Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr. MANU/DE/0797/2009

 

Introduction

This is a case that involves allowing application for infringement of trademark by the proprietor of a registered trademark owner against proprietor of another registered trademark owner on the basis of similarity of two registered marks which thereby leads to passing off of their goods as goods of someone else under Indian Trade Marks Act, 1999 (hereinafter ‘the Act’).

Facts

The facts of this case can be summed up as follows:

• Plaintiff was a foreign company having registered the trademark CLINIQUE since 13^th July 1981 with respect to class 3 products manufactured and marketed by it in several trade names including CLINQUE WATER THERAPY, CLINUQUE MOISTURES SURGE and CLINIQUE SKIN SUPPLIES FOR MEN etc.

 

• Plaintiff also held registered trademarks in following names – CLINIQUE & C DEVICE, CLINIQUE IN TOUCH, CLINIQUE HAPPY, CLINIQUE EXCEPTIONALLY SOOTHING CREAM FOR UPS, CLINIQUE ANTI GRAVITY and CLINIQUE GENTLE LIGHT.

 

• The defendants were an Indian company having registered trademarks including the word CLINIQ. They held various registered trademarks including this word for the manufacture and marketing of their herbal products.

 

• There was a conflict between the parties relating to the two registered trade names.

 

• Prior to the filing of this suit the plaintiff had already filed an application before the Registrar of Trademarks in India for cancellation of registration of defendant’s trademark.

 

• 124 (1) (ii) of the Act states that the suit shall be stayed till the final disposal of application made before the Registrar and S. 124 (5) the court still has the power to pass interlocutory order which would include grant of interim injunction, keeping of account, appointment of receiver or attachment of any property.

 

• Therefore this fact was not disputed if the suit could be admitted in the court or not and that interim injunction could still be passed by the court to restrain the defendants from using their registered mark till the final disposal of application before the Registrar.

 

• The plaintiff made a contention that their goods were superior and more expensive than the goods of defendants and therefore the defendants were making an attempt for passing off their goods as the goods of the plaintiff thereby causing evident loss to the plaintiff.

 

Issues raised

There were following issues raised before the court in deciding the suit:

• Whether suit for the infringement of registered trademark can be filed against another registered trademark.

 

• Whether the court has the power to entertain infringement application during the pendency of application for striking down registration of the disputed trademark is still pending before the registrar.

 

• This issue is based on the presumption of validity of registered trademark that till the trademark is not struck down by the registrar it will be deemed that the registration of trademark is valid and that registration must have been granted on sufficient grounds.

 

• Whether the court can pass interim injunction to restrain the use of registered trade mark.

 

• Whether there was deceptive similarity in the marks CLINIQUE and SKINCLINIQ. The defendants pleaded that the term CLINIQ was derived from the word CLINIC and that it was not similar to the plaintiff’s mark.

 

• Whether the defendants were liable for passing off their goods as goods of plaintiff. This issue was based on the similarity and deceptive indica of the defendants registered mark.

 

• Also that since there was vast difference in the nature of goods of both parties as the goods of plaintiff were cosmetics, creams etc. whereas the goods of the respondents were herbal products and therefore were different from that of goods of the plaintiff.

 

• There was also vast difference in prices of the goods of both parties and so the defendants cannot be said to have passed off their goods as goods of the plaintiff.

 

Judgement and decision

The court gave following judgement after hearing pleading of both the parties:

• The court observed that Ss. 28(3), 29 & 30(2) (e) could not be read in isolation of each other and there is a need for harmonious construction to be made while the reading of these sections.

 

• The legislature cannot be said to have intended that there cannot be an infringement application made against a registered proprietor.

 

• Hence, application for infringement of registered trademark can be made against another similar or identical registered mark.

 

• The court needs to stay proceeding in the infringement suit during the pendency of rectification application before the Registrar.

 

• However, during the stay the court can pass interim injunction to restrain the proprietor of other registered trademark from using its registered mark till the final disposal of rectification application pending before the registrar.

 

• Provided that the interim injunction restraining use of registered mark should be based on belief that such registration was prima facie invalid.

 

• The court was however not very convinced with the contentions of plaintiff relating to deceptive similarities between the two marks.

 

• However it was stated that deceptive similarity and passing off shall be considered in light of present situation of Indian markets and in light of that the two marks were considered to be similar.

 

• Since there was no evidence produced before the court that while considering the registration of defendant’s mark the registrar sufficiently considered the similarity between the two marks therefore the interim injunction shall be granted during the pendency of rectification application before the registrar.

 

• Hence the court allowed the interim injunction and allowed parties to resume the case once the application before registrar is finally decided. During this period the defendant were restrained from using their registered mark.