Delhi High Court
M/S Loreal vs M/S Sigma Enterprises & Anr. on 6 November, 2015
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: 6thNovember, 2015
+ CS(OS) No.1551/2008
M/S L' OREAL .....Plaintiff
Through Mr.Ajay Amitabh Suman, Adv. with
Mr. Vinay Kumar Shukla, Adv.
versus
M/S SIGMA ENTERPRISES & ANR. ..... Defendants
Through Defendants are ex-parte.
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The plaintiff has filed a suit under Section 134 and 135 of Trade
Marks Act, 1999, Section 55 of Copyright Act, 1957 for permanent
injunction restraining infringement, passing off, delivery up, rendition of
accounts etc. against the defendants.
2. The defendants were served by way of publication. They failed to
appear before the Court. They have also not filed the written
statement. They were proceeded ex-parte by order dated 19th August,
2015.
3. Ex-parte evidence was filed by the plaintiff by way of affidavit of
Ms. Surbhi Bansal, Constituted Attorney of the plaintiff. A copy of
Power of Attorney in favour of Ms. Surbhi Bansal has been exhibited
as Ex. PW-1/1. The suit was initially instituted by Shri Sheel Bansal,
the then Constituted Attorney of the plaintiff. A copy of Power of
Attorney in his favour has been placed on record and has been
exhibited as Ex. PW1/2.
4. The plaintiff is engaged in the business of manufacture,
distribution and sale of a wide range of hair care, skin care, toiletries
and beauty products including perfumery preparations, essential oils,
cosmetics, preparations for colouring and bleaching the hair, hair dyes
and tints, preparations for waving and setting the hair, shampoos, hair
sprays, non-medicated preparations for the care and the beauty of the
hair, non-medicated preparations for the care and the beauty of the
skin, toilet soaps, dentifrices, suntan preparations, personal
deodorants and other allied/related products (hereinafter referred to as
"the said goods" and "the said business").
5. Ever since its bonafide adoption in about the first decade of
1900, the plaintiff since about 1910-1915 has been using the
word/mark L'OREAL word per se, stylized, formative/bearing and
labels as a trademark as also as an essential part of its trade name in
relation to its said goods and business. In addition to its word per se
user, the plaintiff over a period of time has been using its trademark in
various stylized and artistic formats and labels and which have been
created and are being created over a period of time. The word/mark
L'OREAL remains a key and material part thereof. The word/mark
L'OREAL has all the trappings of an invented mark and as such is
extremely a strong mark. The specimen of plaintiff's said
trademark/labels has been exhibited as Ex. PW- 1/3.
6. As of now the plaintiff's said goods under its said trademark/trade
name are branded and sold in about 130 countries of the world and
across all continents and regions including in India, wherein, in addition
the plaintiff also enjoys its trans-border reputations and users. The
plaintiff's said goods are sold and traded by the plaintiff directly or
through a wide network of its associates, affiliates, subsidiary
companies, licensees and through a wide marketing network including
through retail as also through internet and e-commerce.
7. The plaintiff's trademarks L'OREAL word and ELVIVE word mark
is duly registered in India under the Trade Mark Act, 1999 (hereinafter
referred to as 'the Act') as per the following particulars:
(a) Trade Mark L'OREAL (word mark)
Registration No. 165778 in class 3
Date of Registration 14.9.1954
Status Renewed and subsisting till
14.9.2020
Goods: Perfumery, soaps, non-medicated
toilet preparations, shampoos, toilet
preparations for the permanent
waving of hair, toilet preparations
(coloured and otherwise) for the
rinsing of hair, dyes for hair and
beards, non-medicated hair lotion.
(b) Trade Mark L'OREAL (LABEL)
Registration No. 473298 in Class 3
Date of Registration 08.06.1987
Status Renewed, legal, valid and
subsisting
Goods: Perfumery preparations, essential
oils, cosmetics, preparations for
colouring and bleaching the hair,
hair dyes and tints, preparations for
waving and setting the hair,
shampoos, hair sprays, non-
medicated preparations for the care
and the beauty of the hair, non-
medicated preparation for the care
and the beauty of the skin, toilet
soaps, dentifrices, sun tan
preparations, personal deodorants;
(c) Trade Mark L'OREAL PROGRESS (word mark)
Registration No. 499858 in Class 3;
Date of Registration 25.10.1988;
Status Renewed, legal, valid and
subsisting
Goods: Perfumery preparations, essential
oils, cosmetics, preparations for
colouring and bleaching the hair,
hair dyes and tints, preparations for
waving and setting the hair,
shampoos, hair sprays, non-
medicated preparations for the care
and the beauty of the skin, toilet
soaps, dentifrices, personal
deodorants included in Class 3.
(d) Trade Mark L'OREAL PLENTITUDE (word
mark)
Registration No. 477223 in Class 3;
Date of Registration 20.08.1987;
Status Renewed, legal, valid and
subsisting
Goods: Perfumery preparations, essential
oils, preparations for colouring and
bleaching the hair, hair dyes and
tints, preparations for waving and
setting the hair, shampoos, hair
sprays, non-medicated preparations
for the care and the beauty of the
hair, non-medicated preparations for
the care and the beauty of the skin,
toilet soaps, dentifrices, sun tan
preparations, personal deodorants;
(e) Trade Mark L'OREAL SOLAR EXPERTISE
Registration No. 1493028 in Class 3;
Date of Registration 04.10.2006;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes. Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions,
Gels and Powders for the face, the
body and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(f) Trade Mark L'OREAL PREFERENCE
Registration No. 1493024 in Class 3;
Date of Registration 04.10.2006;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes. Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions, Gels
and Powders for the face, the body
and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(g) Trade Mark L'OREAL ULTRA VOLUME
COLLAGEN
Registration No. 1714864 in Class 3;
Date of Registration 28.07.2008;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes, Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions,
Gels and Powders for the face, the
body and the hands. Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(h) Trade Mark L'OREAL EXTRA VOLUME
COLLAGENE
Registration No. 1778491 in Class 3;
Date of Registration 28.01.2009;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes, Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions, Gels
and Powders for the face, the body
and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations, Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(i) Trade Mark L'OREAL STRAIGHT
PERFECT
Registration No. 1832958 in Class 3;
Date of Registration 25.06.2009;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes. Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions,
Gels and Powders for the face, the
body and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(j) Trade Mark L'OREAL (Label)
Registration No. 1836274 in Class 3;
Date of Registration 03.07.2009;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes, Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions,
Gels and Powders for the face, the
body and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(k) Trade Mark L'OREAL 5 PROBLEMS, 1
SOLUTION
Registration No. 1887201 in Class 3;
Date of Registration 20.11.2009;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes, Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions, Gels
and Powders for the face, the body
and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(l) Trade Mark L'OREAL
Registration No. 1832961 in Class 18;
Date of Registration 25.06.2009;
Status Legal, valid and subsisting.
Goods: Perfume, Toilet Water, Gels, Salts
for the bath and shower not for
medical purposes, Toilet Soaps,
Body Deodorants, Cosmetics
namely Creams, Milks, Lotions,
Gels and Powders for the face, the
body and the hands, Sun Care
Preparations (Cosmetic Products),
Make up preparations. Shampoos,
Gels, Sprays, Mousses and Balms
for the Hair styling and Hair Care
and Hair Lacquers, Hair Colouring
and Hair Decolorant Preparations,
Permanent Waving and Curling
Preparations, Essential Oils for
personal use included in Class 03;
(m) Trade Mark ELVIVE (word mark)
Registration No. 772109 in Class 3;
Date of Registration 22.10.1997;
Status Legal, valid and subsisting.
Goods: Perfume, toilet water, gels, salts for
the bath and the shower; toilet
soaps; body deodorants; cosmetics
namely creams, milks, lotions, gels
and powders for the face, the body
and the hands; sun care
preparations;make-up preparations;
shampoos; gels, sprays, mousses
and balms for the hair styling and
hair care; hair lacquers; hair
colouring and hair decolorant
preparations; permanent waving
and curling preparations; essential
oils for personal use; dentifrices;
Copy of Certificate of Registration with respect to Trademark No.
165778 in class 3 in favour of the plaintiff along with its advertisement
in Trade Marks Journal and its renewal certificates have been
exhibited as Ex.PW-1/4 (Colly). Status of the said registered
trademarks of the plaintiff as appearing on the web-site of the Trade
Mark Registry have been exhibited as Ex.PW-1/5 (Colly.)
8. The plaintiff has been regularly and continuously promoting its
said distinctive trademark/trade name and the goods and business
thereunder, through various means and modes including through
visual, print and electronic media, in leading Newspapers, trade
literature and magazines, word of mouth, over the internet etc. and all
of which have tremendous reach, availability and circulation world over
including in India. The plaintiff has placed on record various
advertisements and other sales promotional literature of the plaintiff as
published and circulated in India. The same has been exhibited as
Ex.PW-1/9.
9. The plaintiff's said trademark/trade name has acquired enviable
and enduring goodwill, reputation and users, and which the plaintiff
owns, in the international markets including in India, wherein in
addition to the aforesaid the plaintiff also enjoys trans-border
reputations and users as extending into India. Downloads from the
plaintiff's website have been exhibited as Ex.PW-1/10 (Colly.)
10. It is claimed that the plaintiff's said trademark/trade name are
well known trademarks within the meaning of Section 2 (1) (zg) of the
Act. A copy of Memorandum and Articles of Association of its
subsidiary M/s L'Oreal India Pvt. Ltd, has been exhibited as Ex. PW-
1/11.
11. As alleged in the plaint, the defendant No.1, M/s Sigma
Enterprises, A-804, Madhuban Height, Bhayander, Thane,401106 and
defendant No.2 were initially impleaded as My Dollar Store, Phoenix
Mill, Mumbai and also at M-1, Main Market, Greater Kallash, New
Delhi. The defendants are engaged in trading of cosmetics, toiletries,
hair care products, shampoos and other allied/related goods
(hereinafter referred to as "the impugned goods" & "impugned
business"). Defendant No. 2 is a dealer/agent of defendant No.1 and
owner of 'My Dollar Store'. Defendant Nos.1 and 2 are acting in
connivance and in unison with each other. The defendants have
adopted and started using the trademarks L'OREAL (hereinafter
referred to as the "impugned trade mark") in relation to their impugned
goods. The defendants are also using word PARIS and ELVIVE along
with the impugned trademark in order to give a false description to its
impugned goods. Specimens of defendants' impugned trademark have
been exhibited as Ex. PW-1/12.
12. The impugned trademarks L'OREAL along with PARIS and
ELVIVE have been adopted and being used by the defendants in
relation to their impugned goods and business is identical with and
deceptively similar to the plaintiff's said trademark/trade name
L'OREAL in each and every respect including phonetically, visually,
structurally, in its basic idea and in its essential features. Defendants
have also copied the artistic features involved in the plaintiff's
trademark and thus, infringing the plaintiff's copyrights involved in its
said trademark. The defendants are using all kinds of false description
on its impugned goods to wrongly link the impugned goods with the
plaintiff and to wrongly convey to the public and customers that the
impugned goods are coming from the source and origin of the plaintiff.
The impugned goods and business thereunder are also of the
same/similar/allied/cognate to that of the plaintiff's.
13. It is stated that the defendants have adopted and started using
the impugned trademark/trade name dishonestly, fraudulently and out
of positive greed with a view to take advantage and to trade upon the
established goodwill, reputation and proprietary rights of the plaintiff in
the plaintiff's trademark/trade name. By the defendants' impugned
adoption and use, deception and confusion in the market is ensuing or
is likely to so ensue. The plaintiff's said trademark/trade name are
otherwise being diluted and eclipsed thereby. Any person not knowing
clearly the relationship between the parties to this action is bound to be
confused by the defendants' impugned adoption and use and might as
well do business with the defendants thinking that he is dealing with
the plaintiff or that some strong, vital and subtle links exist between the
plaintiff and the defendants.
14. From the averments made in the plaint and the statements made
in the affidavit of PW-1 as well as the material placed on record, the
plaintiff has been able to prove its case. There is no rebuttal on part of
the defendants. The plaintiff's counsel at the time of hearing has made
the statement not to press the relief of damages and rendition of
accounts.
15. Therefore, the suit of the plaintiff is decreed as per the prayer
clause 38 (a) and (b) of the plaint which are reproduced here as
under:-
"(a) For a decree of permanent injunction restraining the
defendants by themselves as also through its individual
proprietors/partners, agents, representatives, distributors,
assigns, heirs, successors, stockists and all others acting
for and on their behalf from importing into India in any
manner or form the products of the plaintiff under the
trademark/trade name and label/trade dresses L'OREAL
and ELVIVE or deceptively similar thereto and from
commercially and in the course of trade, selling,
advertising, distributing or in any other manner, mode or
from dealing with them or offering services in connection
therewith.
(b) Restraining the defendants from disposing off or
dealing with its assets including its
shops/workshop/factory and premises at A- 804,
Madhuban Heights, Bhayander, Thane - 401106; My
Dollar Store, Phoenix Mill, Mumbai and M-1, Main Market,
Greater Kailash, New Delhi and its stocks-in-trade or any
other assets as may be brought to the knowledge of this
Hon'ble Court during the course of the proceedings and
on the defendants disclosure thereof and which the
defendants are called upon to disclose and/or in its
ascertainment by the plaintiff as the plaintiff is not aware
of the same as per Section 135(2)(c) of the Trade Marks
Act, 1999 as also it could adversely effect the plaintiffs'
ability to recover costs and accounts of profits."
16. The other prayers 38 (c), (d) and (e) of the plaint i.e. for delivery
up, rendition of accounts and damages are given up.
17. The plaintiff is also entitled for costs.
18. Decree be drawn accordingly.
(MANMOHAN SINGH)
JUDGE
NOVEMBER 06, 2015
