The exclusive right of a registered trademark proprietor and the estoppel of claiming a mark as generic or descriptive after applying for its registration.

ORDER

1. This hearing has been done through hybrid mode.

CS(COMM) 228/2022

2. Let the plaint be registered as a suit.

3. Issue summons to the Defendants through all modes upon filing of Process Fee.

4. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

5. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

6. List before the Joint Registrar for marking of exhibits on 20th July, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

7. List before Court on 19th September, 2022.

I.A.5591/2022 (u/O XXXIX Rule 1 and 2 CPC)

8. A new counsel has been engaged by the Defendants. Mr. Siddharth Yadav, ld. Counsel for the Defendants, under instructions by Mr. Rahul Das - Director of Defendant No.1 Company, submits that the Defendants are no longer willing to give up the mark 'VELVET MATTE'.

9. On the last date of hearing i.e., 12th April, 2022, the following order was passed by this Court:

1. This hearing has been done through hybrid mode.

2. Mr. Pravin Anand, Id. Counsel appearing for Defendant Nos.1, 2 and 3 submits that the Defendants are willing to give up the mark VELVET MATTE.

4. Accordingly, since this is a fresh suit, let the parties file a comprehensive application under Order XXIII Rule 3 CPC recording the undertakings on behalf of the Defendants so that the matter can be finally disposed of.

5. List on 11th May, 2022.

10. It is clear from the above order that, on the said date, the Defendants had instructed their counsels that they were willing to give up the mark 'VELVET MATTE', and the matter was accordingly adjourned to enable the parties to file a joint application under Order XXIII Rule 3 CPC. Today, there has been a change of counsels, as also, a change of stand.

11. The case of the Plaintiff is that it adopted the mark 'VELVET MATTE' in respect of cosmetics being, inter alia, lipstick, lip gloss, liquid premakeup base, lip color, lip liner, in the year 2009 as a sub-brand/mark under the umbrella brand/ house mark 'COLORBAR'. The Plaintiff is the registered proprietor of the mark 'VELVET MATTE' bearing Registration No.3370299 in Class 3. The said mark was applied on 22nd September, 2016 and the user claim is of 12th August, 2009 onwards. Various variants of the mark have also been used by the Plaintiff. The sales of the products sold under the brand/mark'VELVET MATTE' are stated to be more than Rs.687 lakhs for the previous year 2020-2021. The Plaintiff has also promoted this mark on social media and other websites, and the promotional expenses in respect of the same is to the tune of Rs.1,496 lakhs for the year 2021-2022.

12. The Defendant No.2 is a Canadian company which is also engaged in the business of manufacturing and selling cosmetic products. It uses the identical mark 'VELVET MATTE' in respect of an identical class of products i.e., lip gloss, lipsticks, and other cosmetics. Upon acquiring knowledge of the Defendants' use of the mark 'VELVET MATTE', the Plaintiff had issued a cease and desist notice to the Defendant on 16th November, 2021. Vide Reply dated 9th December, 2021, the Defendants did not agree to comply with the requisition of the Plaintiff, and argued that the mark 'VELVET MATTE' is common to trade and descriptive, as also, that there are several distinguishing factors be