Delhi High Court
M/S Blue Heaven Cosmetics Pvt Ltd vs Shivani Cosmetics Through Its ... on 18 May, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
$~12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 18th May, 2022
+ CS(COMM) 702/2021 & I.A. 17434/2021
M/S BLUE HEAVEN COSMETICS PVT LTD ..... Plaintiff
Through: Mr. Rishabh Srivastava & Ms.
Radhika Arora, Advocates (M-
9737708356)
versus
SHIVANI COSMETICS THROUGH ITS PARTNERS VINOD
MONGA NISHANT MONGA ..... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff seeking permanent
injunction restraining infringement of registered trademark, trade dress,
copyright, writing style, colour combination, label, packaging, passing off
goods, delivery up, rendition of accounts of profits along with further
damages.
3. The Plaintiff - M/s. Blue Heaven Cosmetics Pvt. Ltd. is engaged in
the business of manufacturing and sale of cosmetics and other allied goods.
It is the case of the Plaintiff that the Defendant has infringed the rights of the
Plaintiff in the registered marks "BLUE HEAVEN"/
CS(COMM) 702/2021 Page 1 of 9
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By:DEVANSHU JOSHI
Signing Date:20.05.2022
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and "BLUE HEAVEN GET BOLD" (word as well as formative marks). The
Plaintiff adopted the mark "BLUE HEAVEN" in the year 1972 and has been
continuously carrying out trade under the said mark. The Plaintiff further
adopted the distinctive mark "BLUE HEAVEN GET BOLD"
(word/formative marks) in the year 2020.
4. An ex parte ad interim injunction was granted, restraining the
Defendant, vide order dated 23rd December, 2021 in the following terms:
"20. In the opinion of the court, upon an
evaluation of the Plaintiff's trademark / label / product
with the Defendant's product is it prima facie evident
that the Defendant copied not only the trademark but
also the trade dress / copyright / writing style / colour
combination / label / packaging / overall get up of the
Plaintiff's mark. The balance of convenience also lies
in its favour, and irreparable loss is likely be caused in
case an injunction is not granted.
21. Accordingly, till the next date of hearing,
Defendants, their directors, successors, franchisees,
licensees, distributors, representatives, assignees,
agents and all others in active concert / participation
with them or on their behalf are restrained from using
the trade dress / copyright / writing style/ colour
combination/label/packaging/ overall getup " &
CS(COMM) 702/2021 Page 2 of 9
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By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
or in any other manner whereby directly or
indirectly infringing the Plaintiff's/Applicant's
registered trade dress/ colour combination/ writing
style/ packaging/ label/copyright
and (word as well as
formative marks) or passing off its goods as that of the
Plaintiff/Applicant for the goods Eyeliner and other
allied and cognate goods and services related thereto
in Classes 03 & 35.
22. Let the provisions under Order XXXIX Rule 3
be complied with within a period of one week from
today.
23. Counsel for the Plaintiff very fairly states that
it has no objection with the Defendant/Respondent's
use of its own mark. Accordingly, it is clarified that the
Defendants are free to use the mark "CANDY/
".
24. List before the Joint Registrar for completion
of pleadings on 11th April, 2022.
25. List before the Roster Bench on 18th May,
2022.
5. None appears for the Defendant, despite repeated service being
effected. A perusal of the affidavits of service dated 15th February, 2022 and
placed on record by the ld. Counsel for the Plaintiff shows that the notice
and summons have been served upon the Defendant repeatedly through
speed post. Service has also been effected upon the Defendant through
email.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
6. Ld. Counsel for the Plaintiff further submits that, in fact, the Plaintiff
has received a letter from the Defendant - M/s. Shivani Cosmetics, wherein
the Defendant has stated as under:
"I/we must confess we were unaware of your
copyright, and we appreciate you brought the
matter to our attention. In this respect, we are
willing to inform you that we are making an
offer to stop this box immediately. We will make
sure to remove all the boxes and material of this
respective product.
It was sheer case of ignorance. In future if you
find any product in this design by our firm. We
should be liable for such guilty."
The letter which has been received by the Plaintiff from the Defendant
appears to have the signatures of one Mr. Vinod Monga who is the partner
of the Defendant - M/s. Shivani Cosmetics.
7. Ld. Counsel for the Plaintiff also submits that the address of the
Defendant which has been mentioned in the memo of parties is the same as
the address where the Defendant is presently residing and the said address
appears on the Defendant's products as well.
8. Considering the above facts, this Court is convinced that service has
been effected upon the Defendant.
9. This Court has also perused the competing products of the Plaintiff
and the Defendant which have been handed over to the Court. A perusal of
the same shows that the Defendant's products have a packaging that is
virtually identical to that of the Plaintiff. The Plaintiff is the manufacturer
and seller of 'Blue Heaven Cosmetics', including 'Blue Heaven Get Bold
Eyeliner Waterproof 7 ml'. The Defendant has copied the various elements
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By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
including the letter styling, colour scheme, the placement of the various
features, the colour combination of the packaging, etc. The Defendant also
used various devices and descriptive material on its product which is
identical to that of the Plaintiff.
10. A representation of the packaging and trade dress of the products of
the Plaintiff and the Defendant is set out below:
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
11. Upon a perusal of the physical products, this Court is convinced that
the Defendant's product is nothing but a counterfeit of the Plaintiff's
product, though the mark 'CANDY' is being used in place of the Plaintiff's
mark 'BLUE HEAVEN'. However, in the opinion of this Court, the same is
not sufficient to distinguish the Defendant's product from the Plaintiff's
product. Considering that these are eyeliners and are used by the consumers
on their eyes, the standard of quality that is expected in this regard is quite
high, and counterfeits/ knock-offs cannot be encouraged.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
12. At this stage, ld. Counsel for the Plaintiff further submits that the
Defendant's products do not appear to be approved by the Drugs Controller
General of India, as no manufacturing dates have been mentioned on the
packaging of the Defendant's products. In view of the foregoing facts, this
Court agrees with the ld. Counsel for the Plaintiff that the Defendant's
product is liable to be permanently injuncted from being manufactured and
sold.
13. Accordingly, since the Defendant has chosen not to enter appearance
despite repeated service, as also, no written statement has been filed on
behalf of the Defendant, following the rationale of the judgment of the ld.
Single Judge of this Court in Disney Enterprises Inc. & Anr. v. Balraj
Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014], this
Court is of the opinion that no ex parte evidence needs to be adduced in this
matter. The same has been reiterated by the Court in S. Oliver Bernd Freier
GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as
also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC
414 (Del)]. The relevant observations from the judgment in Disney
Enterprises Inc. (supra), are as under:
"3. Though the defendants entered appearance
through their counsel on 01.02.2013 but remained
unrepresented thereafter and failed to file a
written statement as well. The defendants were
thus directed to be proceeded ex-parte vide order
dated 04.10.2013and the plaintiffs permitted to
file affidavits by way of ex parte evidence.
4. The plaintiffs, despite having been granted
sufficient time and several opportunities, have
failed to get their affidavits for leading ex-parte
evidence on record. However, it is not deemed
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By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:57:54
expedient to further await the same and allow
this matter to languish, for the reason that I
have in Indian Performing Rights Society Ltd.
Vs. Gauhati Town Club MANU/DE/0582/2013
held that where the defendant is ex parte and the
material before the Court is sufficient to allow
the claim of the plaintiff, the time of the Court
should not be wasted in directing ex parte
evidence to be recorded and which mostly is
nothing but a repetition of the contents of the
plaint."
14. Thus, the present suit is decreed in terms of the relief of permanent
injunction as sought in paragraph 37(i) of the Plaint.
15. Insofar as the relief of damages and costs as sought in paragraph
37(iv) of the Plaint is concerned, the Defendant has manufactured and sold
products which are counterfeits of the product of the Plaintiff. The copying
and imitation of the Plaintiff's mark, trade dress, get up, and colour scheme
is absolutely deliberate on behalf of the Defendant. Moreover, the Defendant
has also chosen to stay away from the proceedings, despite repeated service.
A perusal of the letter which has been produced by ld. Counsel for the
Plaintiff and extracted hereinabove also shows that the Defendant has agreed
to stop manufacturing of the infringing products immediately.
16. In light of the foregoing facts and circumstances of the present case,
this Court is convinced that this is not a case of innocent adoption, and the
Court cannot encourage such dishonest conduct on behalf of the Defendant.
Thus, taking a reasonable assessment of the products which may have been
sold by the Defendant, the present suit is decreed for Rs.10 lakhs as
damages. In addition, Rs.2 lakhs is awarded as costs.
17. The Defendant shall pay the said amount to the Plaintiff within eight
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By:DEVANSHU JOSHI
Signing Date:20.05.2022
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weeks, failing which, the Plaintiff is permitted to commence execution
proceedings against the Defendant. The copy of the letter extracted above is
taken on record. The same be scanned and put in the pleadings file of the
physical/electronic record.
18. All pending applications are also disposed of. Decree sheet be drawn
accordingly.
PRATHIBA M. SINGH
JUDGE
MAY 18, 2022
Rahul/AD
