The court ruled that the registered trademark 'MOROCCANOIL' has acquired distinctiveness, justifying interim injunction against the defendant’s similar mark to prevent consumer confusion.

Headnote:(A) Trademarks Act, 1999 - Sections 124 and 30(1)(a) - Interim injunction sought for trademark infringement - Plaintiffs hold registered mark 'MOROCCANOIL' since 2008, claiming Defendant's use of 'MOROCCAN ARGAN OIL' is likely to cause confusion - Court grants interim relief against Defendant's use pending examination of trademark validity - Plaintiffs' continuous use and recognition of the mark established. (Paras 1, 3, 17, 31)

(B) Trademark Validity and Infringement - Descriptive marks and their registration - Court discusses distinctiveness of marks, burden of proof on Plaintiffs to show they acquired distinctiveness through long usage, and describes tests to ascertain descriptiveness of marks in context of trademarks under law. (Paras 20-22)

Facts of the case:
The Plaintiff is the registered owner of 'MOROCCANOIL' and alleges Defendant's products, namely 'MOROCCAN ARGAN OIL', infringe their trademark rights, causing confusion among consumers. Plaintiff claims their products have garnered global recognition and extensive sales since 2007. (Paras 4-7)

Findings of Court:
Plaintiffs established prima facie case for interim relief. The mark 'MOROCCANOIL' has long-term usage and recognition thus deserving statutory protection. Confusion among consumers is likely due to similar packaging and names. (Paras 16, 19, 25)

Issues: Whether the use of 'MOROCCAN ARGAN OIL' by the Defendant infringes upon Plaintiff's registered mark 'MOROCCANOIL' and whether the mark is descriptive and invalid. (Paras 15, 37)

Ratio Decidendi: The Court held the Plaintiffs’ mark has acquired distinctiveness through long usage which favors interim injunction against the Defendant's similar mark as consumer confusion is likely. The law emphasizes protecting trademarks while determining validity issues. (Paras 26, 37)

Result: IA 1471/2019 granted; interim injunction confirmed until disposal of the suit. IA 16720/2019 granted for Defendant's rectification applications. (Paras 36, 38)

Table of Content
1. plaintiffs establish presence and use of trademark. (Para 1 , 4 , 5 , 6)
2. plaintiffs argue likelihood of consumer confusion. (Para 7 , 8 , 9 , 10 , 11)
3. defendant asserts descriptive use of trademark. (Para 12 , 13 , 14 , 15)
4. court analysis of trademark similarity. (Para 16 , 17 , 18)
5. legal tests for trademark distinctiveness applied. (Para 20 , 21 , 22)
6. court's conclusions regarding trademark protection. (Para 28 , 31 , 32 , 33 , 36)
7. decision to maintain interim injunction and stay proceedings. (Para 37 , 38)

JUDGMENT

Mukta Gupta, J.

I.A. 1471/2019 (under Order XXXIX Rule 1 & 2 CPC).

I.A. 16720/2019 (under Section 124 of the Trademarks Act by Defendant).

1. By I.A. 1471/2019, the Plaintiffs seek an interim order for injunction restraining the defendant, its partners or proprietor, officers, servants, agents, distributors, wholesalers, dealers, retailers or any other person acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with regard to products and services bearing the trademark/logo "MOROCCANOIL" by itself or with words or variant or any other trademark/trade name/domain name which is deceptively similar to the Plaintiff's registered trademarks or in any other manner whatsoever as is likely to lead to infringement of registered trademarks thereof or doing any other act as is likely to lead to infringement of registered trademarks of the Plaintiffs, trade dress, copyright. The plaintiffs also pray for direction to the defendant to file statement of account and assets on affidavit and restraining defendant from disposing off or dealing with their assets in a manner that may adversely affect the plaintiffs.

2. Summons in the suit were issued to the defendant vide order dated 1st February, 2019. Interim injunction was granted in favour of the plaintiff and against the defendant vide order dated 25th April, 2019 by this court.

3. By I.A.16720/2019, the defendant is seeking an order permitting it to proceed with the rectification proceedings filed by it against the plaintiffs. registration no. 1649179 bearing ORA/105/2019/TM, 1657120 bearing ORA/106/2019/TM, 3173249 bearing ORA/107/2019/TM, 3171839 bearing ORA/108/2019/TM and 2199407 ORA/109/2017/TM pending before the IPAB, and also seeks stay on trial of the suit till the disposal of the rectification petition.

About the Plaintiffs and the Contentions

4. As per the plaint, Plaintiff No.1 is a company organized and existing under the laws of Israel. It was incorporated in the year 2007 and is an industry leader in the development, production and marketing of hair and body care products. In the same year, the Plaintiff's hair and oil treatment products were launched under a coined trademark "MOROCCANOIL" in Canada, Israel and United States of America. Plaintiff No. 2 is an affiliate of Plaintiff No.1 having its place of business of business in Los Angeles, California. Over the years, the Plaintiffs. have been successful in establishing a strong international presence in the global hair care and oil treatment industry and their products are sold to customers in about 80 countries and have received various accolades for the same. The Plaintiffs are also the owners of the domain name "www.moroccanoil.com" which is the website through which the Plaintiffs advertise their products and provide exhaustive information on the range of products offered by the Plaintiffs. It is noteworthy that the plaintiffs are the owners of various other domain names with "MOROCCANOIL" as an integral part.

5. The registered mark of the plaintiffs, "MOROCCANOIL", was coined and uniquely designed in the year 2007 by Ms. Carmen Utreras who was the co-founder of the Plaintiff's group of companies and since 2007, the Plaintiffs have continuously and extensively been using the registered marks "MOROCCANOIL", "M (MOROCCANOIL Vertical Design) and "M (MOROCCANOIL Horizontal Design)" in relat