LÏ¿½OREAL Vs. DUSHYANT SHAH

JUDGEMENT

(1.) THIS is a suit for injunction, rendition of accounts and delivery up of the infringing material. The plaintiff is a Company incorporated in France and is engaged in the business of manufacturing, 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, hair dyes and tints, shampoos etc. The word/mark LOREAL was adopted by the plaintiff Company in the first decade of 1900 and is being used since about 1910-1915, in relation to its goods and businesses. The plaintiff is selling its goods under the trademark LOREAL in about 130 countries throughout the world. The trademark LOREAL is also registered in India in Class 3, in relation to perfumery/soaps, non-medicated toilet preparations shampoos hair dyes etc. This is also the case of the plaintiff that its trademark LOREAL enjoys an enviable goodwill and reputation in the market and has become associated/identified with the goods and business of the plaintiff company. The products of the plaintiff company are available in or above 300 towns and cities in India. The plaintiff has manufacturing plant in Chakan, near Pune in Maharashtra and employs for 400 persons. The plaintiff claims to be spending huge amount on advertisement and promotion of its product sold under the name LOREAL. This is also the claim of the plaintiff that members of the trade and industry as well as the consumers and general public at large throughout world, including India, being well aware of the trademark of the plaintiff, it is also a well known trademark within the meaning of Section 2(1)(zg) of the Trademarks Act.

(2.) THE defendant filed an application for registration of the trademark INSTITUTE TORREAL in Class 3 in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, deodorants etc. which was published in trademark journal on 21st September, 2002. It is alleged that the trademark published in the trademark journal is deceptively similar to the trademark LOREAL of the plaintiff, phonetically, visually as well as structurally and use of the aforesaid mark would link the goods of the defendant with that of the plaintiff company and give a wrong impression to the customers with respect to the source and origin of the goods. It is also alleged that in February, 2007 plaintiff came to know that the defendant was in the process of commercial launching of its goods under the impugned trademark and was soliciting inquires for dealership/distributorship in Delhi. The plaintiff has sought injunction restraining the defendants from using the impugned trademark INSTITUTE TORREAL or any other mark which is identical and/or deceptively similar to plaintiffs trademark LOREAL. The plaintiff has also sought delivery up of all material with impugned trademark and damages amounting to Rs.20,01,000.00. The defendant was proceeded ex parte vide order dated 7th October, 2009.

(3.) SINCE the defendant is a resident of Ahmedabad and is carrying business there, the first question which comes up for consideration is as to whether this Court has territorial jurisdiction to try the present suit. This is a suit for infringement of the registered trademarks of the plaintiff. Section 134(2) of Trademarks Act, 1999, to the extent it is relevant provides that notwithstanding the provisions contained in the Code of Civil Procedure, the Court within the local limits of whose jurisdiction the person instituting the suit resides or carries on business or personally works for gain, at the time of the institution of the suit, would have jurisdiction to try a suit for infringement of a registered trademark. It is alleged in para 29 of the plaint that the plaintiff is carrying on its business under the trademark LOREAL in Delhi where its goods are sold and are available. In her additional affidavit Ms. Surbhi Bansal, constituted attorney of the plaintiff has stated that at the time of filing of the suit, the plaintiff-company had a subordinate office and a technical centre within the jurisdiction of this Court at 313, 3rd Floor, Saket District Centre, New Delhi and at present, the office of the plaintiff-company is situated at C-33, First Floor, opposite PVR Plaza, Connaught Place, New Delhi. Along with an affidavit, she has filed a copy of the lease deed dated 10th October, 2006, executed by Kavita Laroia, owner of shop/commercial space No. 313, admeasuring 1245.80 square feet, situated on the third floor or Rectangle One, Saket District Centre, New Delhi in favour of LOREAL India Private Limited which is stated to be the wholly owned subsidiary of the plaintiff in India. A perusal of this document would show that the above-referred premises in Saket, District Centre, Delhi was let out to the plaintiff-company for commercial purposes w.e.f. 10th October, 2006. Thus, the plaintiff-company did have an office in Delhi when this suit was filed. In para 31 of her affidavit, Ms. Akansha Bansal, constituted attorney of the plaintiff company has stated that one of the offices of Clearing and Forwarding Agencies of the plaintiff company namely Navbharat Enterprises is situated at Khasra No.70, Village Saidullajab, Near Gyan Jyoti Vidya Niketan, SAidullajab, New Delhi, and as many as five dealers/agencies of the plaintiff company namely Anand Enterprises, Kwality Enterprises, Kapoor Agency, Pankaj Store and GROP Enterprises have their offices in Delhi. She has further stated that plaintiff is carrying on business in Delhi, using the trademark/label LOREAL and the goods are sold through various special agents. It would thus be seen that the plaintiff company had an office in Delhi when the suit was instituted and continues to have an office in Delhi, though it shifted to a new premises, it has special agents in Delhi and is selling goods under the brand name LOREAL, in Delhi, through its special agents. The plaintiff has also placed on record the invoice which would show that LOREAL India Pvt. Ltd., which is the fully owned Indian Subsidy by the plaintiff company has been issuing invoice to dealers from its Delhi office.