Delhi High Court
Marc Salon And Beauty Equipments Pvt Ltd vs Gm Sales on 30 May, 2024
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 07th May, 2024
Pronounced on: 30th May, 2024
+ CS(COMM) 493/2021
MARC SALON AND BEAUTY EQUIPMENTS PVT LTD
..... Plaintiff
Through: Mr. Jayant Kumar, Ms. Ruchi
Singh and Mr. Sumit Verma,
Advs.
versus
GM SALES ..... Defendant
Through: Mr. Arnav Goyal, Adv.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
JUDGMENT
ANISH DAYAL, J.
I.A. 13157/2021 (application under Order XXXIX Rules 1 & 2, CPC) & I.A.
16893/2021 (application under Order XXXIX Rule 4, CPC)
1. This judgment disposes of I.A. 13157/2021 under Order XXXIX Rule 4
of the Code of Civil Procedure, 1908 ("CPC") filed by the defendant seeking
vacation of interim injunction granted in favor of the plaintiff on 07th October,
2021, and application under Order XXXIX Rules 1 & 2 CPC in which the ad
interim injunction as noted above was granted. The suit was filed by the
plaintiff for permanent injunction alleging passing off, copyright infringement,
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unfair competition, and unfair trade practices by defendant, seeking a restraint
on defendant from manufacturing, offering, stocking, selling, promoting,
distributing, directly or indirectly, "salon furniture" or any other similar good
that are an imitation of the plaintiff's products in their color scheme, pattern,
shape, configuration as also from using the original pictures of the plaintiff's
products amounting to copyright infringement, and other attendant relief.
Factual Background
2. Plaintiff claims to be dealing in salon furniture, that it manufacturers in
India, and sells a wide range of furniture which is required for salons, spas, and
parlors. Plaintiff company was incorporated in October 2018 and claims to
have an extensive production and distribution network across India, and enjoys
market dominance internationally on this particular range of products. Their
salon furniture, includes inter alia, salon chairs, barber chairs, multi-purpose
chairs, styling chairs, hair-wash station, unisex styling chairs, nail art table,
pedicure and manicure stations, salon beds, salon accessories like facial trolley,
hair color trolley, multipurpose tools, beauty and styling equipment, as also spa
furniture including spa bed, facial bed, spa trolley etc. (collectively referred to
as "salon furniture").
3. Plaintiff claims to have a network of more than 2000 professionals with
manufacturing plants located at Manesar, selling domestically and exporting to
other countries as well. The pictures and catalogues are hosted by the plaintiff
on the website www.salonfurniture.in. The annual sales figures of the plaintiff
from the year 2012 - 2020, as claimed in the plaint, are tabulated as under:
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4. The amount spent by the plaintiff on advertisement and promotion of its
products for the year 2011 - 2020 is tabulated in the plaint as under:
5. The grievance was against the defendant, a proprietorship firm run by
Mr. Goutam Acharya with address in Jaipur. It is claimed by the plaintiff that
Mr. Acharya was associated with the plaintiff from the year 2007 to 2018 as an
informal distributor of the plaintiff's products. Plaintiff claims to have an in-
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house design and development team working towards creating customized
salon furniture, and have invested significant time and resources in developing
and designing the salon furniture. Plaintiff claims distinctiveness in these, due
to their innovative design and quality. Plaintiff claims that due to the unique
shape in respect of each of these salon furniture products, it would be defined
as a trademark under Section 2(zb) read with Section 2(m) of the Trade Marks
Act, 1999 ("Trade Marks Act"). A list of plaintiff's trademarks, as claimed,
are as under:
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Signing Date:01.06.2024
14:26:08
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Signing Date:01.06.2024
14:26:08
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Signing Date:01.06.2024
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6. Plaintiff claims to have received numerous awards on account of its
products, including the following:
S. No. Award
a. Indian Salon Awards 2013
b. Beauty Salon Awards 2015
c. iDiva Salon Awards 2016 - Most preferred
Indian Equipment Brand
d. iDiva Salon Awards 2017 - Most preferred
Indian Equipment Brand
e. Business Partnership Award by VLCC
7. Plaintiff has given illustrations of its prominent customers, which are as
under:
S. No. Customers
a. VLCC healthcare Ltd.
b. Jawed Habib Salons
c. Loreal India
d. Lakme Salons
e. Studio 11
f. Naturals
g. Green Trends
h. Looks Salon
i. Geetanjali Salons
j. Hairmaster Salon
k. Head Master Salon
l. Glam Studio
m. Toni & Guy Salon
8. The defendant, however, registered a deceptively confusing domain
name in 2018, i.e. www.beautysalonfurniture.in and was also hosting another
website, www.gmsales.in.
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9. Grievance by the plaintiff is regarding the slavish copying by the
defendant of most of the salon furniture items, as well as pictures of the same
from the plaintiff's website (copied with some minor variations on the
defendant's website). A comparative table of the plaintiff's and defendant's
products, which forms part of the plaint, is as under:
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Signing Date:01.06.2024
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Signing Date:01.06.2024
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Signing Date:01.06.2024
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Signing Date:01.06.2024
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10. Plaintiff claims copyright in the pictures, which are on its brochures and
catalogues, under Section 13 read with Section 17 of the Copyright Act, 1957.
11. Plaintiff claims that the defendant has just changed the color scheme and
copied all the furniture items, which is, prima facie, evident from the table
reproduced as under:
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Signing Date:01.06.2024
14:26:08
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Signing Date:01.06.2024
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Signing Date:01.06.2024
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12. Accordingly, defendant has claimed that this amounts to passing off their
goods as that of the plaintiff, by adopting a similar shape and design, and using
the pictures created by the plaintiff, as also hosting the pictures on a website
which was similar to that of the plaintiff.
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13. On 07th October, 2021, these aspects were considered by the Court, and
upon its prima facie satisfaction, an ex parte ad interim injunction was granted
in favor of the plaintiff in the following terms:
"24. Accordingly, till further orders, the defendant
by itself or through all others acting for and on its
behalf are restrained from manufacturing, offering
for sale, selling, marketing, advertising,
distributing, printing, supplying and dealing
directly or indirectly dealing in, in any manner or
imitating the trade dress, get up, lay out, colour
scheme, pattern, shape, configuration and
arrangement of features of plaintiffs products in an
identical or deceptively and confusingly similar
manner or in any other manner."
14. Local Commissioners were also appointed to visit two premises of the
defendant. As per the Local Commissioner's Report, the infringing articles
were seized and handed over to the defendant on superdari on 16th October,
2021. A large number of products (being 48 in number) were seized.
15. While the injunction was subsisting, the defendant entered appearance
and preferred I.A. No. 16893/2021 under Order XXXIX Rule 4 of CPC for
vacation of injunction.
16. Parties had been referred to mediation by order dated 12th July, 2022,
however, the mediation was reported as failed by mediation report dated 04th
February, 2023.
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Submissions on behalf of the defendant
17. Defendant's counsel argued that the defendant has its own trademark
"DECORITE", while the plaintiff's goods were being sold under the brand
name "MARC". He stated that these were common furniture items which are
sold across the world and there was no uniqueness in the said designs. Besides
there was no registration in their design, which the plaintiff was claiming, and
the suit was merely for passing off. The plaintiff could not claim any goodwill
or reputation in these designs. The counsel for defendant referred to the written
statement, in particular at para 39, which extracted out various kinds of
furniture available across the globe in the special category and how they were
similar. A part of the said tabulation is reproduced as under:
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Signing Date:01.06.2024
14:26:08
18. Various brochures were also referred to, including that of Beimeng
Furniture to show that these were common furniture items, and there was
nothing unusual and unique about the salon furniture sold by the plaintiff.
19. Counsel for the defendant further referred to an interview of Mr. Durgesh
Sharma, Director of the plaintiff company, in a journal "StyleSpeak" (The salon
& spa journal). One of the questions put to Mr. Sharma was "how was the
market for salon furniture?" and "what about imported furniture?". To this,
Mr. Sharma replied that there were two main markets: Chinese and European,
and although Chinese products were affordable, the product quality was very
poor and additional servicing could not be provided. On the other hand,
European products were similar to Indian products but the prices were way too
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high and they are unable to provide services. He stated that entrepreneurs were
expanding salon businesses, so it is not feasible for them to purchase products
at such high prices. Defendant's counsel, relying on this interview, submitted
that clearly the plaintiff was importing their products from elsewhere and there
was no uniqueness in the design developed by them.
20. However, the plaintiff's counsel, at this juncture, adverted to the
subsequent statement by Mr. Sharma, which is as follows: "A new trend of
customization of furniture as per the salon interior has been introduced in the
market. The disadvantage of imported furniture would be that it cannot be
customized as per the buyer's needs". Referring to this, plaintiff's counsel
stated that Mr. Sharma himself states very clearly that imported furniture was
not feasible and practical, while customized Indian products were being
preferred.
21. By referring to the comparative chart, produced by the plaintiff, between
the plaintiff's product and that of the defendant, counsel for the defendant
stated that the colour of the furniture was dependent on what the interior
designer/architect of the salon wanted for the client and, therefore, the change
in color was not to somehow seek to distinguish itself from the plaintiff. These
were independently procured designs which were customized as per the clients'
requirements.
22. Further, a statement was made that they were not using the website
www.beautysalonfurniture.in, and were using www.gmsales.com instead.
However, subsequently, an application was moved by the plaintiff to place on
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record documents to show that the website www.beautysalonfurniture.in was
still active, to which counsel for the defendant stated, on fresh instructions, that
it was (this is recorded in the order of 14th May, 2024).
23. Defendant's counsel further stated that they were buying furniture from
third-party manufacturers who were taking inspiration from global products,
and, therefore, the plaintiff could not be granted any relief, and the injunction
ought to be vacated. It was also stated that the plaintiff had entered into a
consent decree with 'Luxe Salon' and 'Sakhi Enterprises' and, therefore, were
estopped from claiming any passing off by the defendant.
Submissions on behalf of the plaintiff
24. Besides asserting the averments made in the plaint, plaintiff's counsel
highlighted that defendant had been associated with them as an informal
distributor, and adverted to documents filed along with the plaint to substantiate
the same. An email dated 26th November, 2016 was addressed from Mr. Rajeev
Chaudhury (of the plaintiff) to Mr. Goutam Acharya (of the defendant),
supplying a quotation for furniture. Another email of 20th January, 2017 was
shown, as well as various invoices showing supply of Marc Salon equipment
to Raghunandan Furcos Pvt. Limited at Jaipur, with whom the defendant used
to work. These invoices are attached to emails addressed to Mr. Goutam
Acharya, which are appended.
25. Plaintiff's counsel asserted that they are manufacturers and had
themselves designed and developed unique salon furniture. The pictures of the
products had been created by engaging professional agencies and had been
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placed on the website and in their catalogues. The dishonest adoption by the
defendant was obvious from the fact that they had created a similar domain
name i.e. www.beautysalonfurniture.in, taken the plaintiff's pictures, changed
only the color scheme, and were effectively making a representation that they
were selling 'Marc Salon' products.
26. As regards the issue of design, plaintiff's counsel stated that they were
duly advertising their brand and design. Plaintiff's counsel adverted to some
samples of the StyleSpeak magazine, which is an industry specific magazine,
showing full-page advertisements which had pictures of their products. Sample
of the same is reproduced as under:
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27. Plaintiff's counsel stated that if these designs were common, there was
no reason for them to advertise these designs, they could have easily just
advertised their tradename. In this regard, certain other advertisements were
referred to, which are as under:
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Signing Date:01.06.2024
14:26:08
28. As regards the consent decree with a third party, he stated that it proves
that they were enforcing their rights diligently. There was an interim injunction
against Sakhi Enterprises by Rohini District Court, where both Looks Salon
and Sakhi Enterprises gave an undertaking that they will not use the plaintiff's
furniture. Plaintiff's counsel highlighted that the chart produced at para 35 of
their plaint had not been denied by the defendant.
29. Reliance was placed on the decision in Gorbatschow Wodka KG vs.
John Distilleries Limited, 2011 (47) PTC 100, where a Single Judge of the
Bombay High Court, highlighting the importance of shape of the products sold
by an entity, observed that the test would be whether the shape had been
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adopted by the plaintiff capriciously, to give it an appearance of goods of the
manufacturer. Reliance was also placed on the decision of the Bombay High
Court in M/s Kemp and Company & Ors. v. Prima Plastics Ltd., 2000 PTC
96, on the point that no one is prevented from copying and selling an article in
the market provided he does not make a false representation suggesting that the
article is of the plaintiff. Further, reliance was placed on the decision of a Single
Judge of the Delhi High Court in Eicher Goodearth Private Limited v. Krishna
Mehta & Ors. of the High Court of Delhi, 2015 (63) PTC 444, on copying of
the design used by the plaintiff who was prior user of the same; as also on
KRBL Ltd. v. PK Overseas Pvt. Ltd. of the High Court of Delhi, 2014 (58)
PTC 521, where it was held that it's a settled legal position that for the purposes
of copyright infringement, exact reproduction or copy is not necessary, but
whether it is a substantial copy.
Submissions in rejoinder by the defendant
30. Counsel for the defendant argued that, as an informal distributor,
defendant was associated with all players when he was in the market, and
plaintiff had not been able to show that they had copied their salon furniture
design from them. Further, there is no document to show that all of the 45
designs tabulated by the plaintiff were being used since 2014, and the
advertisements appended were only of a few pictures. Regards the decision in
Gorbatschow Wodka KG (supra), defendant's counsel submitted that in the
said decision it had been held that the concerned design was distinctive in
nature, whereas there is no distinctiveness in the design of the plaintiff. He
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stated that the grant of injunction would cause havoc in the market since
products of this nature are usually quite similar.
Analysis
31. Having perused the documents on record and post appreciation of the
submissions of the counsel for the parties, this Court is of the opinion that the
plaintiff is entitled to the injunction as sought and the defendant's plea for
vacation of the said injunction is not sustainable, inter alia, for the following
reasons:
31.1 Section 2(zb) of the Trade Marks Act includes shape of goods as part of
"trademark", capable of being represented graphically and capable of
distinguishing goods of one person from that of the other. Shape is also
included as part of the definition of "mark" in Section 2(m) of the Act. Both
these provisions are extracted as under for ready reference:
"Section 2(m): "mark" includes a device, brand,
heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or
combination of colors or any combination thereof;
Section 2(zb): "trade mark" means a mark
capable of being represented graphically and
which is capable of distinguishing the goods or
services of one person from those of others and
may include shape of goods, their packaging and
combination of colors; and--
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in
relation to goods or services for the purpose of
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indicating or so as to indicate a connection in the
course of trade between the goods or services, as
the case may be, and some person having the right
as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a
mark used or proposed to be used in relation to
goods or services for the purpose of indicating or
so to indicate a connection in the course of trade
between the goods or services, as the case may be,
and some person having the right, either as
proprietor or by way of permitted user, to use the
mark whether with or without any indication of the
identity of that person, and includes a certification
trade mark or collective mark;"
31.2 Plaintiff's claim that they were specializing in customization of salon
furniture and have developed these unique designs, is prima facie acceptable.
This is on a conjoint reading of their advertisements in the industry magazines,
where plaintiff has consistently sought to advertise their products' shape and
design in a prominent manner (sample pictures have been extracted above in
paras 26 and 27). The salon furniture supplied by the plaintiff has also
received extensive recognition, as evident from the various awards that it has
received for their "Beauty Equipment", listed in para 6 above. If, as per the
defendant's submissions, it was to be believed that plaintiff was indulging in
selling mere copies of international products, or was otherwise merely trading
an international product, there is no reason why industrial awards are conferred
on plaintiff as recognition for their equipment.
31.3 Moreover, the interview of Mr. Durgesh Sharma, to which defendant
adverted, in fact seems to suggest that the company did not believe in Chinese
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and European imports, but instead was customizing and creating furniture
indigenously for domestic consumption. At best, it could be assumed, if one
were to accept defendant's submissions, that inspiration for designing salon
furniture by the plaintiff was taken from international brands. That is a matter
of evidence and trial and at this prima facie stage, some scattered pieces of
pictures, which the defendant has produced to show that some of the plaintiff's
products seem similar to those sold abroad, cannot be determinative.
31.4 This allegation by the defendant also has to be weighed in context of
other surrounding circumstances, inter alia, the extensive reputation which the
plaintiff claims, evident from their extensive promotions in industry
magazines; profile of their company and various industry awards; absence of
any other article or comment by any member of the industry or public that
plaintiffs' furniture were indeed slavish copies of those manufacturers abroad.
There is also no proceeding initiated by any design/mark owner of salon
furniture alleging that the plaintiff's designs were indeed copied. In this
context, it would be difficult to accept the defendant's submissions, of lack of
uniqueness of plaintiff's salon furniture.
31.5 Once it is prima facie accepted that the plaintiff's designs were indeed
unique, they would be entitled to protection under the Trade Marks Act. In any
event, the common law right that the plaintiff has against entities passing off
their goods, as that of the plaintiff, would always remain. From the tabulations
given in para 11 above, it is quite evident, at least prima facie, that the
defendant substantially copied these designs being developed/sold by the
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plaintiff, and had only sought to present them on their own website by changing
its color or its name. For example, the Brilliant Chair of the plaintiff in a dark-
brown colour presented on their website and brochure, is exactly the same as
the chair sold by the defendant, though named Stella Prime Salon Chair in a
lighter-brown colour. The same is with Glitz Chair of the plaintiff in a darker-
red colour, which the defendant shows as Milano Prime Beauty Parlor Salon
Chair, in a more vibrant red colour. Some of the pictures do not even have a
different colour combination but seem like a slavish copy of what has been
shown by the plaintiff on their website. There is no evidence placed on record
by the defendant that they entered the industry prior to the plaintiff, and were
in fact a prior user of such salon furniture.
31.6 The adoption by the defendant of a deceptively similar domain name
being www.beautysalonfurniture.in to that of the plaintiff's domain
www.salonfurniture.in, prima facie shows dishonest intent to come closer to
the plaintiff as much as possible and to cause confusion and association in the
market. Despite the averment made by defendant's counsel during their
submissions that they had stopped using the said website, it transpired that the
site was still active and was recorded in the order dated 14th May, 2024.
31.7 Prior association of the defendant as an informal distributor of the
plaintiff also prima facie shows that the defendant was aware and fully in
knowledge of the plaintiff's products, having traded in them independently or
through other entities like Raghunandan Furcos Pvt. Limited. The
commencement of defendant's own website subsequently points out to a strong
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likelihood of the defendant having taken advantage of their market knowledge
of the plaintiff's products and used them, slavishly as that of their own.
32. Defendant's submission that they had many designs on their website and
only 45 had been shown by the plaintiff cannot come to their rescue. 45 designs
which are being sold, promoted and represented in exactly the same manner as
that of the plaintiff, are enough prima facie evidence of passing off the
defendant's products as that of the plaintiff.
33. This Court's opinion is also informed by the decisions relied upon by
the plaintiff, in particular, the decision in Gorbatschow Wodka KG (supra); the
relevant paragraph thereof is produced hereunder:
"22. The test is whether the shape that has been
adopted by the plaintiff is one that is adopted
capriciously, purely to give the article a distinctive
appearance or characteristic of the goods of the
manufacturer. If that be so, the manufacturer may
be able to establish that he has a reputation and
goodwill in the distinctive appearance of the
article itself which would furnish a cause of action
in passing off. In a judgment of the Division Bench
of this Court in Aktiebolage Volvo v. Volvo Steels
Limited, 1998 PTC (18) (DB) the Division Bench
has laid a considerable amount of emphasis on the
reason for the adoption of the mark. If the
defendant has no plausible explanation, then that
is certainly a circumstance which must weigh in the
balance. In R.R. Oomerbhoy Pvt. Ltd. v. Court
Receiver, 2003 (5) Mh.LJ. 372 : 2003 (27) PTC
580 (DB) (Bom) a Division Bench of this Court
adverted to the fact that the shape of the container
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and of the plastic bottle in which the defendant had
sold its product, had a striking resemblance to
those of the plaintiff. In a judgment of the Delhi
High Court in Colgate Palmolive Company v.
Anchor Health and Beauty Care Pvt. Ltd., 2005 (1)
Mh.LJ. 613 : 2003 (27) PTC 478 a Learned Single
Judge observed that "trade dress is the soul for
identification" of goods to their source or origin
and a customer forms an overall impression of the
source of origin of the goods from a visual
impression of the colour combination as well as
from the shape of the container and packaging. A
conscious imitation of the colour combination, get
up or layout of the container would lead to the
design of the defendant to cause confusion in the
mind of the customer."
(emphasis added)
Conclusion
34. Accordingly, the application under Order XXXIX Rule 4 of the Code of
Civil Procedure, 1908, being I.A. No. 16893/2021, is dismissed and the order
dated 7th October, 2021 granting an injunction in favor of the plaintiff in the
application under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure,
1908, being I.A. 13157/2021, is confirmed.
35. I.A. No. 16893/2021 and I.A. 13157/2021 are, accordingly, disposed of
in the above terms.
CS(COMM) 493/2021
1. List before the Joint Registrar (Judicial) on 25th July, 2024.
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2. Judgment be uploaded on the website of this Court.
(ANISH DAYAL)
JUDGE
MAY 30, 2024/MK
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