M/S Blue Heaven Cosmetics Private ... vs Deepak Arora & Anr.
2022 Latest Caselaw 962 Del

                                                           Signature Not Verified
                                                           Digitally Signed
                                                           By:DEVANSHU JOSHI
                                                           Signing Date:12.04.2022
                                                           05:59:02


$~4
*     IN THE HIGH COURT OF DELHI AT NEW DELHI
                                            Date of Decision: 06th April, 2022
+         C.O. (COMM.IPD-TM) 9/2021 & I.As.11908-09/2021
      M/S BLUE HEAVEN COSMETICS
      PRIVATE LIMITED.                       .... Petitioner
                    Through: Mr. Rishabh Srivastava, Advocate
                             (M:9737708556)
                    versus
      DEEPAK ARORA & ANR.                                      ..... Respondents
                  Through:              None for R-1
                                        Mr. Harish V. Shankar, CGSC for
                                        UOI
      CORAM:
      JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present petition has been filed by the Petitioner- M/s. Blue Heaven Cosmetics Pvt. Ltd. under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter "Act") seeking cancellation/rectification of the following trademark/device mark/label pronounced as `MARC HEAVEN' -

3. The impugned mark is registered in the favour of the Respondent No.1- Mr. Deepak Arora, bearing trade mark application no.4111088 in Class - 03 from 08th March, 2019.

4. The Petitioner is a company engaged in the business of manufacturing, marketing and trading in a range of cosmetic products which are set out in paragraph-2 of the plaint, which is as under:

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"2. That the Petitioner is engaged in the business of manufacturing, marketing and trading of "Cosmetics (Non-Medicated) Nail polish remover, Nail Enamel Remover and Toiletry Preparations; Non-Medicated Dentifrices; Perfumery, Essential Oils; Bleaching Preparations and Other Substances For Laundry Use; Cleaning, Polishing, lipsticks, foundation, eye liner, face powder, Kajal, Mascara, Sindoor, nail polish, nail polish remover, all type of cream, Vaseline, hair oil, eau de per/ ume, body spray, deodorant, bin di, kumkum, facial kits, rose water, cleaning milk, moistening lotion, hair remover, eye shadow, blusher, pen cake, pen stick, lip gloss, massage gel, hair gel, hair color, heena, lip liner, talc powder, face wash, scrub, make-up brush, soap, included in class-03 and services thereof in class-35 of the Trade Marks Act, 1999."

5. The Petitioner is the registered owner of the word mark "BLUE HEAVEN", its formative marks as well as the following device mark which were adopted by it in 1972-

6. The mark is stated to have been initially adopted by one Sh. Gurnam Singh who was the sole proprietor of M/s. G.C. Laboratories since 1972. Over the years the business of M/s G.C. Laboratories expanded and three entities were created:- M/s. G.C. Cosmetics Pvt. Ltd., M/s. Blue Heaven Cosmetics Pvt. Ltd. and M/s. Cosmetica Corporation for selling, export purposes and expanding the business. M/s Blue Heaven Cosmetics Private Ltd was incorporated on 13th December, 2002. In 2019, it is stated that all the trademarks and copyrights of the M/s G.C. Laboratories were

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transferred/assigned in favour of the present Petitioner- M/s. Blue Heaven Cosmetics Pvt. Ltd. vide assignment deed dated 27th March 2019.

7. It is the case of the Petitioner that the mark "BLUE HEAVEN" has been used by it in a distinctive logo form in blue colour, and various variants thereof, for the last several years. The Petitioner owns several registrations for the wordmark, various logo marks and device marks of "BLUE HEAVEN" some of which are set out hereinbelow:

Trade Mark             Class                 Trade Mark
Nos.















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679327            14         BLUE HEAVEN
679329            21         BLUE HEAVEN
679336            26         BLUE HEAVEN
679333            10         BLUE HEAVEN
















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8. The Petitioner has also applied for the registration of the mark "BLUE HEAVEN" in various classes. The mark "BLUE HEAVEN" is also registered/pending registration in various foreign countries such as Nepal, Algiers, Turkey, Pakistan, Myanmar, Bangladesh, Afghanistan, Indonesia, Iraq, South Africa, UAE, Sri Lanka, China, West Indies, Israel, Gaza, West Bank, Nigeria, Malaysia, United Kingdom, Yemen, UAE, and Sudan.

9. The Petitioner further claims rights under section 14 of the Copyright Act, 1957 in the original artistic works involved in the mark/logo "BLUE HEAVEN" in various logo forms and device marks which are registered bearing nos. A-64321/2003, A-109589/2014, A-120970/2017.The said original artistic works are as under:

10. It is further stated that there are also pending applications for various artistic works qua the mark/label. The Plaintiff is also stated to have various

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domain names which are registered in its name, consisting of the mark "BLUE HEAVEN". The said domain names are as under:

http://blueheavencosmetic.com/ http://blueheavencosmetics.asia/ http ://blueheavencosmetics.biz/ http ://blueheavencosmetics.co/ http:/ /blueheavencosmetics.co.in/ http://blueheavencosmetics.com/ http:/ /blueheavencosmetics.in/ http ://blueheavencosmetics.info/ http ://blueheavencosmetics.net/ http ://blueheavencosmetics.org/ http://blueheavenonline.in/

11. The Petitioner, thus, claims rights, both statutory and under the common law in the mark on account of long, open and exclusive user in the mark "BLUE HEAVEN" and its various formative marks/variants.

12. The sales figures of the Petitioner for the year 2019-2020 was to the tune of approximately 135 crores. In the year 2020-2021, the sales figures of the Petitioner were approximately 145 crores, till the time of filing of the suit in September, 2021. Thus, the Petitioner contends that the products bearing the mark "BLUE HEAVEN", as well as its formative marks, are identified and associated exclusively with the Petitioner and no one else. The mark of the Petitioner is claimed to be a distinctive indicium of the Petitioner and its business.

13. The Petitioner is aggrieved by the grant of registration of the mark "MARC HEAVEN" to the Respondent No.1 written in blue color. The said registration was granted by the Registrar of Trade Marks to the Respondent No.1 on 6th September, 2019. Upon the same coming to the knowledge of the Petitioner, the present rectification application has been filed for the

Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.04.2022 05:59:02

rectification/cancellation of the mark "MARC HEAVEN". The details of the Respondent No.1's registration is as under:

TM Application No.                        4111088



Date of Application                       08/03/2019

Appropriate Office                        DELHI

TM Applied For                            MARC HEAVEN (DEVICE)

Trade Mark Type                           DEVICE

User Detail                               Proposed to be used

Proprietor name                           (1) DEEPAK ARORA, single firm

Proprietor Address                        BA-229/2 Tagore Garden, New Delhi,
                                          INDIA

Goods & Service Details                   [Class:3] Cosmetics included in class 3.

14. The said mark was applied for registration by the Respondent No.1 on 'proposed to be used' basis. The Respondent No.1 had in fact filed a cancellation petition against the Petitioner's mark 4802221 in class 3, in which it was averred that the marks "BLUE HEAVEN" and "MARC HEAVEN" are identical/deceptively similar.

15. Mr. Rishabh Srivastava, ld. Counsel appearing for the Petitioner, submits that the Respondent No.1 has adopted an almost identical mark for an identical class of goods which also have the same trade channels. The Respondent No.1 is also using the blue logo and 'Heaven' in an identical manner. It is his submission that the blue logo and the word 'Heaven' are the

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essential and prominent feature of the Petitioner's mark "BLUE HEAVEN". According to the ld. counsel for the Petitioner, the adoption and registration of the mark "MARC HEAVEN" by Respondent No.1 is hit by Sections 9 and 11 of the Act. He relies upon Section 9(2)(a) of the Act to argue that if a mark is of such nature as is likely to cause confusion or deceive the public, then the same cannot be registered. Under Section 11 of the Act, it is submitted that since the Petitioner's trademarks were prior registered and prior used, the said mark ought to have been cited against the Respondent No.1's mark in the examination report and the registration ought not to be granted to Respondent No.1's mark "MARC HEAVEN". Accordingly, rectification of Respondent No.1's mark is sought in view of Section 57 of the Act and orders are prayed for rectification/cancellation of the said mark. The relief sought in the petition is as under:

"i. Remove/cancel/expunge the entry pertaining to the impugned trademark/label " "

registered under No.4111088 in class-03 from the Register of Trademarks with exemplary costs in favour of the Petitioner and against the Respondent No. 1 ;

ii. Direct the Respondent No.2 to remove the entry pertaining to the impugned trademark registration for the impugned trademark/label " " registered under No. 4111088 in class-03 from the Register of Copyright; iii. Also, award exemplary costs in favour of the Petitioner and against the Respondent No. 1. iv. Pass any other order and further orders which this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."

16. Heard the ld. Counsel for the Petitioner. In the present petition, vide

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order dated 15th September, 2021, notice was issued to the Respondent No.1 however, the notice was received un-served. Thereafter, repeated attempts have been made to serve the Respondent No.1. Since Respondent No.1 was not available at the given address, vide order dated 4th January, 2022, service was again effected at Respondent No.1's Trademark Agent's address. Since the Trademark Agent was served and there was no appearance, on 2nd march, 2022, the Respondent No.1 was proceeded ex parte.

17. Even today there is no appearance for the Respondent No.1. A perusal of the Petition and the averments made therein, clearly shows that the Petitioner is an aggrieved person under Section 57(2) of the Act and has the locus standi to maintain the present petition.

18. The Petitioner is the prior user of the mark "BLUE HEAVEN" in respect of cosmetics goods under class 3 and is aggrieved by the registration of the mark "MARC HEAVEN" by Respondent No.1 in respect of the same class of goods. A comparative representation of the Petitioner's and Respondent No.1's marks is as under:

19. In view of the Tribunals Reforms Act which was enacted in 2021, the powers of the Intellectual Property Appellate Board (IPAB) now vest with the High Court. Section 57 of the Act, post the amendment, reads as under-

"(1) On application made in the prescribed manner to the High Court or to the Registrar by any person

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aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.

(3) The Registrar or the High Court, as the case may be, may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register. (4) The Registrar or the High Court, as the case may be, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2). (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly."

20. As per the above provision, upon an application being filed by any person aggrieved, the High Court may pass orders cancelling or varying the registration if:

i. There is any contravention or failure to observe a condition entered on the register in relation thereto. ii. Any entry is made in the register without sufficient cause. iii. Any entry is wrongly remaining in the register.

Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.04.2022 05:59:02

iv. There is any error or defect in any entry in the register.

21. The competing marks in the present case are "BLUE HEAVEN" and "MARC HEAVEN". They are both registered in class 3 for cosmetics. It is clear from the record that the Petitioner is the prior user of the mark "BLUE HEAVEN" as the Respondent No.1's application for the registration of the mark "MARC HEAVEN" was filed on "proposed to be used" basis in the year 2019. On the other hand, the mark of the Petitioner "BLUE HEAVEN" has been used since the year 1972. It is surprising that the Petitioner's mark was not cited in the examination report and Respondent No.1's mark simply proceeded for registration.

22. The prominent and dominant feature of the Petitioner's mark is the word 'Heaven' which is used in a prominent and distinctive manner. The use of the word 'Heaven' and blue colour in the Respondent's mark for identical goods shows that there is dishonesty in Respondent No.1's adoption of the mark "MARC HEAVEN" itself. Moreover, Respondent No.1 has filed an application for the removal of trademark no. 4802221 granted in favour of the Petitioner, wherein Respondent No.1 has made a categorical statement to the following effect:

"14. That the registered proprietor is not the rightful proprietor of the trademark 'Blue Heaven GET Bold

EYELINER' '. The trademark 'Blue

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Heaven GET Bold EYELINER ' ' is identical with and deceptively similar to the Applicant for rectification's Trade Mark 'MARC HEAVEN

'. The resemblances between the rival trademarks are so close that it can hardly occur except by deliberate imitation. The registered proprietor's impugned adoption and user thereof are tainted at the inception and are pirate use of the applicant for rectification's said trademark.

15. That the registered proprietor has obtained the registration of the trademark 'Blue Heaven GET Bold

EYELINER , by fraud. That the trademark 'Blue Heaven GET Bold EYELINER

, adopted and being used by the registered proprietor in relation to the goods and business are identical with and deceptively similar to the applicant for rectification's trademark 'MARC

HEAVEN phonetically, Visually and structurally, in its basic idea and its essential features. A bare look at the specimen of the trademark 'MARC

HEAVEN ' of the applicant for rectification and the trademark 'Blue Heaven GET Bold

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EYELINER ' of the registered proprietor show the identity between the competing trademark/label. The registered proprietor's impugned adoption and user thereof are tainted at the inception and are pirate use of the applicant for rectification's said trade mark."

23. A perusal of the above two paragraphs clearly shows that Respondent No.1's own stand, while seeking rectification/cancellation of the Petitioner's mark, is that the two marks are identical/deceptively similar. Thus, this is a clear admission on behalf of Respondent No.1 as to the identity/similarity of the marks in question. Thus, what remains to be seen is only the user of the mark. The Petitioner has placed on record several invoices starting from the year 2017 to establish their prior use of the mark. Various orders protecting the Petitioner's mark are set out below:

i. Order dated 16th April, 2013 in CS(OS) 694/2013 titled Gurnam Singh v. M/s Apex Cosmetics. ii. Order dated 25th April, 2016 in CS (COMM) 388/2016 titled Gurnam Singh v. M/s Little Profit Trading Company. iii. Order dated 27th April, 2018 in CS(COMM) 827/2018 titled Gurnam Singh v. M/s GI Cosmetics.

iv. Order dated 10th December, 2020 in CS(COMM) 545/2020 titled M/s Blue Heaven Cosmetics Pvt. Ltd. v. M/s Vermillion Cosmetics Pvt. Ltd.

v. Order dated 8th January, 2021 in CS(COMM) 11/2021 titled

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M/s Blue Heaven Cosmetics Private Limited v BH Cosmetics LLC.

24. Moreover, the Petitioner's trademark registration also claims user since 1972 as is clear from trademark registration no.293541. The Petitioner's marks have been registered way back in 1970's and the use of

the series of the marks "BLUE HEAVEN", " " as well as formative marks leave no doubt in the mind of the Court that the Petitioner is the prior user, prior adopter, prior registered proprietor of the mark "BLUE HEAVEN" in respect of cosmetics in class 3.

25. Respondent No.1 in the present case has appropriated the word 'Heaven' and the blue logo colour from the mark of the Petitioner. The test of confusion in case of composite marks is well settled in the case of M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr. (2015) 61 PTC 231 where, while holding that 'DAZS' is an essential and dominant feature of the Plaintiff's mark, the Court was of the opinion that the mark 'D'DAAZS' was deceptively similar to Plaintiff's mark 'HAAGEN-DAZS'. The relevant observation of the Court is as under:

"23. It is also settled that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features of the marks that are more or less important for purpose of analysis in cases of composite marks.

24. In this regard we may fortify our conclusion by take note of the decision reported as 405 F. Supp. 530 (1975) Eaton Allen Corp. v. Paco Impressions Corp. The facts of the said case reveal that the plaintiff manufactured coated paper under the registered trademark 'Super-Ko-

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Rec-Type'. The defendant manufactured and advertised a similar product under the mark 'Super Type' and 'Super Type-7'. The defendant contended that the only similarity between the said marks was use of the words 'Super' and 'Type', terms which were neither significant parts of the plaintiff's registered trademark nor protectable as a matter of law. The court held that the consideration of a trademark as a whole does not preclude infringement where less than the entire trademark is appropriated.

25. Therefore, the submission of the appellant-defendant predicated upon the principle of 'anti-dissection' that action for infringement would not lie since use of the word 'D'DAAZS' does not result in complete appropriation of the respondent-plaintiff's mark 'HAAGEN DAZS', which is to be viewed as an indivisible whole, is liable to be rejected.

26. Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis. However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection.[174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation]"

26. On the issue of likelihood of confusion, J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition [4th edition, Vol. 3, page 23-128] opines that the ordinary rule is that marks must be compared in their entirety, however, more weightage can be given to the dominant feature of the mark in reaching a conclusion on the issue of confusion. The relevant observation is as follows-

"While the basic rule is that marks must be compared in their entireties and not dissected, in articulating reasons

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for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Although it is not proper to dissect a 'mark,' one feature of a mark may be more significant and it is proper to give greater force and effect to that dominant feature. Thus, as a preliminary to comparing marks in their entireties, it is not improper to downplay the similarity of very descriptive parts of conflicting marks."

27. Thus, as per the settled law, even the appropriation of the word 'Heaven' by Respondent No.1, which is the dominant and prominent feature of the Petitioner's mark, can constitute infringement of Petitioner's rights in the mark "BLUE HEAVEN". Though the words `Blue' and `Heaven' are dictionary words, the adoption of both the words in combination and otherwise is a completely arbitrary adoption in respect of cosmetics. The mark `BLUE HEAVEN' is thus an inherently distinctive mark. Moreover, the said issue is no longer needed to be adjudicated separately in the present case as there is a clear admission by the Respondent No.1, in the application for rectification of the Petitioner's mark, as to the deceptive similarity of the marks.

28. In this Court's opinion, registration of the mark "MARC HEAVEN" would be violative of Section 9(1)(a) of the Act, as the same would be devoid of distinctive character inasmuch as it would not distinguish Respondent No.1's products from the Petitioner's products. Furthermore, as per Section 9(2) of the Act, a mark is not liable to be registered if it is of such a nature so as to deceive the public or causes confusion. Section 11(2) of the Act makes it clear that, if a trademark is identical with or similar to an

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earlier trademark, the same does not deserve to be registered. In view of these grounds of refusal, which are both absolute grounds and relative grounds under Sections 9 and 11 of the Act, this Court has no hesitation in holding that Respondent No.1's mark is wrongly entered in the register and wrongly remains in the register.

29. The trademark " " bearing no.4111088 is accordingly directed to be cancelled/removed and the register is liable to be rectified by the removing/ expunging of the said mark.

30. The Registrar of Trademark shall take proper steps for cancelling/expunging the Registration No. 4111088 from the register within six weeks.

31. The Petition, along with all the applications, is disposed of in the above terms.

32. Mr. Harish V. Shankar, ld. CGSC shall communicate this order to the Registrar for compliance.

PRATHIBA M. SINGH JUDGE APRIL 6, 2022/aman/SK (corrected & released on 11th April, 2022)