Manmohan Singh, J
1. The petition on behalf of M/s. L'Oreal 14, rue Royale, 75008, Paris, France, for the removal of Trade Mark L'ORNELL registered under No.
1490792 in class 03 in the name of Sarvodaya Overseas Pvt. Ltd. for removal/rectification from the register under Section 47/57/125 of the Trade
Marks Act, 1999 has been filed.
2. As per record, the applicant is engaged in the business of manufacture, distribution and sale of a wide range of hair care, skin care, toilettes and
beauty products including perfumery preparations, essential oils, cosmetics, preparations for colouring and bleaching the hair, hair dyes and tints
preparations for waving and setting the hair shampoos, hair sprays non-medicated preparations for the care and the beauty of the hair, non-medicated
preparations for the care and the beauty of the skin, toilet soaps, dentifrices, sun-tan preparations, personal deodorants and other allied/related
products (hereinafter referred to as "" the said goods"" and ""the said business"").
3. It is the case of the applicant that since about 1910-1915, the applicant has been using the word/mark L'OREAL word per se, stylized
formative/bearing and labels as a trade mark as also as an essential part of its trade name in relation to its said goods and business.
3.1 In addition to its word per se user, the applicant over a period of time has been using its said trade mark in various stylized artistic formats and
labels and which have been created and are being created over a period of time. The word/mark L'OREAL remains a key and material part thereof.
For the sake of convenience the term said trademark includes the said stylized, bearing/formative labels and usages. The mark is invented mark and is
an extremely strong mark.
3.2 Since about the year 1910-1915 the applicant has been continuously using its said trade mark in relations to its said goods and business and
carrying on its said goods and business thereunder and has built up a worldwide and globally valuable trade, goodwill and reputation thereunder and
acquired proprietary rights therein.
3.3 The applicant's said goods under its said trade mark/trade name are branded and sold in about 130 countries of the world and across all continents
and regions including in India wherein in addition the applicant also enjoys its trans-border reputations and users. The applicant's said goods are sold
and traded by the applicant directly or through a wide network of its subsidiary licenses and through a wide marketing network including through retail
as also through internet and e-commerce.
4. The applicant's trade mark L'OREAL word mark is registered in India under the Trade Mark Act, 1999 (the Act) as per the following particulars-
5. It is stated that the applicant has applied for registration of the said trade mark L'OREAL in over 100 countries of the world. The applicant has
already built up a globally valuable trade under its said trade mark/trade name and conducted handsome business there under running into Millions of
Dollars worldwide.
6. The applicant has regularly and continuously been promoting its said distinctive trade mark/trade name and the goods and business thereunder
through extensive advertisement, publicities, promotions and marketing & marketing research. The Applicant has been spending amounts of moneys.
7. The purchasing public, the trade and industry at large worldwide and in India identify and distinguish the Applicant's said goods under the said trade
mark with the Applicant and from the Applicant's source and origin alone.
8. It is evident from evidence that the applicant's said trade mark/trade names as well as the goods ad business thereunder have a very strong
presence in India. The applicant's said goods under the said trade mark/trade name are freely and commercially available in India in every part.
8.1 In addition the applicant enjoys trans-border reputation and users of its said trade mark/trade name in relation to its said goods and business as
extending into India. The applicant has been protecting and enforcing its Trade Mark against pirate use/applications in India. The applicants' products
as well as information thereon are available to Indian and Indian trade and industry in India and overseas.
8.2 The applicant has been carrying on and promoting its said goods and business electronically and through E-commerce and over the internet which
is accessible in India.
8.3 The applicant invests heavily in R & D and its products are known for their highest standards of quality, safely innovations and reliability and there
is an ever increasing demand therefore.
8.4 The members of the trade, industry, the consumers and general public at large world over and in India are well aware of the applicant, the
applicant's said trade mark/trade name and the applicant's said goods and business thereunder.
9. It is alleged by the applicant's said goods and business under the said trade mark/trade name are duly manufactured in India in its State of the art
manufacturing plant in strict compliance with L'Oreal worldwide quality standards, located at Chakan, Pune, Maharashtra. The applicant employs over
400 people across India in its direct facilities. The applicant is massively advertising and promoting its said goods under the said trade mark/trade name
in India. Due to excellent quality of applicant's said goods and due to massive advertising the applicant has acquired reputation and goodwill in India.
10. From the material placed before us, it is clear to us that the applicant said trade mark/trade name are well known Trade Marks within the meaning
of Section 2(1)(zg) of the Act.
11. The Respondent No. 1, M/s. Sarvodaya Overseas Pvt. Ltd. is engaged in manufacturing and trading of cosmetics, toiletries hair care products and
other allied/related goods.
12. The Respondent No. 1 has adopted and started using the trade mark L'ORNELL in relation to his impugned goods.
13. Law relating to comparing the marks is already settled:-
14. Now, the issue before us is as to whether the two trademarks--PRAJAPATI and SHIVAM PRAJAPATI with the device of house are
deceptively similar or not. The mark PRAJAPATI is used by the Respondent No. 1 No. 1 in prominent manner, no doubt, it is a label mark. The
device of house and a word SHIVAM are mentioned in the prefix and suffix portion. The law propounded by the apex court in this regard is quite
settled in the case of K.R. Chinna Krishna Chetiar v. Sri Ambal and Co. & another. The Judgment reported in AIR 1970 SC 146 : 1970 (1) : 1950-
2000 (22) PTC(Suppl) (1) 256 (SC)'. The facts of this case are read as under:-
a) The Respondent No. 1's as also the appellant are manufacturers and dealers in snuff carrying on business at Madras and having business, activities
inside and outside the State of Madras. On March 10, 1958 the appellant filed application No. 183961 for registration of a trade mark in class 34 in
respect of ""small manufactured in Madras"", the Respondent No. 1 filed a notice of opposition. The main ground of opposition was that the proposed
mark was deceptively similar to their registered trademarks. The Respondent No. 1's were the proprietors of the registered trademarks Nos. 126808
and 146291. Trade Marks No. 126808 consists of a label containing a device of a goddess Sri Ambal seated on a globe floating on water enclosed in a
circular frame with the legend ""Sri Ambal Primala Snuf' at the top of the label, and the name and address ""Sri Ambal and Co., Madras"" at the bottom.
Trade Mark No. 146291 consists of the expression ""Sri Ambal"". The mark of which the appellant seeks registration consists of a label containing three
panels. The first and third panels contain in Tamil, Devanagari, Telugu and Kannada the equivalents of the words ""Sri Andal Madras Snuff"". The
central penal contains the picture of goddess Sri Andal and the legend ""Sri Andal.
b) The Registrar held, the sound of ""Ambal"" does not so nearly resemble the sound of ""Andal"", in spite of certain letters being common to both the
marks, as to be likely to ""cause confusion or deception among a substantial number of persons.
c) The Respondent No. 1's filed an appeal in the Madras High Court, Jagadishan J., observed:
It is neither settled law that a trademark comprehends nor merely the picture, design or symbol but also it descriptive name. A copy of colourable
imitation of the name would constitute an infringement of the mark containing the name. Nobody can abstract the name or use a phonetical equivalent
of it and escape the charge of piracy of the mark pleading that the visual aspect of his mark is different from the mark of the person opposing its
registration.
He held:-
The words, Ambal and Andal, have such great phonetic similarity that they are undistinguishable having the same sound and pronunciation. In
whatever way they are uttered or spoken, slowly or quickly, perfectly or imperfectly, meticulously or carelessly and whoever utters them, a foreigner
or a native of India, wherever they are uttered in the noisy market place or in a claim an scheduled area, over the phone or in person, the danger of
confusion between the two phonetically allied names is imminent and unavoidable.
Accordingly, he allowed the appeal and dismissed the appellant's application for registration of the trade mark.
d) The appellant filed a letters patent appeal. The Divisional Bench of the High Court dismissed the appeal. The learned: Registrar and the two Courts
concurrently found that the appellant failed to prove honest concurrent use as to bring his case within Section 12(3).
The appeal was filed by the appellant after obtaining special leave before the Supreme Court, where it was held
The Registrar was of the view that the appellants mark was not deceptively similar to the Respondent No. 1 s' trademarks. He has expert knowledge
of such matters and his decision should not be lightly disturbed. But both the Courts have found that he was clearly wrong and held that there is
deceptive similarity between the two marks.
The Supreme Court after discussion of law on the subject held that there is no evidence of actual confusion, but that might be due to the fact that the
appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test.
The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between
Ambal and Andal. The customers who use the Respondent No. 1's goods will have a recollection that they are known by the word Ambal. They may
also have a vague recollection of the portrait of a benign Goddess used in connection with the mark. They are not likely to remember the fine
distinctions between a Vaishnavita Goddess and a Shivaite deity.
15. The appeal was dismissed. It was also informed that the appellant filed another application No. 212575 seeking registration of labels of which the
expression ""Radha's Sri Andal Madras Snuff' forms a part. The learned Registrar has disposed of the application in favour of the appellant. However,
the appeal was later on allowed and it was held that even ""Radha's Sri Andal Madras Snuff"" wherein the similar mark was formed part of it is still
phonetic similar. The said Judgment was reported in AIR 1973 Mysore 74.
The facts in the present case are almost similar to the case of K.R. Chinna Krishna Chetiar v. Sri Amba and Co. (supra), thus, prime facie we are of
the considered view that the trade mark of the applicant as well as trade mark of the Respondent No. 1 are deceptively similar.
14. The impugned trade mark L'ORNELL adopted' and being used by the Respondent No. 1 in relation to their impugned goods and business are
identical with the deceptively similar to the applicant's said trade mark/grade name L'OREAL in each and every respect including phonetically visually
structurally, in its basic idea and in its essential features.
15. Respondent No. 1 has also copied many features involved in the applicant's trade mark thus infringing the applicant's copy rights involved in its
said trade mark. The impugned goods and business thereunder are almost same to that of the applicant's.
16. The Respondent No. 1 is not the proprietor of the impugned trade mark and thus adopted and are so using the same in relation to his impugned
goods and business etc. The Respondent No. 1 has no right to get the registration of similar mark which is well known of the applicant in relation to
similar goods.
17. It is evident that the Respondent No. 1 must be aware of the applicant's rights, goodwill, reputations of applicant's trade mark/grade name at the
time of his adoption and use of the impugned trade mark. The Respondent No. 1 has failed to explain as to how they hit upon the impugned trade
mark. Thus the Respondent No. 1 adoption and subsequent user thereof is tainted from its inception.
18. It is stated by the applicant that the applicant learnt about the Respondent No. 1 impugned trade mark L'ORNELL in the 2nd week of October,
2010 when the applicant came across the impugned goods of the Respondent No. 1 in South Delhi market. As the impugned trademark was shown as
registered on the impugned products the applicant soon caused an inquiry through on line search from the website of the Trade Mark registry through
its attorney. The said inquiry revealed that the Respondent No. 1 has obtained the registration of the impugned trademark under No. 1490792 in Class
03 and also claimed user thereof since 01.02.2006. The said inquiry also revealed that the Respondent No. 1 has started the commercial use of the
impugned trademark in the month of October; 2010 only.
19. It is also a matter of fact the applicant being aggrieved filed a Civil Suit against the Respondent No. 1 for permanent injunction restraining use of
the impugned registered trademark by the Respondent No. 1 before the District Judge South Delhi and Ms. Ina Malhotra, Additional District Judge,
South Delhi has restrained the Respondent No. 1 from using the impugned registered trademark by passing ad interim ex-carte order dated
03.11.2010. The said intensive order is still continuing against the Respondent No. 1 No. 1.
20. We agree with the counsel for the applicant, when it is alleged that the impugned application was advertised in Trade Mark Journal No. 1386
Regular, dated 16.12.2008 at page 226 however the same escaped the attention of the applicant therefore be could not file opposition proceedings
within the prescribed time. As detailed above the applicant came to know the adoption and use of the impugned mark L'ORNELL in the 2nd week of
October, 2010. Since the Respondent No. 1 is also under injunction, thus applicant is aggrieved person to file the present petition. The impugned
registration is liable to be rectified/expunged/removed from the register on the ground as stated in the accompanying statement of grounds, which may
be considered as part and parcel of this statement of case, and the same are not repeated here for the sake of brevity.
21. The impugned trade mark registration is contrary to me provisions of Section 9, 11, 12 & 18 including sub-sections thereof. The Respondent No. 1
has no right in the impugned Trade Mark in relation to impugned goods.
22. In the interest of the purity of the Register that the impugned entry is removed as the entry pertaining to the impugned trade mark registration has
been made in and exists on the register without sufficient cause and is wrongly remaining on the Register. The prayer made in the petition is allowed.
23. The entry pertaining to impugned Trade Mark L'ORNELL under No. 1490792 in Class 3 from the Register accordingly.
24. Copy of order be sent to the Respondent No. 1 No. 2 for taking necessary steps for removal.
25. No costs.
