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IN THE HIGH COURT OF DELHI
MANMOHAN SINGH, J.
Moroccanoil Israel Limited - Appellant
Versus
Manoj Khanna - Respondent
CS(OS) 1332 of 2014, I.A. Nos. 8683, 12455 & 21713 of 2014
Decided on : 19-12-2014
Copyright Infringement - Trademark Infringement - Passing Off - Copyright Act, 1957, Section 2(c) - The court discussed the plaintiff's use of trademarks MOROCCANOIL and its packaging as an original artistic work under Section 2(c) of the Copyright Act, 1957. The defendants were restrained from reproducing, printing, or publishing any label or packaging that imitated the plaintiff's packaging and using the 'M' device/logo or any other deceptively similar features.
Fact of the Case:
The plaintiff filed a suit for permanent injunction against copyright infringement, passing off, and damages, alleging that the defendants' hair treatment product packaging was strikingly similar to the plaintiff's MOROCCANOIL packaging.
Finding of the Court:
The court found that the defendants' packaging infringed the plaintiff's exclusive rights in the trade dress of their product and constituted passing off.
Issues: The issues included trademark infringement, copyright infringement, passing off, unfair competition, and trade practice to injure the plaintiff's reputation and goodwill.
Ratio Decidendi: The court granted a decree for permanent injunction in favor of the plaintiff, restraining the defendants from infringing the plaintiff's copyright in the artistic work of the packaging and using deceptively similar features.
Final Decision: A decree for permanent injunction was passed in favor of the plaintiff and against the defendants, and the rest of the prayers were disposed of as not pressed.
JUDGMENT :
Manmohan Singh, J.
The plaintiff has filed the present suit for permanent injunction restraining infringement of copyright, passing off, damages and rendition of accounts etc.
2. Since 2007, the plaintiff has continuously used the trademarks MOROCCANOIL,”M (MOROCCANOIL Vertical Design)”, and”M (MOROCCANOIL Horizontal Design)" in relation to oil hair treatment products worldwide, including India. Plaintiff and its affiliates have registered or sought numerous registrations of their trademarks MOROCCANOIL,”M (MOROCCANOIL, Vertical Design)," and”M (MOROCCANOIL Horizontal Design)” in more than 80 countries of the world.
3. It is averred in the suit that the plaintiff's MOROCCANOIL hair treatment products are sold in a packaging having a unique get up, layout, colour scheme and arrangement of features, comprising of an overall blue background and featuring an oversized letter 'M' in a distinct logo script in orange font with the plaintiff's trade mark/ name MOROCCANOIL inscribed either horizontally or vertically sideways in prominent lettering. Significantly, the logo/device forms an essential feature of the plaintiff's”MOROCCANOIL" series of products.
The design of the packaging of the plaintiff's MOROCCANOIL product constitutes an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957.
4. The plaintiff claims that the MOROCCANOIL product in the market is perceived as a very high quality, luxury item. MOROCCANOIL has generated and owns substantial goodwill in relation to its products, in particular as the result of its significant investment in marketing worldwide, valued in the hundreds of millions of dollars; numerous positive reviews by celebrities and prominent figures in the world of hair care; and extensive coverage of the Moroccanoil products in popular and luxury publications all over the world. In addition, the Moroccanoil word mark and logos enjoy extensive IP protection in more than 80 territories worldwide.
5. In or about the month of March, 2014, the plaintiff came across the defendant's advertisement in Bombay Times entitled”The World's Best Hair Transplant Clinic" and featuring the defendant's hair treatment product in a packaging strikingly similar to the plaintiff's present MOROCCANOIL packaging. Thereupon, inquiries were conducted in the market which revealed that the defendants were engaged in selling 'MINOXIDIL' Hair Gain Solution in a packaging comprising of an identical get up, layout, colour scheme and arrangement of features as that of the plaintiff's MORROCANOIL products comprising of the overall blue background and featuring the device. The defendant's product packaging is reproduced hereunder :
6. According to the plaintiff, the defendants have adopted an identical packaging comprising of an identical get up, lay out, colour scheme and arrangement of features as used by the plaintiffs for identical products. The defendants have adopted the plaintiff's device/logo which forms the most distinctive and essential feature of the plaintiff's”MOROCCANOIL" series of products. According to the plaintiff, the above acts of the defendants infringe the plaintiff's exclusive rights in the trade dress of their product, their copyright in the artistic work and amount to passing off.
7. The suit as well as the interim applications were listed before Court on 7th May, 2014 when the interim order was passed, the operative part of the order is reproduced below :
1. Issue notice to the defendants, returnable before Joint Registrar on 3rd July, 2014.
2. This is an application filed by the plaintiff for an ex parte ad interim injunction restraining the defendants, their partners or proprietor, servants and agents, from reproducing, printing or publishing any label or packaging, including cartons and boxes, which are a colourable imitation or substantial reproduction of the plaintiff's MOROCCANOIL packaging and from making, selling, offering for
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