impugned mark is used, may, on account of use of

the same or similar trademark/trade name, believe that the goods/services being

offered to him emanate from the owner of the trademark/trade name in question

and that is why they were being sold under that trade mark/trade name. Everyone

is entitled in law to work for and build a commercial goodwill for his business, but

no one has a right to trade upon the goodwill and reputation of another person and

exploit the same to his advantage.

11. In the case before this Court the mark 'BOURJOIS', being used by the

defendants for rendering Spa and Saloon services and as a part of its domain name

bourjois.co.in is identical to the registered trademark of the plaintiff company.

12. It can hardly be disputed that the cosmetics which are the products being

sold by the plaintiff company under the name BOURJOIS are used in Spa as well

as saloon. The cosmetic products being used by the plaintiff under the mark

BOURJOIS are beauty products which are applied on human skin. The Spa and

Saloon services being provided by the defendants are also the services primarily

meant for toning up and beautifying human skin and hair. Cosmetic products are

necessarily required for providing spa and hair saloon services and in that sense are

the 'raw material' required for rendering these services. It can hardly be disputed

that the persons visiting Spas and Saloons would also be the customers of the

various cosmetic products. It is not possible to render quality spa and saloon

services without use of the cosmetic products.

It would be difficult to deny that a person seeking to avail saloon/spa

services, on coming to know of the spa/saloon being run under the name

BOURJOIS is likely to believe that the Spa/Saloon being visited by him was being

run by the plaintiff or at least had some kind of association such as that of a

franchisee/ agent with the plaintiff company and that is why it was being run under

the name BOURJOIS. In any case, use of the name BOURJOIS for providing spa

and saloon services is likely to create confusion in the minds of the customers with

respect to origin of the services being provided by the defendants. On account of

use of the mark BOURJOIS by the defendants, the customers visiting their

spa/saloon are likely to be deceived into believing that the outlet belongs to the

plaintiff company or has been authorized by it.

13. Considering the connection between the cosmetic products which the

plaintiff company is selling under the trademark BOURJOIS and the spa and saloon

services which the defendants are providing using the same trademark, it would be

immaterial that the registration of the plaintiff is in respect of the products whereas

the defendants are using the impugned mark in respect of services and not

products. What has to be seen in such likes cases is as to whether the services in

question are so closely connected with the products that the products and the

services can be said to be complementary to each and the use of the mark in respect

of the services is likely to cause confusion and give an impression of the two marks

being associated with each other or not.

14. If the product and service are closely related to each other in the sense that

not only are they likely to be used by the same class of persons, but they also have

a trade connection such as the material being sold under a particular trade mark

being used for providing services under an identical/similar mark, it would be

difficult to say that the goods and services are not closely related to each other.

There can be many examples of the goods and services being closely related to

each other. For instance, food products and catering services; clothes and dry

cleaning services; mobile telephones and mobile telephony services; automobile

sale and automobile repair services; TV/Fridge/AC/Washing Machine sale and

TV/Fridge/AC/Washing Machine repair services. It would be pertinent to note here

that in terms of Section 2(c) of Trademarks Act, 1999, the use of a mark in relation

to the services shall be construed as a reference to the use of the mark as or as part

of any statement about the availability, provision or performance of such services.

Therefore, use of the mark BOURJOIS by the defendants to advertise availability

of spa/saloon would certainly amount to use of this mark in relation to such

services.

15. In the case before this Court, since cosmetics are the products extensively

used in a spa/saloon, the customers coming across advertisements of the defendants

or visiting their spa/saloon are likely to get confused and think that spa/saloon was

being run or had been promoted by the plaintiff-company. In fact, on account of

use of the trademark/trade name BOURJOIS by the defendants, the customer

visiting the spa/saloon being run under the name BOURJOIS spa is also likely to

believe that it is BOURJOIS cosmetics which would be used in the spa/saloon

visited by him.

16. It is difficult to dispute that when the parties are engaged in common,

overlapping or closely related commercial activities, there is grave and immense

possibility of confusion and deception on account of the trademark/trade name of

one person being used by the other person. The same will be the position when the

domain name of one person is used by another person or the trademark/trade name

of one person is used by another person as a part of his domain name. The domain

name serves the same purpose which a trademark serves and cannot be said to be

merely an Internet address to identify a particular website. If some comes across

the website of the defendants being run under the domain name

http://bourjois.co.in, he would naturally assume that it was the website of the

plaintiff and that is why the word BOURJOIS was being used as a part of the

domain name. If allowed to happen this, besides causing confusion, is also likely

to deceive the persons seeking to access the website of the plaintiff-company. In

fact, a stricter vigil needs to be kept with respect to the domain name, since a

website can be accessed from anywhere and at any point of time.

The domain names of the plaintiff are http://www.bourjois.com and

http://www.bourjois.co.uk., whereas domain name of the defendant is

http://bourjois.co.in. The domain name being used by the defendants so closely

resembles the domain names of the plaintiff that use of the word 'in' the domain

name of the defendants as against use of the word 'U.K.' in the domain name of the

plaintiffs is of no consequence.

In Ruston & Hornsby Ltd vs The Zamindara Engineering Co AIR 1969 (2)

SCC 727, it was held that if there is close resemblance between the two marks and

they are deceptively similar to each other, the word 'India' added to one mark was

of no consequence. On account of use of the name BOURJOIS as a part of domain

name, the Internet users are likely to believe that http://bourjois.co.in is yet another

website of the plaintiff-company, meant primarily for India and thus there is every

possibility of confusion being created and those seeking to access the website of

the plaintiff-company end up accessing the website of the defendants.

17. The word BOURJOIS is not a word commonly used in India and has no

connection with the saloon and spa services which the defendants are offering and

which the plaintiff company claims to have coined and adopted. The defendants

have not come forward to contest the suit and to tell as to why they chose to use

this particular name for providing spa and saloon services and as part of their trade

name and domain name. The plaintiff company is a large multinational company

having presence in more than 120 countries. It has presence in India since 1927 as

is evident from the advertisement before published in 'Times of India Illustrated

Weekly' dated 16.1.1927. The BOURJOIS is thus a well-established trademark in

respect of cosmetic and skin care products. It is obvious that by using the word

BOURJOIS for providing spa and saloon services and as a part of its trade name

and domain name, the defendants are seeking to encroach upon goodwill and

reputation which the brand of the plaintiff company enjoys in a large number of

countries including India. The use of the mark BOURJOIS by the defendants as

part of their trade name and domain name as a trademark/ service mark, besides

being injuries to the interest of the plaintiff is also likely to deceive members of the

public who may avail services being offered by the defendants under a false

impression that they were buying the services of the plaintiff company. If the

quality of the services being provided by the defendants is not found to be of the

requisite standard, this is likely to substantially impair the brand equity which the

mark BOURJOIS enjoys in the market.

18. Another important circumstances in this regard is that it is very much

possible that the plaintiff company may, in near future, diversify into providing

services such as spa and saloons services, so as to make full use of the mark

BOURJOIS which they have been using in respect of cosmetic products for the

more than last 100 years. In fact, there are quite a few companies which are selling

cosmetic products and also providing such services under the same brand name

such as Lakme, Loreal, VLCC, Shahnaaz Hussain etc. The defendants cannot be

allowed to take unfair advantage of the well-established brand name of the plaintiff

company by entering into these services using the same brand name/trade name.

19. In T.V. Venugopal v. Ushodaya Enterprises Ltd and Anr (2011) 4 SCC 85,

Supreme Court observed that the plaintiff's adopted name would be protected if it

has acquired a strong enough association with the plaintiff and the defendant has

adopted such a name in common field of activity i.e. the purchasers test as to

whether in the facts of the case, the manner of sale, surrounding circumstances etc.

would lead to an inference that the source of product is the plaintiff.

Since BOURJOIS is not a word found in English dictionary, is stated to have

been coined by the plaintiff and the defendants have not come forward to explain

why they have chosen this particular name for providing spa/hair salon services, it

would be difficult to dispute the contention of the learned counsel for the plaintiff

that use of the impugned mark by the defendant is founded in dishonesty and

actuated by mala fide so as to ride upon the goodwill and reputation which the

plaintiff-company enjoys amongst the customers of such services. Refusing to

injunct the defendants from using the impugned mark would amount to ignoring

such dishonest and illegal acts and encouraging practices aimed at defrauding the

consumers besides prejudicially affecting the reputation and goodwill which the

plaintiff-company has built over last more than 100 years.

20. For the reasons stated hereinabove, I am of the view that the defendants are

passing off their services as those of the plaintiffs by using the impugned

trademark/trade name for rendering saloon/spa services and as a part of their

domain name. The defendants are accordingly liable to be injuncted from using the

impugned trademark/trade name. As noted earlier, the visiting card of the

defendants clearly indicates that they are providing spa services under the

trademark/trade name BOURJOIS in various places, including Delhi. Therefore,

this Court has territorial jurisdiction to entertain the suit and grant injunction on

account of passing off.

21. For the reasons stated hereinabove, a decree for perpetual injunction with

proportionate costs is hereby passed restraining defendant No. 3 from providing,

offering or advertising spa/hair salon services under the trademark/trade name

BOURJOIS or any other trademark/trade name, which is identical or deceptively

similar to the said trademark. Defendant No. 2 does not appear to be a legal entity,

it being only a spa being run by defendant No.3. Defendant No. 1 is stated to be a

director of defendant No. 3-company, but a company being a separate legal entity,

no cause of action against him is made out. The suit against defendants 1 and 2 is,

therefore, dismissed with no order as to costs. No other relief was pressed during

arguments.

Decree sheet be drawn accordingly.

V.K.JAIN, J DECEMBER 03, 2012 rd/BG