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IN THE HIGH COURT OF DELHI
Jyoti Singh, J.
Pornsricharoenpun Co. Ltd. - Appellant
Versus
L'oreal India Private Limited - Respondent
FAO-IPD 43 of 2021 & CM Appl. 32440 of 2016 (Stay)
Decided On : 14-11-2022
Certainly. Based on the provided legal document, here are the key points summarized without referencing specific case law:
The term "HAIR SPA" is considered a generic, descriptive phrase in the trade, commonly used to denote a type of hair treatment, and therefore cannot be exclusively monopolized as a trademark (!) (!) (!) (!) (!) (!) (!) .
The use of "HAIR SPA" by the Appellants is as a descriptive term or common trade expression, not as a trademark, and is used in conjunction with their own registered trademark "BERINA" (!) (!) (!) (!) (!) .
There is widespread usage of "HAIR SPA" across multiple entities and products in the industry, indicating its status as a common term or public domain expression (!) (!) (!) (!) .
The visual and stylistic differences in trade dress, color schemes, and stylization between the Appellants' products and the Respondents' products suggest that there is no intent to infringe or mislead regarding the source of goods (!) (!) (!) .
The Respondents' claim of exclusive rights over "HAIR SPA" is challenged due to the term's descriptive and generic nature, and the Respondents' own documents show use of similar terms by third parties, further weakening their claim (!) (!) .
The registration of "HAIR SPA" as a trademark by the Respondents is considered to be of limited weight at this interlocutory stage because the term is inherently descriptive, and the registration may be subject to rectification or cancellation proceedings (!) (!) (!) .
The Appellants have demonstrated that "HAIR SPA" is a common, descriptive phrase used broadly in the trade, and their use of the term as a descriptor does not amount to infringement or passing off, especially given the different trade dress and branding (!) (!) .
The Court finds that the Respondents have not established a prima facie case of infringement or exclusive rights over "HAIR SPA," and the balance of convenience favors the Appellants, who have been using the term since 2006 without prior action by the Respondents (!) (!) .
The Court emphasizes that the mere registration of a trademark does not preclude a court from examining the descriptive nature of the term or its common usage in the trade at the interlocutory stage (!) (!) .
Ultimately, the Court sets aside the order restraining the Appellants from using "HAIR SPA," reaffirming that the term is a generic, descriptive expression that cannot be monopolized, and the Appellants' use is lawful (!) .
Please let me know if you need a more detailed analysis or assistance with drafting legal arguments based on these points.
JUDGMENT
Jyoti Singh, J. Challenge in the present appeal is laid to an order dated 30.03.2016, passed by the learned Trial Court in TM No. 90/2014, whereby the application under Order XXXIX Rules 1 and 2 CPC, 1908 has been disposed of and Appellants have been restrained from using the trademark `HAIR SPA'. Appellants herein are the Defendants before the learned Trial Court while Respondents are the Plaintiffs and the parties are hereinafter referred to by their litigating status in the present appeal.
2. Appellant No. 1, having its registered office in Thailand, is stated to be carrying on a well established business as manufacturer, marketer, exporter and/or dealer of cosmetics and hair care products under the trademark `BERINA' for the past several years. Products of Appellant No. 1 are sold in Asian countries viz. Thailand, Singapore, Malaysia, India, etc. Appellant No. 2 is engaged in importing, selling, marketing and/or distributing various cosmetics and hair care products, manufactured by Appellant No. 1 for many years.
3. It is averred by Appellant No. 1 that Ms. A. Ngun Luechaputiporn, a Thai National is the first and original proprietor of the trademark `BERINA', which is used in relation to cosmetics and hair care products and is registered in India in Class 03. As a registered proprietor, she granted a licence to Appellant No. 1, authorising it to use the trademark in relation to cosmetics and hair care products.
4. On 29.08.2006, Appellant No. 1 sent the first consignment of the products bearing the mark `BERINA' HAIR SPA to Appellant No.2, for sale in India. The products were advertised in March, 2011 in a magazine wherein advertisement of Respondents' product was also published and despite this knowledge, no action was taken for over three years by the Respondents.
5. In November, 2014 Respondents filed a suit for permanent injunction against the Appellants alleging infringement of trademark, passing off, etc. On 20.11.2014, the learned Trial Court passed an ex-parte order of injunction, restraining the Appellants from using `BERINA HAIR SPA'. Vide impugned order dated 30.03.2016, the application under Order XXXIX Rules 1 and 2 CPC, 1908 was disposed of and the interim injunction was confirmed by the learned Trial Court.
6. Appellants have laid a siege to the order of the learned Trial Court in the present appeal on the following grounds:
A. Trial Court has erred in observing that counsel for the Appellants had referred to certain judgments during the course of the arguments but no such judgments were filed on record. The observation is contrary to the record of the Trial Court inasmuch as the judgments were filed along with the written submissions and the certified copy obtained by the Appellants would evidence that the written submissions run into 38 pages followed by judgements which were 11 in number, running into 219 pages. Appellants have filed certified copies of the judgments to substantiate their stand. The erroneous observation is also a pointer to the fact that the Trial Court has rendered the impugned findings without looking into the judgments filed by the Appellants and consequently the propositions of law enunciated therein which has caused grave prejudice to the Appellants' case.
B. Appellant No. 1 manufactures, markets, exports and is a dealer of cosmetics and hair care products under the trademark `BERINA'. One Ms. A. Ngun Luechaputiporn, a Thai National is the first and original proprietor of the trademark `BERINA', which is used in relation to cosmetics and hair care products and is registered in her name in India in Class 03. She has granted a licence to Appellant No. 1 authorising it to use the said trademark in relation to cosmetics and hair care products and the goods of the Appellants are identified by the trademark `BERINA'. The goods manufactured by Appellant No. 1 bear the trademark `BERINA' followed by description or nature of products viz. bleaching preparations, hair colou
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