Delhi High Court
Marico Limited & Anr vs Kaya Kalp Ayurveda Pvt Ltd on 8 October, 2012
Author: V. K. Jain
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 08.10.2012
+ CS(OS) 1549/2012
MARICO LIMITED & ANR ..... Plaintiffs
Through: Ms Anuradha Salhotra and Mr Sumit Wadhwa,
Advs.
versus
KAYA KALP AYURVEDA PVT LTD ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE V.K.JAIN
JUDGMENT
V.K.JAIN, J. (ORAL)
1. Plaintiff No. 2 is a wholly owned subsidiary of plaintiff No.1-company.
Initially, it was incorporated in the name of KAYA Beauty Services Limited which
was later changed to KAYA Aesthetics Limited and then to KAYA SKIN CARE
Limited. Lastly, the name of plaintiff No. 2 was changed to KAYA Limited on
14.12.2007. It is alleged in the plaint that plaintiff No. 2-company was
incorporated primarily with the objective of providing health care, aesthetics,
beauty and personal care services and is a pioneer in the field of skin and hair care
treatment and products. The word 'KAYA' forms parts not only of the corporate
name of plaintiff No. 2, but also of various trademarks being used by it for products
such as sunscreen, moisturizing cream, cleansing gel, etc. as well as in respect of
various services related to skin and hair care treatments. Plaintiff No. 2-company
claims to be running about 100 clinics in India and abroad under the brand name
KAYA SKIN CLINIC and claims to have clientele of over 5 lakh customers. The
plaintiff claims to be using the trademark KAYA since 2002. The following
trademarks are registered in the name of plaintiff No.1-company:-
S. No. Trademark Registration Class Goods Date of
Registration
1. MARICO'S KAYA 1163156 5 Pharmaceuticals, 31.12.2002
veterinary and sanitary
substances, preparations
for purification of air,
medicated bath
pr4eparations, dandrusff
eradicator, anti-lice
preparations, medicinal
oils and lotions,
medicated pomad and
medicated washes for
human use, skin care
preparations (medicated)
health foods and drinks
for infants, invalids and
convalescing people,
pesticides and
insecticides, mosquito
repellent mat & coil.
2. KAYA SKIN CLINIC 1142838 5 Pharmaceuticals, 11.10.2002
veterinary and sanitary
substances, preparations
for purification of air,
medicated bath
pr4eparations, dandrusff
eradicator, anti-lice
preparations, medicinal
oils and lotions,
medicated pomad and
medicated washes for
human use, skin care
preparations (medicated)
health foods and drinks
for infants, invalids and
convalescing people,
pesticides and
insecticides, mosquito
repellent mat & coil.
3. KAYA 1141158 10 Surgical, medical, dental 04.10.2002
and veterinary apparatus
and instruments, article
limbs, eyes and teeth,
orthopedic articles, suture
materials.
4. KAYA SKIN CLINIC 1142998 10 Surgical, medical, dental 14.10.2002
and veterinary apparatus
and instruments, article
limbs, eyes and teeth,
orthopedic articles, suture
materials.
2. The following are the trademarks registered in the name of plaintiff No. 2:-
S. No. Trademark Registration Class Goods Date of
Registration
1. KAYA GLOW 1196872 3 Perfumes, perfumery 6.05.2003
compounds,
COSMETICS (non-
medicated), essential oils,
attars, detergents (not for
industrial use), incense
and incense sticks,
shaving creams and
shaving soaps, shoe
polish, hair growing
preparations, hair oil, hair
preserving preparations,
hair growing washes, hair
2. KAYA SILKY LEGS 1349327 42 lotions,
Hygienichair
and tonics, hair
beauty care 06.04.2005
NITE restorers, hair dyes,
for human beings, hair hair
creams and conditioners,
implantation, hair
hair
dressing styling gel,
salons, beauty
deodorants and other
toilet and toiletry
preparations, lotions and
milk, blended rosa oil,
and sandalwood oil,
shampoos, soaps of all
salons, health care,
medical clinics, nursing
homes, hospitals, clinical
& pharmacy advice,
plastic surgery, dress
designing, creation
hosting & maintenance of
websites, design &
development of computer
software.
3. KAYA SKIN TALK 1375462 41 Physical education & 04.08.2005
health club Services,
gymnastic instruction;
recreation and
entertainment services
and information thereof;
providing amusements;
club services, gaming,
providing casino facilities
(gambling); rental of
sports equipments and
stadium equipment
(except vehicles),
arranging of beauty
contests, organization of
shows, presentation of
live shows; publication of
books & texts,
publication of electronic
books & journals on-line;
educational services;
event management;
studio & theater facilities,
all being services
included in class 41.
4. KAYA BACKLESS 1349326 41 Physical education & 06.04.2005
NIGHT health club Services,
gymnastic instruction;
recreation and
entertainment services
and information thereof;
providing amusements;
club services, gaming,
providing casino facilities
(gambling); rental of
sports equipments and
stadium equipment
(except vehicles),
arranging of beauty
contests, organization of
shows, presentation of
live shows; publication of
books & texts,
publication of electronic
books & journals on-line;
educational services;
event management;
studio & theater facilities,
all being services
included in class 41.
5. KAYA BACKLESS 1349328 42 Hygienic and beauty care
NIGHT for human beings, hair
implantation, hair
dressing salons, beauty
salons, health care,
medical clinics, nursing
homes, hospitals, clinical
& pharmacy advice,
plastic surgery, dress
designing, creation
hosting & maintenance of
websites, design &
development of computer
software.
3. The plaintiff has also applied for registration of the word mark KAYA in
classes 3, 16, 41 and 44 and those applications are stated to be pending before
Trademark Registry. The plaintiffs claim to have earned revenue and incurred
promotional expenditure, as given in the following table, in respect of products and
services being sold under the brand name KAYA.
YEAR REVENUE INR CRORES PROMOTIONAL
FITURES INR CRORES
2010-2011 108.01 13.21
2009-2010 125.65 22.76
2008-2009 117.97 17.10
2007-2008 81.04 11.10
2006-2007 61.68 6.58
2006-2005 42.77 6.42
2005-2004 18.60 4.84
2004-2003 4.54 1.89
4. The defendant is a company incorporated in March, 2011 and is alleged to be
selling various beauty products under the mark Kayakalp/Kaya. One such product
is stated to be KAYA SUN SAFE which is a sunscreen lotion. The defendant is
also operating a website bearing the domain name www.kayakalpindia.in. It is
alleged that the defendant is providing beauty services through their solutions
named KAYAKALP POINT, KAYAKALP IMPACT and KAYAKALP
INSTITUTE and KAYAKALP AYUSHCHITIKSA. It is alleged that the product
and services in relation to which the name KAYA is being used by the defendant
are identical and analogous to the products and services which the plaintiffs are
selling using their registered trademarks and use of the word/mark KAYA by the
defendant is dishonest, intended to take advantage of the reputation and goodwill
which the brand of the plaintiff enjoys in the market.
The plaintiff has accordingly sought an injunction, restraining the defendant
from using the trading style/corporate name/trademark KAYA or any other mark
which is identical or deceptively similar to the plaintiffs' registered trademarks.
The plaintiffs have also sought rendition of accounts and delivery up of the
infringing material.
5. The defendant was proceeded ex parte vide order dated 31.07.2012 since
there was no appearance on his behalf, despite service and no written statement
was filed.
The plaintiff has filed two affidavits by way of evidence. In his affidavit by
way of evidence, Mr Manoj Sain of plaintiff No. 2-company has supported on oath
the case set out in the plaint and has proved various documents relied upon by the
plaintiffs. Mr Vikram Raj of plaintiff No. 1-company has, in his affidavit by way of
evidence, supported on oath the case set out in the plaint besides proving various
documents filed by the plaintiff.
6. Ex.PW-1/3 is the registration of the word mark MARICO S KAYA in favour
of plaintiff No. 1 in class 5. Ex.PW-1/4 is the registration of the trademark KAYA
SKIN CLINIC in class 5. Ex.PW-1/5 is the registration of the word mark KAYA
in favour of plaintiff No. 1 in class 10. Ex.PW-1/6 is the registration of the word
mark and device KAYA SKIN CLINIC in favour of the plaintiff No. 1-company in
class 10.
Ex.PW-2/3 is the registration of the word mark KAYAGLOW in favour of
plaintiff No. 2 in class 3 in respect of various products, including lotions and
creams, shampoos, soaps, talcum powder, moisturizing lotions, skin care
preparations, cleaning polishing, scouring, bleaching and abrasive preparations.
Ex.PW-2/4 is the registration of the word mark KAYA SILKY LEGS NITE in
class 42 in respect of hygienic and beauty care for human beings, hair implantation,
hair beauty lotions. Ex.PW-2/5 is the registration of the word mark KAYA
BACKLESS NIGHT in class 41 in respect of physical education and health club
services, gymnastic instruction, etc. Ex.PW-2/6 in class 42 is the registration of
the trademark KAYA BACKLESS NIGHT in respect of hygienic and beauty care
for human beings, hair implantation, hair dressing salons, beauty salons, etc.
7. The learned counsel for the plaintiff states that the plaintiff has also applied
for registration of the word mark KAYA in class 3 vide application No. 1141156
dated 04.10.2002 in respect of various products, including hair oils, hair lotions,
hair tonics, hair creams and hair conditioners and other toilet and toiletry
preparations lotions and creams. She further states that the plaintiff has already
applied for registration of the word mark KAYA vide application No. 2281355
dated 10.02.2012 in class 44 in respect of medical services, hygienic and medical
care for human beings.
8. The plaintiff has also placed on record a bring out taken from the website of
the defendant which shows use of the name KAYAKALP by the defendant in
respect of beauty treatments, slimming and fitness, panchkarma and male
grooming. Ex.PW-2/16 is the visiting card which shows use of the trademark
KAYAKALP and use of the corporate name KAYAKALP AYURVEDA
PRIVATE LIMITED. The domain name www.kayakalpindia.in has also been
printed on the visiting card. Ex.PW-2/17 is a cash memo issued by KAYAKALP
with Ayurveda. The trademark KAYAKALP has also been used on this cash
memo. Ex.PW-2/18 is a bag being used by the defendant and the trademark
KAYAKALP has been printed on this bag. Ex.PW-2/15 is a sunscreen lotion being
sold by the defendant under the brand name KAYA SUN SAFE. Another product
has been named as KAYA KULP SKIN CARE and is a skin moisturizer.
9. As noted earlier, the plaintiff is the registered proprietor of the trademarks
KAYAGLOW, KAYA SILKY LEGS NITE and KAYA BACKLESS NIGHT.
Since the plaintiff has separately applied for registration of the word mark KAYA,
it is entitled to protection not only of the whole of the trademarks, but also in
respect of their various parts. In fact, the word KAYA is the key and most
prominent part of the trademarks KAYA GLOW, KAYA SILKY LEGS NITE
AND KAYA BACKLESS NIGHT. These marks are registered in favour of the
plaintiffs in respect of the products which include hygienic, beauty care for human
beings, hair dressing salons, beauty salons, hair oil, hair growing preparations, hair
lotions, hair tonics, hair creams and conditioners, hair gel and other toilet and
toiletry preparations, lotions and creams and skin care preparations, as also in
respect of services comprising physical education and health club services, hair
dressing salons and beauty salons. Anyone seeking to buy the products being
manufactured and/or sold by the plaintiff company would ask for KAYA products
and if he comes across goods which bear the trademark KAYA, Kaya Kalp
Ayurveda, KAYA SUN SAFE etc, he/she is likely to be deceived into believing
that the products being offered to him was a product of the plaintiff company and
that is why the word KAYA was being used as a part of the trademark. Similarly, a
person coming across the outlet bearing the name Kayakalp Point or Kayakalp
Impact, Kayakalp Institute, Kaya Kalp Ayushchitiksa is also like to be deceived
into believing that the outlet belongs to the plaintiff company or is its franchisee
and that is why such a name is being used by the outlet. By using the word KAYA
as a part of its corporate name, its trademarks and domain name, the defendant is
using the most conspicuous and key component of the trademarks registered in
favour of plaintiff No. 2-company. The trademark KAYAKALP is being used by
the defendant in respect of products and services which are at least similar to the
products and services being offered by the plaintiff-company. The mark being
used by the defendant though not absolutely identical is similar to the registered
trademark of the plaintiff on account of use of the word of the word KAYA as part
of the trademark. Same is the position with respect to the corporate name and the
domain name being used by the defendant. Thus, the plaintiff has been able to
establish that a trademark similar to its registered trademarks is being used by the
defendant in respect of goods and services which are similar to those which are
covered by the plaintiffs registered trademarks. The defendants have, therefore,
clearly infringed the trademark of the plaintiff.
10. In Corn Products Refining Company v Shangrila Food Products Limited
[1960 (1) SCR 968], the Hon'ble Supreme Court observed that absolute identity of
the two competing marks or their close resemblance was only one of the tests for
determining the question of likelihood of deception or confusion. Trade connection
between different goods is another such test. The Court was of the view that these
are independent tests and there is no reason why the test of trade connection
between different goods should not apply where the competing marks closely
resemble each other.
11. The act of the defendant in using the trademark, corporate name and domain
name KAYAKALP, KAYAKALP AYURVEDIC LIMITED and
www.kayakalpindia.in. and www.kayaherbal.in also amounts to passing off their
goods and services as those of the defendant. The defendant has not come forward
to contest the suit and tell the Court as to why they chose to use the name which
comprises the word KAYA as a key component. The plaintiffs are large
companies and plaintiff No.2 is stated to be running about 100 clinics in India and
abroad. The plaintiffs had turnover of Rs.117.97, Rs.125.65, Rs.108.01 crore in
the years 2008-09, 2009-10 and 2010-11 respectively from use of the brand name
KAYA and have incurred promotional expenditure of Rs 17.10 crore, 22.76 crore
and Rs 13.21 crore respectively during these years. Thus, KAYA is now a well-
established brand name in respect of care products and beauty skin care clinics. It
is obvious that by using the word KAYA as a part of its trade name, domain name
and trademark, the defendant is seeking to encash upon the goodwill and reputation
which the brand of the plaintiff enjoys in the market. The use of the word KAYA
by the defendant as a part of its domain name, corporate name, trademark/trade
name besides being injurious to the financial interest of the plaintiffs-companies is
also like to deceive the members of the public who may buy the products or avail
the services being offered by the defendant under a false impression that they were
buying the products/services of the plaintiff-companies. If the quality of the
product or the services which the defendant is selling or providing is not as good as
those of the products and/or services of the plaintiff, that would substantially
impair the brand value and brand image which the plaintiff-companies enjoy in the
market.
12. In Procter & Gamble Company v Joy Creators & Others [178(2011) DLT
228, the plaintiff company was using the trademark OLAY, OLAY Total Effect
and Total Effects. The defendant was using the mark Joy Ultra Total Effects. An ad
interim injunction being sought by the plaintiff against the use of the mark Joy
Ultra Look Total Effect, the defendant pleaded that it had given prominence to the
word 'Ultra Look' on its label and the word JOY had been written above the word
Ultra Look. It was pointed out that the word 'Total Effect' written below the word
'Ultra Look' were much smaller in font size. Rejecting the contention that no
infringement or passing off was made out, I, inter alia, held as under:
11. In Corn Products Refining Co. vs. Shangrila Food Products
Ltd. 1960 (1) SCR 968, the Supreme Court observed that the
question whether two competing marks are so similar as to be
likely to deceive or cause confusion is one of first impression
and it is for the court to decide it. The question has to be
approached from the point of view of a man of average
intelligence and imperfect recollection.
13. It is not necessary that in order to constitute infringement,
the impugned trademark should be an absolute replica of the
registered trademark of the plaintiff. When the mark of the
defendant is not identical to the mark of the plaintiff, it would
be necessary for the plaintiff to establish that the mark being
used by the defendant resembles his mark to such an extent that
it is likely to deceive or cause confusion and that the user of the
impugned trademark is in relation to the goods in respect of
which the plaintiff has obtained registration in his favour. It
will be sufficient if the plaintiff is able to show that the
trademark adopted by the defendant resembles its trademark in
a substantial degree, on account of extensive use of the main
features found in his trademark. In fact, any intelligent person,
seeking to encash upon the goodwill and reputation of a well-
established trademark, would make some minor changes here
and there so as to claim in the event of a suit or other
proceeding, being initiated against him that the trademark
being used by him, does not constitute infringement of the
trademark, ownership of which vests in some other person.
But, such rather minor variations or distinguishing features
would not deprive the plaintiff of injunction in case
resemblance in the two trademarks is found to be substantial, to
the extent that the impugned trademark is found to be similar to
the registered trademark of the plaintiff. But, such malpractices
are not acceptable and such a use cannot be permitted since this
is actuated by a dishonest intention to take pecuniary advantage
of the goodwill and brand image which the registered mark
enjoys, it is also likely to create at least initial confusion in the
mind of a consumer with average intelligence and imperfect
recollection. It may also result in giving an unfair advantage to
the infringer by creating an initial interest in the customer, who
on account of such deceptive use of the registered trademark
may end up buying the product of the infringer, though after
knowing, either on account of difference in packaging etc. or on
account of use of prefixes or suffixes that the product which he
is buying is not the product of the plaintiff, but is the product of
the defendant.
14. As held by the Supreme Court in Amritdhara Pharmacy v.
Satyadeo Gupta, AIR 1963 SC 449, whether a trade name is
likely to deceive or cause confusion by its resemblance to
another mark already registered is a matter of first impression
and the standard of comparison to be adopted in judging the
resemblance is from the point of view of a man of average
intelligence and imperfect recollection. What is important to
keep in mind that the purchaser does not have both the marks
lying side by side for comparison and, therefore, chances of
deception are rather strong.
16. ..The words TOTAL EFFECTS are an essential and integral
component of plaintiff‟s registered trademark OLAY TOTAL
EFFECTS. The defendants have virtually lifted two of the
three words out of the registered word trademark OLAY
TOTAL EFFECTS of the plaintiff-company and are using
those two words as part of their trademark JOY ULTRA LOOK
TOTAL EFFECTS. It is, therefore, difficult to dispute that the
defendants by use of the words TOTAL EFFECTS as an
essential part of their trademark JOY ULTRA LOOK TOTAL
EFFECTS have infringed the registered trademark OLAY
TOTAL EFFECTS of the plaintiff. It is true that words
TOTAL EFFECTS are only a part of the composite trademark
of the defendants, but, that to my mind would make no
difference since an essential and integral part of the plaintiff's
registered trademark is being used by them for selling their
product. Neither deletion of a part of a registered trademark
nor the prefix or suffix of another word to it would validate the
use of the registered mark by an unlicensed user, once it is
shown that the part used by the infringer is an essential part of
the registered trademark.
Another important aspect in the case before the Court is that the
words TOTAL EFFECTS use the last two words in the mark of
the plaintiff as well as of the defendant, which in turn, indicates
that adoption and use of these two words from the mark of the
plaintiff was deceptive, intended to confuse the consumer and
encash upon the goodwill enjoyed by plaintiff‟s trademark
OLAY TOTAL EFFECTS. The trademark JOY ULTRA
LOOK TOTAL EFFECTS, on account of incorporation of the
words TOTAL EFFECTS in it has become deceptively similar
to the registered trademark OLAY TOTAL EFFECTS of the
plaintiff company.
13. For the reasons stated hereinabove, the defendant is hereby restrained by way of a
perpetual injunction from using the corporate name KAYA KALP Ayurveda Pvt. Ltd and
the trademarks/ tradenames KAYA SUN SAFE KAYAKALP, KAYAKALP
AYURVEDIC LIMITED, Kaya Kalp Institute and any other trademark/trade
name/corporate name/ domain name, of which the word Kaya constitutes a part.
The defendant is also restrained from using the domain names
www.kayakalpindia.in. and www.kayaherbal.in. The defendant, however, is given
four weeks time to change its corporate name and two weeks to change the domain
names. No other relief is pressed by the learned counsel for the plaintiff. Decree
sheet be drawn accordingly.
V.K.JAIN, J
OCTOBER 08, 2012
BG
