M/S Lancome Parfums Et Beaute And ... vs Mr. Navin And Another
2015 Latest Caselaw 681 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                              Judgment reserved on :20.01.2015
                              Judgment delivered on :27.01.2015



+     CS(OS) 474/2009



      M/S LANCOME PARFUMS ET BEAUTE AND CIE
                                                          ..... Plaintiff
                        Through     Mr.S.K.Bansal, Mr. Sajay
                                    Amitahb Suman and Mr. Santosh
                                    Kumar, Advocates.
                        Versus


      MR. NAVIN AND ANOTHER
                                                       ..... Defendants

                        Through


CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR


INDERMEET KAUR, J.

1 Present suit has been filed by M/s Lancome Parfums Et Beaute &

Cie, (a company registered and incorporated under the laws of France-

hereinafter referred to as the 'plaintiff') under Sections 134 & 135 of the

Trade Marks Act, 1999 for permanent injunction with a prayer to

restrain the defendants/their partners/associates/agents (of whom Navin

Kumar is stated to be proprietor of M/s Bharti International Cosmetics

located at 2422, Gali No.14, Main Road, Bechari City, Shahdara and

also functioning from first floor, Rui Mandi, Teliwara, Sadar Bazar,

Delhi) from using, selling, soliciting, extorting displaying, advertising or

in any manner dealing with the impugned trade mark 'LANCOME' or

any other identical or similar mark in relation to business of cosmetics,

personal care, beauty products and allied/related products which was

infringement of a registered trade mark of the plaintiff, passing of and

violation of the plaintiff's right in the said trade mark; infringement and

passing off the plaintiff's copyright in its 'LANCOME' label and

writing style and the plaintiff's trade dress. Additional prayer for

restraining the defendants from disposing of or dealing with its assets of

stocks-in-trade as also a prayer for delivering of finished and unfinished

trade mark of the plaintiff and violative trade mark 'LANCOME'

coupled with the rendition of accounts and a decree of damages in the

sum of Rs.20,01,000/- has been made.

2 The plaintiff as noted supra is a company incorporated under the

laws of France. Mr. Sheet Bansal was its attorney to institute the present

suit. The plaintiff company is engaged in the business of manufacture,

distribution and trade of a wide range of cosmetics, perfumery, skin care

and toilet preparations including perfumes, non medicated toilet waters

and perfume, lotions, non-medicated soaps, bath and shower forming

compositions and gels, accessories and allied/related products. In the

year 1935, the plaintiff had adopted the word/mark 'LANCOME'. It has

key and distinguishing features. Over a period of time, the plaintiff has

been creating various 'LANCOME' stylized trade mark formats. The

plaintiff has been honestly and bonafidely, being using this mark to the

exclusion of others and has built up a worldwide and globally valuable

trade, goodwill and reputation. Its products have been sold at national

and international level in more than 140 countries. Trade mark

'LANCOME' has been registered in India under the Trade Marks Act

under the category of goods cosmetics, deodorants for personal use,

make-up preparations, sticks and pencils, nail polish and varnishes and

other compositions for hair care and hair sprays. Suit was accordingly

filed.

3 Defendant No.1 Mr. Navin, proprietor of M/s Bharti International

Cosmetics is also engaged in the business of trading of cosmetics,

personal care and beauty products and other allied/related goods. The

trade mark 'LANCOM' having being adopted by the defendants and

dealing with the same business is identical and deceptively similar to the

plaintiff's registered mark. The defendants have no right to use it in the

manner in which they are doing so.

4 The defendants had been served and they had filed a Written

Statement. The defence set up by them was twofold. Submission was

that a valid license to manufacture cosmetics had been issued by the

licensing authority Drugs Control Department, Govt. of NCT of Delhi.

This license was being continuously renewed. Their second preliminary

objection was that although admittedly they did not have a registered

trade-mark but had been using 'LANCOM' for their products since very

long and under a valid authority. Suit was liable to be dismissed.

5 Replication was filed reiterating the averments made in the plaint

and denying the submissions of the defendants. Submission was that

even if the defendants had a license, they were not protected and they

could not infringe upon the registered trade mark of the plaintiff.

Without admitting the validity of the license, it was pointed out that

even after such a license had been granted to the defendants, it did not

permit them to use the trade mark of the plaintiff and such a use

amounted to its infringement.

6 On the pleadings of the parties, the following issues were framed

on 25.03.2011:-

(i) Whether the plaintiff is the owner and proprietor of the trade

mark 'LANCOME'? OPP

(ii) Whether the defendants are infringing the plaintiff's registered

trade mark/label 'LANCOME'?OPP

(iii) Whether the defendants are infringing the copyright of the

plaintiff in the art work, trade dress and writing style of trade

mark/label 'LANCOME', if so to what effect ?OPP

(iv)Whether the defendants are passing off his goods as that of the

plaintiff by use of trade mark "LANCOME' (word mark) and

'LANCOME' label, trade dress and domain name, if so to what

effect ? OPP

(v) Whether the plaintiff is entitled to permanent injunction as

prayed for ? OPP

(vi) Whether the plaintiff is entitled to rendition of accounts,

profit or alternatively damages to the tune of Rs.20,01,000/-?

OPP

(vii) Whether the plaintiff is entitled to delivery up of all the

impugned finished and unfinished material violative of the trade

mark of the plaintiff? OPP

7 The plaintiff was directed to produce its evidence in the first

instance. Thereafter, the defendants chose not to appear; they were

proceeded ex-parte on 02.4.2013.

8 Arguments have been heard. Record has been perused.

9 Issue-wise findings of this Court read herein as under:-

ISSUE NO.i

10 The plaintiff is the owner and proprietor of the trade mark

'LANCOME'. This has been established by the documentary evidence.

This issue is accordingly decided in favour of the plaintiff and against

the defendants.

ISSUE NOS. ii TO iv.

11 These issues will be decided by a common discussion. The

plaintiff is admittedly the registered owner of the trade mark label

'LANCOME'. This has been established by the documentary evidence.

The worldwide registration of the plaintiff stands proved through

Ex.PW-1/18 along with pending application seeking a worldwide

registration.

12 The plaintiff's trade mark/label and trade dress has been exhibited

as Ex.PW-1/1 to Ex.PW-1/7 and photographs of the impugned product

of the defendant have been proved as Ex.PW-1/8 to Ex.PW-1/12. A

perusal of the documents and comparison between the two clearly shows

that the trade mark 'LANCOME' which is the registered trade mark of

the plaintiff, its label and trade dress are almost identical with the

impugned products of the defendants who are using the mark

'LANCOM'. The curve over the word 'O' as appearing in the word

'LANCOME', trade mark/trade name of the plaintiff is deceptively

similar with the use of the trade mark 'LANCOM' by the defendants.

13 This Court also notes that the plaintiff's trade mark has been

registered in Class III which enables him to carry on the business of

cosmetics, personal care and beauty care and other allied/related goods.

The definition of 'cosmetic' as contained in Oxford dictionary includes

sale of lipstick. The report of the Local Commissioner dated 02.04.2009

disclose his visit to the premises of the defendants to seize the offending

goods which were deceptively similar to the goods of the plaintiff i.e.

lipsticks with the mark LANCOM.

14 A query was put to the leaned counsel for the plaintiff that the

goods of the plaintiff being of a high quality were being sold over a

counter to reputed customers who would understand the import of the

products which they were purchasing and which having being priced at

more than Rs. 3000 for a bottle of perfume, 'LANCOM' lipsticks sold

by the defendants which would be at a much cheaper price (although no

one has been able to throw light on the price of the lipsticks being sold

by the defendants) yet the learned counsel for the plaintiff to support this

argument has placed reliance upon the judgment of 2009 (41) PTC 41

(Del) Clinque Laboratoies LLC & Another Vs. Gufic Limited and Anr.

to make a submission that such a low price of the goods of the

defendants would in fact tarnish the reputation of the plaintiff even

further as products of both the parties i.e. of the plaintiff and the

defendants which is essentially a cosmetic and which is not necessarily

sold over a counter; cosmetics being sold not only over a counter in

departmental stores but also in chemists shops and provision stores and

the possibility of such goods of the defendant being palmed off and sold

as the goods of the plaintiff is extremely high.

15 The Supreme Court on the arguments on price discrimination put

forward by the defendant in Wander Ltd. Vs. Antox India (P) Ltd.

1990(2) Arb. L.R. 399 defined passing off action as a species of unfair

trade competition or of actionable unfair trading by which one person

through deception, attempts to obtain an economic benefit of the

reputation which another has established for himself in a particular trade

or business.

16 In 1996 PTC (16) (DB) M/s Hitachi Ltd. Vs. Ajay Kumar

Agarwal and Ors. on the phonetic similarity of the words HITACHI

and HITAISHI which were pronounced almost in a same away, a

Division Bench of this Court had noted that even though the meaning of

the two words is different and written in different scripts, both the words

have a striking phonetic similarity; it would be difficult for a layman to

distinguish between the finer nuances of the sounds produced by the two

words while articulating them; applying the test of the ear real danger

of deception and confusion being caused by the two words in view of

the similarity and affinity of sound having been noted an injunction in

favour of the plaintiff had been granted.

17 One defence put forth by the defendant in this case was that he

had a valid drug licence which has been issued to him by Drugs Control

Department, Government of Delhi. However, as rightly pointed out by

learned counsel for the plaintiff that this licence only entitles the

defendant to manufacture the drug; it does not in any manner permit the

defendant to infringe upon the trademark of the plaintiff. A Bench of

this Court in 2001 PTC 328 (Del) Playboy Enterprises, Inc. Vs. Bharat

Malik and Anr. in this context had noted the defence raised by the

defendant that his registration under the Press and Registration Books

Act, 1867 (PRB Act) protected him was an argument which was

repelled. It was held that the provisions of the PRB Act call for an

independent action and have no relevance or effect and cannot override

or over-step the provisions of Trade Mark and Merchandise Act. The

ratio of this judgment applies with the full force in this case. At the

cost of repetition, this licence would at best permit the defendant to

manufacture the drug; it did not give him a right to infringe the

registered trademark of the plaintiff.

18 The advertisements of the plaintiff in reputed magazine Ex.PW-

1/28 & Ex.PW-1/29 also reflect the worldwide and national reputation

of the products. Ex.PW-1/20 is glamour magazine circulated in India

exhibiting the products of the plaintiff. The sale growth and financial

standing of the company has been proved through Ex.PW-1/21.

19 In view of the aforenoted evidence, both oral and documentary

collected by the plaintiff and placed on record and the resemblance

between the rival trade name and trade mark appears to be wholly

similar and an ordinary layman with an average and reasonable

intelligence is likely to be confused and deceived into believing that the

lipsticks being sold under the trade name 'LANCOM' are in fact the

goods of the plaintiff.

20 Issue nos. ii to iv are accordingly decided in favour of the plaintiff

and against the defendant.

ISSUE NO.v

21 The suit of the plaintiff is liable to succeed. Accordingly a decree

of permanent injunction is passed in favour of the plaintiff and against

the defendants restraining them as also their individual

proprietors/partners/directors, agents, representatives, distributors,

assigns, heirs, successors, stockists and all other acting for and on their

behalf from using, selling, soliciting, exporting, displaying, advertising

or by any other mode or manner dealing in or using the impugned trade

mark 'LANCOME' or any other identical/deceptively similar

word/mark in relation to their impugned goods and business of

cosmetics, personal care, beauty products and allied/related products.

22    This issue is disposed of in the above terms.


ISSUE NOS.vi AND vii

23    The plaintiff has claimed damages.        The report of the local

commissioner evidenced huge quantities of lipstick having been picked

up by the local commissioner from the site i.e. the manufacturing unit of

the defendant. In 2006 (33) PTC 683 (Del) Asian Paints (India) Ltd. Vs.

Balaji Paints and Chemicals and Ors. where the defendant was ex

parte; in a claim for damages a Bench of this Court had granted Rs.3

lacs as damages to the plaintiff including costs of the suit. This Court is

inclined to follow the ratio of the said judgment which while granting

damages in this context had noted as under:

"The result of the actions of defendants is that plaintiffs, instead of putting its energy for expansion of its business and sale of products, has to use its resources to be spread over a number of litigations to bring to book the offending traders in the market."

24 Plaintiff is accordingly entitled to damages quantified at Rs.1 lac.

Cost of the suit also be granted in favour of the plaintiff. He is also

entitled to the delivery of the impugned finished and unfinished material

lying in the defendant which is violative of the trade mark of the

plaintiff.

Issue nos. vi and vii are decided in the above terms.

25     Decree sheet be drawn up.

26     File be consigned to record room.




                                        INDERMEET KAUR, J

JANUARY 27, 2015
A