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IN THE HIGH COURT OF DELHI
SANJIV KHANNA
BEIERSDORF A.G. - Appellant
Versus
AJAY SUKHWANI - Respondent
CS(OS) NO. 1164 OF 2001
Decided On : 14-11-2008
NIVEA - Passing Off - Trade Marks Act, 1958 - Clause 3, Clause 4(k), Clause 5 - The court discussed the well-known trademark NIVEA, the fraudulent adoption of the mark by the defendants, the principles of passing off, and the protection of domain names under the Trade Marks Act, 1958.
Fact of the Case:
The plaintiff, M/s.Beiersdorf AG, filed a suit for passing off and restraining the defendants from using the mark/word NIVEA as a trademark/trade name or as a part of trading style and also from operating a website with the domain name www.niveainternational.com.
Finding of the Court:
The court found that the plaintiff is the proprietor of the trademark NIVEA, which is a well-known and respected trademark. The defendants' defense based on delay and laches was rejected due to the fraudulent adoption of the mark by the defendants.
Issues: The issues included the proprietorship of the trademark NIVEA, its well-known status, passing off, delay, laches, and acquiescence.
Ratio Decidendi: The court held that the defendants' fraudulent adoption of the mark NIVEA constituted misrepresentation and deception, causing injury to the plaintiff's goodwill. The plea of delay, laches, and acquiescence was rejected due to the initial dishonest adoption of the mark by the defendants.
Final Decision: The suit was partly decreed, and a permanent injunction was passed in favor of the plaintiff against the defendants. The defendants were directed to destroy all blank and unutilized papers and documents bearing the offending mark/tradename NIVEA and to apply for amendment/modification.
1. M/s.Beiersdorf AG, the plaintiff is the registered proprietor of the mark NIVEA under Class 3, toiletries, under the Trade Marks Act, 1958 (hereinafter referred to as the Act, for short). Defendant no.-2 M/s. Nivea International is a partnership firm and Mr.Ajay Sukhwani, defendant no.1 is one of its partners. It is engaged in the business of educational consultancy and allied services. The plaintiff has filed the present suit for passing off and restraining the defendants from using mark/word NIVEA as a trademark/trade name or as a part of trading style and also from operating a website with the domain name www.niveainternational.com.
2. On the basis of the pleadings and documents filed by the parties, the following issues were framed on 8th November, 2005 :- (i) Whether the plaintiff is the proprietor of the trademark NIVEA and is entitled to protect the said trademark in respect of different goods/services (ii) Whether the trademark NIVEA is a well known trademark of the plaintiff (iii) Whether by use by the defendant of the trademark/tradename NIVEA as well as the website over the internet bearing the name www.niveainternational.com the defendant is passing of its business/services as and those of the plaintiff (iv) Whether the plaintiff has come to this Court with clean hands and has suppressed any material facts from this Court (v) Whether the suit suffers from delay, latches and acquiescence (vi) Relief. 3. Parties have filed affidavits by way of evidence of Mr.Sudhir D.Ahuja, PW- 1 for the plaintiff and Mr.Ajay Sukhwani, DW-1 for the defendants. Parties have not cross examined the witness produced by the other side, on the ground that facts are admitted. By an ex parte order of injunction dated 1st June, 2001, the defendants have been restrained from using the mark NIVEA as a part of their trading name or style and the website ww.niveainternational.com or the domain name niveainternational. The said order continues to be in operation. It is stated by the defendants that they did not press for
vacation of stay or variation of the injunction order as the trial in the suit was expedited. ISSUE NOS. 1 TO 4
4. Issue nos. 1 to 4 are interconnected, inter related and are therefore being dealt with together. The plaintiff came into existence in 1890 and is incorporated under the laws of Germany. The plaintiff coined and adopted the mark NIVEA, which was registered as a mark in Germany on 23rd June, 1905. In 1911, the plaintiff started first commercial use of the mark NIVEA and by 1991, NIVEA cream was available in 150 countries. The plaintiff started marketing its products in India in 1943. The plaintiff had made an application for registration of mark NIVEA in India in Clause 3 on 12th April, 1943.The registration was granted and has continued since then. The mark Nivea has been continuously, extensively and uninterruptedly used by the plaintiff in India and worldwide.
5. It cannot be doubted and to be fair to the learned counsel for the defendants they did not contest that the mark NIVEA is a well known and a respected trademark.
6. The defendants defence in addition to delay and laches, which is subject matter of issue no.5, is based upon the following arguments: (i) Decision dated 25th June, 2001 of the administrative panel of the World Intellectual Property Organisation rejecting the complaint of the plaintiff against defendant no.2. (ii) There is no likelihood of deception as (a) the line of activity i.e. educational services is entirely different and distinct from the goods marketed and sold by the plaintiff under the mark NIVEA, (b) plaintiff cannot claim a universal right to use the mark NIVEA and (c) services provided by the defendants are utilized by well educated persons belonging to middle class and therefore there is no confusion or even likelihood of confusion. EFFECT OF WIPO DECISION
7. The decision dated 25th June, 2001 of the administrative panel of the World Intellectual Property Organ
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