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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
PRADEEP NANDRAJOG, NITIN JAMDAR, JJ.
MESO Private Limited, - Appellant
Versus
Liberty Shoes Ltd, & Ors. - Respondents
Commercial Appeal No. 362 of 2019 In Comm. Notice Of Motion (L) No. 1184 of 2019 In Comip Suit (L) No. 551 of 2019
Decided On : 08-08-2019
Trade Marks Act, 1999 – Section 29(2)(c),29 and 29(3) - Trade Mark - MESO Private Limited, the Appellant-Plaintiff, manufactures and sells of various cosmetic products, including two perfumes with trademarks Legend and Flirt - Liberty Group, Respondents-Defendants, launched two perfumes with names Legend and Flirt - This led to MESO filing a Trade Mark suit in this Court and moving for an injunction to restrain Liberty from selling these perfumes - Learned Single Judge initially granted an ex-parte ad-interim order of injunction, which was subsequently vacated - Cosmetic Private Limited conceived of trademark Legend in regarding cosmetics, essential oils, perfumes, perfumery etc - Ultima applied for registration of a trademark - Ultima got the trademark Legend registered as referred to in the Trade Marks Act and the Rules - Manufacturing Company, a partnership firm, conceived of trademark Flirt regarding soaps, essential oils, cosmetics, perfumery etc. registered the trademark - MESO was incorporated as Mercantile Essential Oil Company (India) Private Limited - Its name was changed to MESO Private Limited - Shebro assigned the trademark Flirt to MESO - Ultima assigned the trademark Legend to MESO - Respondent-Defendants Liberty Group was established - It manufactured and marketed footwear and lifestyle products and fashion accessories for a diverse class of consumers - Defendant Liberty Lifestyle is not a legal entity, and it is a brand introduced by Liberty Group (Liberty) for its various lifestyle products - Whether the infringement is likely to deceive or cause confusion – Held, average consumer of premium lifestyle product such as perfumes does not choose them causally - Average consumers choice of perfume is influenced by blends, diffusion, distillation and fragrance, concentration of perfume -Thus this product is not chosen with indifference - Various brands and houses aggressively build up associations with the house and brand names - Recommendations exchanged between average consumers are generally on the house names - A discerning consumer knows there could be various perfumes in market with names Legend, Flirt, Gentlemen, but such consumer will first go by name of the house or a group marketing such variants - Therefore, the defence of Liberty that use of Legend and Flirt along with its house name will not cause confusion regarding the marks of MESO has to be accepted at this stage to sustain the order of refusal of an injunction - Learned single Judge has placed conditions on Liberty in respect of disclosure of accounts, which according to us are sufficient safeguards till the disposal of the Suit - Liberty argument that MESO is exporting its product and has zero sales in India is replied by MESO that section 56 of the Act of 1999, export business in India constitutes user in India - Learned Single Judge has referred to aspect of MESO not having sales in India - Court do not need to decide this aspect because of court finding that in this particular case there is no likelihood of confusion on part of the public - Court are not inclined to interfere with the impugned order - Appeal is dismissed.
JUDGMENT :
Nitin Jamdar, J.
1. MESO Private Limited, the Appellant-Plaintiff, manufactures and sells of various cosmetic products, including two perfumes with trademarks Legend and Flirt. The Liberty Group, the Respondents-Defendants, launched two perfumes with names Legend and Flirt. This led to MESO filing a Trade Mark suit in this Court and moving for an injunction to restrain Liberty from selling these perfumes. The learned Single Judge initially granted an ex-parte ad-interim order of injunction, which was subsequently vacated. Being aggrieved, MESO approached with this appeal seeking a grant of an injunction against Liberty Group regarding these two products. We are not inclined to grant an injunction as prayed for. The factual backdrop and the reasons are as follows.
2. Ultima Cosmetic Private Limited conceived of the trademark Legend in July-August 1988 regarding cosmetics, essential oils, perfumes, perfumery etc. Ultima applied for registration of a trademark on 8 August 1988. Ultima got the trademark Legend registered under No.495609 in Class-3 as referred to in the Trade Marks Act and the Rules.
3. Shebro Manufacturing Company, a partnership firm, conceived of trademark Flirt regarding soaps, essential oils, cosmetics, perfumery etc. Shebro registered the trademark Flirt under No.636720 of Class-3 on 12 August 1994.
4. MESO was incorporated on 11 September 1992 as Mercantile Essential Oil Company (India) Private Limited. Its name was changed to MESO Private Limited on 16 October 1998.
5. On 28 June 2016, Shebro assigned the trademark Flirt to MESO. Ultima assigned the trademark Legend to MESO on 14 January 2019.
6. MESO sells the bottles of perfumes with names Legend and Flirt, and the bottles are packed in boxes bearing the respective trademarks with the house mark: Devon.
7. Respondent-Defendants Liberty Group was established in the year 1954. It manufactured and marketed footwear and lifestyle products and fashion accessories for a diverse class of consumers. Defendant No.2 Liberty Lifestyle is not a legal entity, and it is a brand introduced by the Liberty Group (Liberty) for its various lifestyle products. Liberty has a presence through branch offices, distributors, multi-brand outlets and exclusive stores. It exports its products to various countries.
8. Liberty Group ventured into the luxury lifestyle products and in October 2018 introduced a new brand: Liberty Lifestyle. Wide publicity was given to that Liberty Lifestyle was planning to launch new Eau de Perfume range of 12 perfumes including perfumes with marks Legend and Flirt. It was to be sold on e-commerce websites like Amazon, Flipkart, and www.libertylifestyle.co.in., their website.
9. MESO wrote to Liberty Lifestyle on 3 November 2018 stating that they came across an article on 18 October 2018 publicizing the launch of the perfumes Legend and Flirt and called upon them to cease using the marks Legend and Flirt or any other marks identical to or deceptively similar to the MESO's trademarks. Liberty Lifestyle replied, stating that it was using the names Legend and Flirt for its products but claimed that they are commonplace, generic and dictionary words also used by others.
10. MESO filed Com IP Suit (L) No. 551 of 2019 in this Court on 26 April 2019 joining Liberty Lifestyle as Defendant No.2 and Liberty Shoes Ltd. as Defendant No.1 since, according to MESO, Defendant No.1 through Defendant No.2 appears to have ventured in lifestyle marketing. MESO took out Notice of Motion (L) No.1184/2019 seeking relief that pending the hearing and final disposal, Liberty, their servants and agents be restrained by an order of injunction from manufacturing, packing, marketing, selling or using, in relation to essential oils, perfumes and perfumery compounds, cosmetics or any other goods in Class-3 of the Fourth Schedule of the Trade Marks Act, 1999 and Rules framed, the marks Legend or Flirt or any other mark identical to or deceptively similar to or containing the MESO's trad
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