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2016 Supreme(Del) 424
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRADEEP NANDRAJOG & MUKTA GUPTA, JJ.
MAC PERSONAL CARE PVT. LTD. & ANR. - Appellants
Versus
LAVERANA GMBH and CO.KG & ANR. - Respondents
FAO (OS) 194/2015
Decided on : 28.01.2016
Advocate Appeared:
For the Appellant :Mr. S.K. Bansal, Advocate with Mr. Vinay Kumar Shukla, Advocate.
For the Respondent:Mr. Manav Kumar, Advocate.
The main legal point established in the judgment is the significance of international reputation and the concept of trans-border reputation in trademark disputes.
Headnote:
LAVERA - Trademark Dispute - [Trade Marks Act, 1999, Section 12(3); Law of Trademarks and Tradenames; N.R. Dongre Vs. Whirlpool Corporation; Allergan Inc. Vs. Milment Oftho Industries; Erven Warnik B.V. Vs. J.Townend & Sons (Hull) Ltd.; Cadbury U.K. Ltd. & Anr. Vs. Lotte India Corporation Ltd.; Midas Hygien Industries Pvt. Ltd. Vs. Sudhir Bhatia & Ors.; Hindustan Pencils Pvt. Ltd. Vs. M/s.India Stationery Products Co.; M/s.Bengal Waterproof Ltd. Vs. M/s.Bombay Waterproof Manufacturing Co.; Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd.; M/s.Ansul Industries Vs. Shiva Tobacco Co.] - The court discussed the trans-border reputation of the trademark LAVERA, the principle of bona-fide user of the mark, and the impact of delay and laches on the case. It emphasized the importance of international reputation, the concept of trans-border reputation, and the factors relevant to establishing reputation in an international market. The court found that the respondent had established a reputation abroad that spilled over to India, and the appellant was a dishonest adopter of the mark, leading to the dismissal of the appeal.
Fact of the Case:
The respondent claimed trademark LAVERA, alleging extensive worldwide use and reputation, while the appellant argued that the word LAVERA was in the public domain and had been used since 2005. The court granted an ex-parte interim injunction in favor of the respondent.
Finding of the Court:
The court found that the respondent had established a reputation abroad that spilled over to India, and the appellant was a dishonest adopter of the mark, leading to the dismissal of the appeal.
Issues: The issues concerned the trans-border reputation of the trademark LAVERA, the principle of bona-fide user of the mark, and the impact of delay and laches on the case.
Ratio Decidendi: The court emphasized the importance of international reputation, the concept of trans-border reputation, and the factors relevant to establishing reputation in an international market. It held that the respondent had established a reputation abroad that spilled over to India, and the appellant was a dishonest adopter of the mark.
Final Decision: The appeal was dismissed without any order as to costs.
PRADEEP NANDRAJOG, J.
1. Considering the pleadings of the parties and the documents filed, the learned Single Judge has decided IA No.18151/2012 filed by the respondent seeking interim injunction against the appellant pending disposal of the suit as also IA No.19804/2013 filed by the respondent praying that the ex-parte interim order dated September 28, 2012 should be vacated. It is apparent that the decision is in favour of the respondent and against the appellant.
2. Issue concerns respondent’s trademark LAVERA : a latin word meaning ‘the truth’. The respondent claims that registered as a limited liability company in Germany it adopted the trademark LAVERA in early 1980 as an arbitrary word mark in connection with cosmetic product and the product was marketed for the first time in Germany in the year 1982. The product has been marketed world over in various countries. The mark has been registered in several countries namely Germany, Denmark, Hong Kong, Italy, France, Japan, Singapore and Ireland. It was pending registration in India under No.1863388. As per the respondent due to extensive worldwide use of the mark and sale of the cosmetic products the mark has earned goodwill and reputation. The respondent’s products are freely available on e-bay and online stores. Respondent claims that sale figures for the years between 2007 till 2011 range between 74,76,500 euros to 1,15,27,839 euros. As per the respondent it has domain name registration for the mark LAVERA such as www.lavera.com, www.lavera.d, www.lavera.in, www.lavera.jp, www.lavera.cz, www.lavera.eu and www.lavera.ca. Respondent claims that people from India travelling abroad are exposed to its products apart from exposure thereto through the internet. Respondent claims that it learnt of appellant using the mark MAC’S LAVERA in September, 2010 when it was published in the trademark journal No.1441 for purposes of opposition, to which application the respondent filed an opposition.
3. In the written statement filed the appellant pleaded that the respondent has not used the mark anywhere in India and its registration application No.1863388 dated September 16, 2009 was proved of said fact because it disclosed therein that the mark LAVERA was proposed to be used in India. It was pleaded that from the plant aloe vera, the predecessors of the appellant No.1 got motivation for the word LOVERA by joining the words composing aloe vera and removing ‘a’ i.e. ALOEVERA – A = LOEVERA. Motivated therefrom the word LAVERA was independently conceived of. As per the appellant the trademarks LAVERA and MAC’S LAVERA were being used by since the year 2005. Pleading that the word LAVERA was in public domain, being a latin word meaning the truth, it was pleaded that the respondent could not appropriate the same to itself. It was pleaded that considering that the appellant was using the word LAVERA as a part of its trademark since 2005 the respondent has acquiesced in the use of the word by the appellant evidenced by the fact that the suit was filed in the year 2012.
4. Issuing summons in the suit and IA No.18151/2012, on September 28, 2012 the learned Single Judge granted an ex-parte ad-interim injunction against the appellant and in favour of the respondent.
5. In a somewhat lengthy judgment, the learned Single Judge has considered : (i) whether the respondent prima-facie established a trans-border reputation; (ii) whether the principle that a party having knowledge that another party has already applied for the trademark in relation to the same goods would be entitled to the defence of being a bona-fide user of the mark; and (iii) whether delay and laches would be detrimental to the case of the respondent.
6. Considering the material placed by the respondent before the learned Single Judge, in paragraph 44 of the impugned order the learned Single Judge has returned a prima-facie finding as under:-
“As far as user of the trademark LAVERA in India is concerned, the plaintiff no doubt has
