While granting a decree of permanent injunction to Laboratoire Garnier (plaintiff), the Saket Bench of the Delhi District Court has held that where the plaintiff establishes registration of its trademark and the defendant is found using an identical mark on identical goods, the Court may presume likelihood of confusion under Section 29 of the Trade Marks Act, 1999, and such use constitutes infringement. Where the defendant also adopts identical typography, trade dress and counterfeit goods to ride upon the plaintiff’s reputation, the same equally amounts to passing off.
In cases of blatant counterfeiting supported by seizure of infringing goods and an unchallenged Local Commissioner’s report, the plaintiff is entitled to permanent injunction and delivery up of seized counterfeit products for destruction, added the Court.
The District Judge Arul Varma observed that Section 134 of the Trade Marks Act expands the ordinary rule under Section 20 CPC and permits institution of the suit where the plaintiff actually and voluntarily resides or carries on business. Since the invoice relied upon by the plaintiff showed business activity in South Delhi through its authorised distributor, the Court held that the Saket Court had territorial jurisdiction to entertain the suit.
On proprietary rights, the Court observed that the plaintiff had established registration of the trademark GARNIeR through the documents produced by the prosecution witness. The Court further observed that registration conferred upon the plaintiff the exclusive right to use the trademark in relation to the goods for which it was registered and to seek statutory relief against infringement.
On infringement and passing off, the Court observed that there was irrefutable evidence that counterfeit products bearing the plaintiff’s mark were recovered from the defendants. The photographs annexed with the Local Commissioner’s report showed use of an almost identical mark GARNIeR on identical goods such as eye liner, mascara, shampoo and creams. The Court also noted that the defendants had copied the typography and trade dress of the plaintiff’s products, particularly the distinct use of the small letter “e”, and that such similarity left no opportunity for consumers to distinguish the goods.
The Court found mala fide intent on the part of the defendants to exploit the established reputation and market presence of the plaintiff’s products. It treated the conduct as blatant counterfeiting and held that the plaintiff had proved infringement and passing off. However, the relief of rendition of accounts was declined because the plaintiff did not press that issue at the stage of final arguments.
Briefly, the plaintiff, M/s Laboratoire Garnier & CIE, a French proprietorship firm, instituted a trademark infringement and passing off suit against various defendants alleging that they were selling counterfeit products bearing the plaintiff’s registered trademark GARNIeR and plagiarising the artistic features of its labels. The plaintiff pleaded that its marks were duly registered in India under the Trade Marks Act, 1999, had acquired substantial goodwill and reputation, and that it had obtained an ad interim injunction on June 03, 2010.
Pursuant to the injunction order, Local Commissioners were appointed on June 03, 2010 to inspect the defendants’ premises, and upon inspection, counterfeit goods were seized from Defendant No. 1. During the proceedings, Defendant Nos. 5 and 6 settled with the plaintiff, the suit against Defendant No. 3 was withdrawn, and Defendant Nos. 1, 2 and 4 were proceeded ex parte. The defendants, through written statement, primarily challenged the maintainability of the suit on the ground of lack of territorial jurisdiction and denied the allegations of infringement and passing off.
