JOLEN INC Vs. SHOBANLAL JAIN

JUDGEMENT

(1.) These appeals are preferred by the appellant against the common order passed by the learned Single Judge of this Court in O.A.Nos.553 and 554 of 2000 and Application Nos.2558 to 2560 of 2000 in C.S.No.397 of 2000 dated 14.8.2000. By the said common order, the learned Judge vacated the interim injunction already granted and dismissed O.A.Nos.553 and 554 of 2000 and allowed the two applications filed by the respondents to vacate the interim injunction in Application Nos.2559 and 2560 of 2000. Learned Judge also allowed the application No.2558 of 2000 filed to revoke the leave granted to the appellant/plaintiff. Hence, there are three appeals filed against the order in O.A.Nos.553 and 554 of 2000 and Application No.2558 of 2000.

(2.) The appellant herein filed the suit on the file of this Court in C.S.No.397 of 2000. Along with the suit, two applications in O.A.Nos.553 and 554 of 2000 were filed for the relief of interim injunction restraining the respondents from indulging in any action amounting to infringement of the appellant's copyright in the artistic work JOLEN crme bleach carton, container and JOLEN written in distinctive script and also restraining the respondents from passing off their goods as the goods of the appellant. This Court granted interim injunction by order dated 19.6.2000. Thereafter the respondents filed counter affidavit along with two applications in A.Nos.2559 and 2560 of 2000 to vacate the interim injunction. Learned Judge, by order dated 14.8.2000 dismissed the applications preferred by the appellant for injunction and consequently allowed the applications preferred by the respondents to vacate the injunction and also revoked the leave granted to the plaintiff to institute the suit.

(3.) The case of the appellant is that the appellant is carrying on the business of manufacture and selling of cosmetics including crme bleach to pale hair. It is stated that the appellant was established in the year 1955 in United States of America and it started business with the trademark, JOLEN. According to the plaint, the appellant's crme bleach sold under the trademark JOLEN is used to lighten/decolour facial hair, hair on the arms, legs and any other parts of the body that a person desires to bleach. It is stated that the appellant's JOLEN crme bleach is sold in a bluish green carton with white lettering and the trademark JOLEN is written in an unique and highly distinctive stylized script wherein the initial "j" appears in small alphabet but in the same size as the remaining letters of JOLEN. It is also stated that a white line runs atop the entire length of the letters JOLEN and the trademark JOLEN in stylized script in bluish green colour appears within a white oval on the top of the carton. It is further stated that the trademark JOLEN in stylized script in white lettering with the words 'CRME BLEACH and lightens excess dark hair' appears on the front and back of the cartons with bluish green background. It is stated that the containers inside the carton are white plastic containers of a distinctive shape with the trademark JOLEN in stylized script and the words CRME BLEACH. It is stated that the appellant's trademark JOLEN is an invented word derived from the names of its founders, JOHN and EVELYN and the letters JO were taken from JOHN and the letters LEN were taken from EVELYN and the trademark JOLEN also forms predominant part of the corporate name and trading style JOLEN Inc. It is stated that the appellant's trademark JOLEN is registered in respect of crme bleach in the united Sates of America and in several countries all over the world including Austria, Australia, Baharain, Cyprus, Fiji, France, Greece, Hong Kong, Iran, Japan, Jordan, Kuwait, Lebanon, Mexico, New Zealand, Netherlands, Panama, Portugal, Qatar, Saudi Arabia, Singapore, South Africa, Sultanate of Oman, Sweden, Turkey and United Arab Emirates (UAE). In the plaint, the appellant has also given the sales turnover in U.S. Dollars in several countries all over the world for the period from 1986-87 to 1998-99. It is stated that the appellant's crme bleach sold under the trademark JOLEN is advertised through various media including television, radio, newspapers and magazines. It is also stated that the appellant's crme bleach with the trademark JOLEN is advertised in international magazines having large circulation in India. It is stated that the appellant's crme bleach bearing the trademark JOLEN is brought into India by Indians visiting from abroad and distributed as gifts to friends and relatives and the appellant's crme bleach bearing the trademark JOLEN is freely available in several shops in India such as (a) Haris Gift Centre, Shop No.43, 44, parsn Manere, 602, Anna Salai,Chennai-6, (b) Roshan Cario, Shop No.47, Parsn Burma Centre, Parsn Manere (Basement),602, Anna Salai, Chennai-6, (c) Sunil Fancy Store, F/10, Spencer Plaza, 769, Anna Salai, Chennai-2, (d) Amma Nana, 82, Chamiers Road, Chennai-18, (e) Fairlands, 83, Chamiers Road, Chennai-18, (f) Five Stars, 53/2, Cathedral Road, Gopalapuram, Chennai-86, (g) Angels, Shop No.14 and 29, Olsons Complex, 150, Montieth Road, Chennai-8, (h) Tikamchand and Ghanaram, Shop No.29, New Hong Kong Bazaar, Thribhuvan Talkies Basements, Gandhi Nagar,Bangalore 560 009, (i) Indra Prasth Collections, Shop No.30, Mahaveer Plaza, National Market Cellar, Gandhi Nagar, Bangalore 560 009 and (j) Donald Duck United Colours, No.101/57, Opera Compound, Brigade Road, Bangalore-560 001. The case of the appellant is that by virtue of long, extensive and continuous use, its trademark enjoys great reputation and goodwill and the trademark JOLEN forms a dominant feature of the appellant's corporate name and trading style. It is also stated that the appellant's trademark JOLEN is extensively used in the middle East/Gulf countries including UAE, Kuwait, Baharain, Qatar where from substantial number of immigrant Indian population frequently are visiting India who bring with them perfumes, cosmetics including crme bleach for their personal use and as gifts for friends and relatives. It is stated that the survey conducted in a few cities in India reveals that the trademark JOLEN is a well known brand name in India. It is stated that the India is a member of Paris Convention and under Art.6-B of the Paris Convention, an internationally well reputed trademark ought to be protected in India and section 11 of the Trade Marks Act, 1999 also provides for the protection of internationally well reputed trademarks. It is stated that the distinctive script with the letter J written with an elongated top line which extends over the letters JOLEN, the entire script having an aesthetic appeal to the eye. It is stated that the appellant is the proprietor of copyright in the artistic work JOLEN in script with a distinctive bluish green carton with white letter and the said artistic work was first published in the year 1956 in U.S.A. and since then has been continuously published till date in U.S.A. and in several countries all over the world. It is stated that India and U.S.A. are members of Berne Convention and under section 40 of the Copyright Act, the works which enjoy protection in U.S.A. enjoy automatic protection in India. It is stated that the appellant applied for registration of the trademark JOLEN under No.522509 dated 9.1.1990 in class-3 in respect of hair bleach, skin cream and lotions, astringents, toilet waters, colognes, perfumes, eye make-up, face power, rouge, nail polish. It is stated that the application was advertised in Trade Marks Journal No.1109 dated 16.8.1995 and the application was opposed by the respondents and the application was ultimately dismissed by order dated 11.3.1999 by the Assistant Registrar of Trade Marks, New Delhi. It is stated that the appellant has filed an appeal against the order of the Assistant Registrar of Trade Marks and the same is pending before the Delhi High Court and it is not clear whether the said appeal has been transferred to the Intellectual Property Appellate Board. It is stated that the second respondent has registered the trademark JOLEN in clause-3 in respect of tooth paste and perfumes. It is stated that the appellant has filed a rectification petition for the removal of second respondent's registration in class-3 and the same was pending before the Registrar of Trade Marks, New Delhi. It is stated that the second respondent has applied for registration of trademark JOLEN under No.555920 dated 6.8.1991 in class-3 in respect of cosmetic goods included in class-3 and the appellant has filed an opposition to the said application and the same was pending before the Registrar of Trade Marks, New Delhi. It is stated that the first respondent has claimed that he had assigned his rights in the trademark JOLEN to Jolen International Private Limited, a company promoted by the first respondent's son Vikas Jain by a deed of assignment dated 8.90.1998. It is also stated that the first respondent has claimed that the trademark was reassigned by Jolen International Private Limited in favour of the second respondent and registered. It is stated that the respondents claimed to have a collaboration with M/s.Laboratoire Nouveau, U.S.A. but a search carried out in the Registrar of Companies in U.S.A. reveals that there is no such company. It is stated that the respondents are selling inferior quality crme bleach bearing the appellant's internationally well known trademark, JOLEN. It is stated that the appellant has received several complaints from customers in India who purchased the respondents' crme bleach assuming it to be original JOLEN crme bleach manufactured by the appellant and there have been instances of actual confusion among the customers in India by sale of crme bleach bearing identical trademark JOLEN by the respondents. It is stated that the respondents copied the appellant's artistic work JOLEN Carton in its entirety including the distinctive style in which JOLEN is written by the appellant and the respondents also copied the colour scheme, get-up and layout of the appellant's JOLEN Carton and container in their entirety. It is stated that the respondents made a slavish imitation of the appellant's JOLEN Carton and container with dishonest intention and ulterior motive and the use of the appellant's JOLEN Carton and container including the distinctive script in which the word JOLEN is written by the respondents would amount to infringement of appellant's copyright in the artistic work JOLEN Carton, Container and JOLEN written in distinctive script. It is the case of the appellant that the respondents copied the trademark JOLEN and the colour scheme, get up and layout of the appellant's JOLEN Carton and container with a view to trade upon and benefit from the international reputation and goodwill enjoyed by the appellant's trademark JOLEN and the respondents are using the trademark JOLEN for a product identical to the appellant's product sold under the trademark JOLEN. It is therefore stated that the use of identical trademark JOLEN with carton and container identical to the appellant JOLEN crme bleach container and carton would amount to passing off and enable others to pass off the respondents goods as and for the appellants goods.