PROCTER AND GAMBLE COMPANY Vs. JOY CREATORS

JUDGEMENT

(1.) This is a suit for permanent injunction, rendition of accounts, damages and delivery up of the infringing material. The plaintiff is a fortune 500 company, having business operations in 80 countries, dealing in a large number of products and employing 1,38,000/- persons.

(2.) It is alleged that in or about April, 2008, the plaintiff Company came across an advertisement of application No. 1224385 for registration of the label, which contains the mark Joy Ultra Look Total Effects in respect of Soap, Perfumery Essential Oils, Hair Lotions and Creams, Dentifrices etc., claiming use of the aforesaid mark/label since April, 2001. The plaintiff filed a notice of opposition to the registration sought by the Defendants and the opposition proceedings are stated to be pending. It is further alleged that on carrying investigation, the plaintiff came to know that the Defendants are conducting business throughout the country including Delhi using the above referred trademarks and Defendant Nos. 1 and 2 have also licensed the aforesaid mark to Defendant No. 3, which is manufacturing and marketing products bearing the offending label. It is further alleged that the words Total Effects are being used by the Defendants only in respect of anti-aging/age defying products and the adoption of the mark Total Effects in respect of identical products cannot be a mere co-incidence and indicates a dishonest and fraudulent intention on their part to derive pecuniary benefits from using the impugned mark/label. The plaintiff, thus, claims infringement of its registered and well known trademark Olay Total Effects. The plaintiff has sought injunction restraining the Defendants from using the trademark Total Effects or any other mark deceptively similar to the trademark of the plaintiff. It has further sought an injunction restraining the Defendants from passing off the plaintiff's trademarks Olay Total Effects/Total Effects and from applying and obtaining registration in respect of the impugned trademark or any deceptive variation thereof. The plaintiff has also sought damages amounting to Rs. 50 lakhs besides seeking rendition of accounts and delivery up of the infringing packaging material etc.

(3.) The Defendants filed the written statement contesting the suit. They took a preliminary objection that this Court has no territorial jurisdiction to try the suit since Defendant No. 1 does not carry any activity nor does it sell any product in Delhi. On merits, it has been admitted that the Defendants are engaged in the business of manufacturing, marketing and selling cosmetic products including soap, perfumery, essential oils, hair lotions and creams, dentifrices etc. The Defendants claim to be leading manufacturers and traders in respect of various cosmetic products, carrying business since 1988-89 and extensively selling various products under the trademark Joy. It is alleged that the Defendants adopted the label Joy Ultra Look Total Effects with the words Ultra Look being given prominence on the label and the word Joy being written above the word Ultra Look. It is also pointed out that the words Total Effects written below the words Ultra Look are much smaller in font size. The present label is alleged to have been adopted by the Defendants in the year 2001. The Defendants claim to have incurred advertisement expenditure of Rs. 69,76,797/-, Rs. 46,53,621/- and Rs,64,46,355/- in the years 2005-2006, 2006-2007 and 2007-2008 respectively. They also claim to have incurred Rs. 2.5 crores towards advertisement and publicity expenses between 1st April, 2008 and 28th February, 2009. It is also alleged that the Defendants had sale of Rs. 12,26,57,801/- in the year 2006-07, Rs. 19,41,41,916/- in the year 2007-08 and Rs. 31,66,82,164.55 between 1st April, 2008 and 28th February, 2009. It is further alleged that on receipt of notice from the plaintiff, the Defendants, without prejudice to their rights and contentions, agreed to delete the words Total Effects on the plaintiff withdrawing the suit and not claiming any damages or costs. The plaintiff, however, refused to withdraw the suit. It is also claimed that the Defendant Nos. 3 and 4 have no connection with Defendant Nos. 1 and 2 and have been wrongly joined as parties to this suit only with a view to raise jurisdiction of this Court. It is further alleged that the Defendant Nos. 1 and 2 are the prior user of the words Total Effects and, therefore, have a superior right of use of the trademark Total Effects.