4Life Trademarks Llc & Anr. vs Aanchal Jain & Ors.
2014 Latest Caselaw 5169 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                               Order delivered on: 15th October, 2014

+                       CS(OS) No.3141/2014


       4LIFE TRADEMARKS LLC & ANR.                ..... Plaintiffs
                    Through Mr.Chander M. Lall, Adv. with
                             Mr.Subhash Bhutoria, Ms.Tia
                             Malik, Mr.Anuj Nair & Mr.Manas
                             Upmanyu, Advs.

                         versus

       AANCHAL JAIN & ORS.                              ..... Defendants
                    Through           None

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (ORAL)

I.A. No.20186/2014 (exemption) The original/certified copies of the documents be filed two weeks prior to the admission/denial of the documents.

The application is disposed of.

CS(OS) No.3141/2014 Let the plaint be registered as a suit.

Issue summons to the defendants, on filing of process fee and Regd. A.D. Covers within a week, returnable on 10th November, 2014. Dasti in addition.

I.A. No.20185/2014 (u/o XXXIX R.1 & 2 CPC)

1. Issue notice to the defendants, for the date fixed.

2. The plaintiffs have filed this suit for injunction and damages for infringement of trademarks and copyright, passing off and unfair competition against the defendants.

3. Brief facts as per the plaint are that plaintiff No.1, a company organized and existing under the laws of the State of Utah, United States of America, is carrying on business through its group company, Forlife Trading India Private Limited, i.e. plaintiff No. 2, which is a company duly incorporated under the laws of India.

4. Plaintiffs are world-renowned innovators, manufacturers and distributors of inter alia products related to immune system support, like vitamins and nutritional and dietary supplements and certain related products and promotes and markets these products under the trade marks 4LIFE, 4LIFE TRANSFER FACTOR, 4LIFE TRANSFER FACTORPLUS, TRI-FACTOR, 4LIFE GLUTAMIN PRIME, 4LIFE TRANSFER FACTORCARDIO, 4LIFE TRANSFER FACTORBELLE VIE, 4LIFE TRANSFER FACTOR VISTA, RIOVIDA, RIOVIDA BURST & GLUCOACH (hereinafter referred to as the plaintiffs' marks).

5. The plaintiff No.1's Company, 4Life, was founded in the year 1998 and plaintiff No.1's flagship immune system support product was 4LIFE TRANSFER FACTOR. Today, people in more than 50 countries enjoy the immune system support provided by the plaintiffs' products.

6. The plaintiff No.1 is located across 5 continents and has offices located in 29 countries and approximately 35 locations. The plaintiff No.1's size and market proximity gives it global reach and

local focus, which is a dynamic combination, making the plaintiff No.1 one of the world's leading provider of health supplements.

7. Plaintiff No. 1 owns trade mark registrations in India for its marks, including, 4LIFE, 4 LIFE TRANSFER FACTOR & TRI- FACTOR. Details of the registrations are provided in Para 4 of the plaint. In addition to the same, plaintiff No.1 has applied for registration in India of its well-known trademarks 4LIFE and GLUTAMINE PRIME vide applications bearing Nos. 1359750 and 1991907, respectively.

8. Plaintiff No.1 has also obtained registrations for its marks in a number of countries around the world, names of which are mentioned in Para 6 of the plaint, and the same include United States of America, Australia, Bolivia, Brazil, European Community, Indonesia, Japan, Kenya, Malaysia, Philippines, Russia, Singapore, South Korea, Switzerland, Thailand, Turkey, Ukraine, Hong Kong, New Zealand and Canada among others.

9. It has been stated that the plaintiffs market, distribute and sell their products under a highly distinctive trade dress/packaging, which include unique color combinations and design elements, distinctive to the plaintiffs' products and are closely associated thereto in the minds of consumers.

10. The plaintiffs have substantially invested in creating and adopting the said distinctive trade dress/packaging for each of its products which is in continuous and extensive use for years now. This use, combined with the large sums of money invested by the plaintiffs in advertising, promoting and marketing the goods sold

under the plaintiffs' marks has resulted in a very strong reputation of the well known marks and trade dress/packaging worldwide, including in India.

11. The details of the approximate net sales/revenue from the year 2008 to half of 2014, pertaining to India, are mentioned in Para 13 of the plaint, with that for the year 2014 (till 30th June) being US$ 1,333,538.

12. From 2007 till the end of 2010, plaintiffs have spent more than an estimated US$ 58 million worldwide in advertising, sales commissions, and other marketing costs to promote products and to establish brand awareness of the products among the relevant consumers. A year-by-year breakdown of these expenses is shown in the table mentioned in Para 14 of the plaint.

13. The goods under the plaintiffs' trademarks have been extensively advertised and promoted through its website www.4life.com that was created in the year 2003 and can be accessed from anywhere in the world including India. A list of other websites which provide details of the plaintiffs business activities and their products is mentioned in Para 16 of the plaint.

14. The packaging and labeling done by the plaintiffs are unique. The said unique and distinctive features and the iconic trademarks constitute the trade dress/packaging of the plaintiffs' products. Additionally, the distinctive labels under which the plaintiffs sell their products bearing the distinctive trade marks and trade dress/packaging, together, with its distinctive elements constitutes an original artistic work under Section 2 (c) of the Copyright Act

1956, the copyright of which vests with the plaintiffs.

15. Since launching in the year 1998, plaintiff No. 1 has been the recipient of numerous awards for the company's role as an industry leader in direct sales. Some of the success stories are listed on plaintiff No.1's website www.4life.com and details of some such success stories are mentioned in Para 17 of the plaint.

16. By virtue of long, extensive and continuous use of plaintiffs marks in various countries throughout the world, the same have gained much popularity and dependability across the globe. As such, given its reputation among the consumers, plaintiffs' marks would come within the definition of well known trade marks as provided under Section 2(zg) of the Trade Marks Act, 1999 (hereinafter referred to as the "Act").

17. In an attempt to spread its awareness to India, the plaintiffs have registered a dedicated website for Indian market, namely, www.india-4life.com that was created in the year 2007, when the plaintiff No.1 first came to India.

18. Plaintiffs have taken efforts in promoting wellness and healthy lifestyle in India, by holding and/or attending various conferences, seminars and educative sessions in India, which are ought to have a positive impact on the people affiliated to the plaintiffs, including the distributor and consumer base. The details of some of such seminars undertaken by the plaintiffs in India is mentioned in Para 22 of the plaint.

19. Plaintiff No. 1 has been actively protecting its exclusive rights in its well known trademarks, by taking appropriate action against

third parties and in the past, the plaintiffs have successfully initiated legal actions against unscrupulous third parties globally.

20. It is the case of the plaintiffs that in and around January 2014, the plaintiff No. 1 came across defendants No.1 and 2 and was shocked to find that the said defendants were misusing the plaintiffs' well known trademarks and the distinctive trade dress/packaging under which the plaintiffs' products are manufactured and marketed. From discreet enquiry by the plaintiffs' investigator, the plaintiffs learnt that defendant No. 1 is the proprietor of defendant No. 2 entity.

21. Upon further research, the plaintiffs learnt that the defendants are offering for sale, advertising and promoting their products under the marks which are virtually identical to the plaintiffs' well known trade marks. The plaintiffs noted that the defendants are misusing the 4LIFE brand by using the virtually identical FORLIFE mark for many/all of its variants like, FORLIFE TRANSFER FACTOR, FORLIFE TRANSFER FACTOR PLUS, FORLIFE GLUCOSAMINE, FORLIFE CARDIO CAPSULES, FORLIFE GLUCOACH, FORLIFE TRANSFER FACTOR VISTA, FORLIFE TRANSFER FACTOR BELLE VIE, FORLIFE TRANSFER FACTOR CLASSIC, FORLIFE TRANSFER FACTOR RIOVIDA BURST, FORLIFE TRI FACTOR POWDER, & FORLIFE TRANSFER FACTOR BELLE VIE DROPS (hereinafter referred to as the "impugned marks"). The defendants are also using trade dress/packaging which is virtually identical to the trade dress/packaging of the products sold under the plaintiffs well known trademarks.

22. Immediately upon knowledge of the aforesaid violations, the plaintiff No.1, got sent a cease and desist letter dated 28th January, 2014 to the defendants calling upon them, inter alia, to cease and desist from using, amongst other things, the impugned marks, FORLIFE, FORLIFE TRANSFER FACTOR and FORLIFE TRIPLE FACTOR FORMULA as a trade mark, company name or in any other manner whatsoever as the same amounted to infringement of the plaintiff No.1's registered marks. The similarity between the trade dress/packaging was also pointed out to the defendants and the defendants were requisitioned to cease such misuse of the plaintiffs' well known trade marks and trade dress/packaging.

23. Since no response was received from the defendants, the same letter was resent to the defendants via email at [email protected] on 10th February, 2014. The defendants then replied vide email dated 11th February, 2014, wherein the defendants admitted use of the impugned marks. However, the defendants refused to comply with the requisitions laid down in the cease and desist letter dated 28th January, 2014 by stating that TRANSFER FACTOR & TRI - FACTOR are generic words but still if the party will submit the Trademark ownership document only registered under the Act with the Trade Mark Registry, Govt. of India, Mumbai under Section 30 in respect of Dietary and Health food Supplements then Kai Natural Care will withdraw using the same.

24. Subsequent to the above email, the defendants sent another email to the counsel of the plaintiff No.1 on 14th February, 2014,

wherein the defendants on the basis of allegations such as difference in classification, again refuted and refused to comply with the plaintiffs' requisitions.

25. Pursuant to the above emails of the defendants, the counsel for the plaintiff No.1 conducted further internet investigation which revealed that the defendants have expanded its dishonest activities to include additional trademarks and trade dress/packaging of the plaintiffs' products.

26. Pursuant to the above said findings, the plaintiff No.1 through their legal counsel responded to the emails of the defendants, vide letter dated 23rd May, 2014. In the said response letter, the defendants were made aware that the plaintiff No.1 has been taken by surprise that despite of sending the first cease and desist letter, the defendants have considerably expanded its line of impugned products to include FORLIFE GLUTAMINE PRIME and FORLIFE CARDIO CAPSULES, which amounts to not only infringement of the plaintiff No.1's registration of 4LIFE but are also blatant imitations of the plaintiffs' products i.e., NANOFACTOR GLUTAMINE PRIME and 4LIFE TRANSFER FACTOR CARDIO. Plaintiffs categorically stated that TRANSFER FACTOR and / or TRI

- FACTOR are not generic words and plaintiff No.1 owns the registration of the marks TRI-FACTOR per se and TRANSFER FACTOR in conjunction with 4LIFE. It was also clarified to the defendants, in the said letter, that goods for which plaintiff No. 1 owns registrations include, amongst others, "dietary and nutritional supplement; vitamin, mineral and herbal supplement" and it was

admitted by the defendants that their goods are also pertaining to dietary and food supplements.

27. Pursuant to the response letter dated 23rd May, 2014, on behalf of the plaintiff No.1, the defendants sent an acknowledgement email dated 27th May, 2014 followed by a detailed reply vide email dated 31st May, 2014. In the said email, the defendants contended that the plaintiffs' trademarks are applied for registration by a different entity in a different class.

28. Upon checking the online records of the aforesaid trademark applications, the plaintiffs learnt that all the applications on behalf of defendants were filed in the name of Mr. Karan Goel trading as M/s Keva Industries i.e. defendant No. 3. Upon further internet search, the plaintiffs learned that in fact defendant No. 3 is also the registrant of defendant No. 2's website i.e. www.kai-nc.com. It is believed that defendant No. 3 is the co-owner of defendant No. 2 entity.

29. It is submitted that the defendants have utter malafide to ride upon the plaintiffs' immense goodwill and reputation and hence the defendants have slavishly copied and applied marks and trade dress/packaging, confusingly similar to that of almost all the products of the plaintiffs.

30. Below are pictorial comparisons of products of the plaintiffs' and defendants', which were revealed during the investigations conducted pursuant to the sending of the cease and desist letters. It has been contended that impugned trade dress/packaging have been completely lifted/copied by the defendants', thereby trying to

deliberately pass off its goods as those of the plaintiffs:

            Plaintiffs' Products               Impugned Products

                                               FORLIFE        TRANSFER
            4LIFE TRANSFER FACTOR
                                               FACTOR




                                               FORLIFE        TRANSFER
            4LIFE     TRANSFER     FACTOR
                                               FACTOR PLUS
            PLUS





             4LIFE     NANO    FACTOR
                                       TRANSFER     FACTOR
            GLUTAMINE PRIME
                                       GLUTAMINE PRIME




            TRANSFER FACTOR CARDIO     TRANSFER FACTOR
                                       CARDIO





             4LIFE     TRANSFER   FACTOR   FORLIFE TRANSFER
            VISTA                         FACTOR VISTA




            4LIFE TRANSFER FACTOR         FORLIFE   TRANSFER
            CLASSIC                       FACTOR CLASSIC





             4LIFE    TRANSFER         FORLIFE        TRANSFER
            FACTOR BELLE VIE
                                      FACTOR BELLE VIE

31. It is the case of the plaintiffs that the defendants have deliberately adopted identical elements and features for their products only to gain illegal benefits. The distinctive labels under which the plaintiffs' sell their products bearing the renowned and well-known marks, together with its distinctive elements constitutes an original artistic work under Section 2 (c) of the Copyright Act 1956, the copyright of which vests with the plaintiffs.

32. In addition to the aforesaid instances of violations, upon a further perusal of the defendants' websites being www.kai-nc.com and www.kainaturalcare.net, it has been noted that not only have the defendants blatantly copied the trade dress/packaging and

adopted virtually identical trademarks, the defendants have also picked up phrases, from the description of the products of the plaintiffs', in which the copyright vests with the plaintiff No.1. The defendants have ad verbatim used the descriptions, to describe the impugned products on the defendants' website. Some examples of such lifting of the description are mentioned in para 38 of the plaint.

33. Learned counsel for the plaintiffs submits that the use of impugned marks and confusingly similar trade dress/packaging by the defendants, constitutes violation of the rights of the plaintiffs in and to the well-known trademarks and trade dress/packaging. In the instant case, owing to the virtually identical nature of the marks, including trade dress/packaging, the likelihood of confusion is much higher. Resultantly, the said use by the defendants is bound to make the general public believe that the defendants are somehow connected or affiliated with the plaintiffs when in fact no such connection or affiliation exists. In addition to the above, the goods under the impugned marks and trade dress/packaging are identical and belong to the same trade channels. Therefore the goods of the plaintiffs and the defendants would be sold at the same counter in the same shops. These facts further enhance the chances of confusion.

34. As far as a small delay in filing the present suit against the defendants is concerned, the same is not fatal in an action for infringement in view of the settled law laid down by Courts in various matters. Some of them are as under :

(i) In the case of Midas Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia and Others, 2004 (28) PTC 121 (SC), it was observed as under:

"5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest."

(ii) In the case of Swaran Singh vs. Usha Industries (India) and Anr. AIR 1986 Delhi 343 (DB), it was observed as under:

"7. There is then the question of delay. Learned counsel for the respondents had urged that the delay is fatal to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be aground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity....."

(iii) In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s. India Stationery Products Co. AIR 1990 Delhi 19, it was observed as under:

"31. ........ It was observed by Romer, J. in the matter of an application brought by J.R.Parkingnon and Co. Ltd., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently".

It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history."

35. From the above facts and settled law, it appears to the Court that the plaintiffs have been able to make out a strong prima-facie case for the grant of an ex parte ad-interim injunction in their favour. Balance of convenience also lies in favour of the plaintiffs and against the defendants. In case, the interim order is not passed, the plaintiffs will suffer an irreparable loss and injury. Hence, till the next date of hearing, the defendants, their agents, distributors, suppliers, representatives, group companies and assigns are restrained from manufacturing, selling, marketing, advertising, promoting and using the trade marks FORLIFE, FORLIFE TRANSFER FACTOR/BELLE VIE, PRIME, TRI FACTOR, RIOVIDA BURST & GLUCOACH and also from using the similar trade dress which is shown in packaging, sample of which is depicted in various Paras of the plaint.

36. Compliance of Order XXXIX Rule 3 CPC be made within five days.

(MANMOHAN SINGH) JUDGE OCTOBER 15, 2014