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2011 (4) LW 55
High Court of Judicature at Madras
V. RAMASUBRAMANIAN
M/s. Aravind Laboratories, Represented by its Partner T. Devanathan
Versus
Modicare, Ali Towers
O.A.Nos.518 & 519 of 2010 in C.S.No.460 of 2010
Decided on : 05-07-2011
Suit for infringement of registered trademark and passing off. Plaintiff's claim of infringement and passing off dismissed. Defense under Sections 17(2) and 30(2) of the Trade Marks Act, 1999 upheld.
Fact of the Case:
Plaintiff, a manufacturer and marketer of cosmetics, brought a suit for infringement of registered trademark and passing off against the defendant, a company that manufactures and markets nail polish and nail glitters. The plaintiff claimed that the defendant's use of the mark "Daily Dazzler" infringed its registered trademarks "EYETEX DAZLLER" and "EYETEX POORNIMA Kumkum (L)" and that the defendant's product was likely to cause confusion with its own.
Finding of the Court:
The court found that the plaintiff's claim of infringement failed because the word "DAZLLER" was not separately registered and was descriptive of the intended purpose of the product. The court also found that the plaintiff's claim of passing off failed because the plaintiff had not established the necessary elements of reputation, misrepresentation, and damage.
Issues: Whether the defendant's use of the mark "Daily Dazzler" infringed the plaintiff's registered trademarks "EYETEX DAZLLER" and "EYETEX POORNIMA Kumkum (L)"; Whether the defendant's product was likely to cause confusion with the plaintiff's own products.
Ratio Decidendi: The court held that the plaintiff's claim of infringement failed because the word "DAZLLER" was not separately registered and was descriptive of the intended purpose of the product. The court also found that the plaintiff's claim of passing off failed because the plaintiff had not established the necessary elements of reputation, misrepresentation, and damage.
Final Decision: The court dismissed the plaintiff's suit for infringement of registered trademark and passing off.
1. Pending suit for infringement of a registered trade mark and passing off, the plaintiff has come up with
(i) O.A.Nos.518 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, selling, advertising and offering their products for sale using the trade mark Daily Dazzler in any media and using the same in nail polish, nail glitter, invoices, letter heads and visiting cards or any other cosmetics and by using any other trade mark which is in any way visually, phonetically or deceptively similar to the applicant's trade mark EYETEX DAZLLER or in any manner infringing the applicant's registered trade mark Nos.1261112 and 1261117 in Class 3; and
(ii) O.A.No.519 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, marketing, distributing, offering or advertising or using the mark Daily Dazzler or similar sounding names in the course of their business and passing off their nail polish or other cosmetic products using the trade mark Daily Dazzler as and for the EYETEX DAZLLER goods of the applicant.
2. I have heard Mrs.Gladys Daniel, learned counsel for the applicant/ plaintiff and Mr.Satish Parasaran, learned counsel for the respondent/ defendant.
3. The plaintiff is the manufacturer and marketer of cosmetics for the past 75 years. One of the cosmetics marketed by the plaintiff is Kajal, which is applied on the eyes. The plaintiff conceived and adopted the word "EYETEX DAZLLER" as one of its trade marks and got registration of the same in respect of the Nail Polish and Nail Glitters under Class 3. Apart from the trade mark "EYETEX DAZLLER", the plaintiff is also the proprietor of several trade marks, whose details are as follows:
S. No.
TRADE MARK
APPLN. REGD. NO.
DATE
CL.
1
EYETEX [Label]
124824
91146
3
2
EYETEX Bindi Kumkum [Label] 176769 102056 3 3
EYETEX KUMKUM [Label] 231497 92765 3
4
EYETEX
271583
42471
3
5
EYETEX (Label)
271584
42471
3
6
EYETEX (Telugu Character)(word) 296909 61474 3 7
EYETEX (Devanagari Character)(word) 296910 61474
3
8
EYETEX (Kannada Characters)(word)
296913
61474
3
9
EYETEX (Tamil Characters)(word)
296914
61474
3
10
EYETEX (Malayalam Character) 296915 61474 3 11
EYETEX (Word Per Se) 303087
21975
3
12
EYETEX (Label)
412736
11383
3
13
EYETEX (Label)
412737
11383
3
14
EYETEX Kumkum 412738 11383 3 15
EYETEX Kumkum (LABEL)
412748
11383
3
16
EYETEX Kumkum (Label) 412749
11383
3
17
EYETEX Kumkum (Label)
412754
11383
3
18
EYETEX POORNIMA (Word Per Se) 527083B
32990
3
19
EYETEX DIVYAA Kumkum
527084
32990
3
20
EYETEX DIVYAA
527085B
32990
3
21
EYETEX POORNIMA Kumkum (L) 1261111 11404 3 22
EYETEX DAZLLER 1261112 11404 3
23
EYETEX POORNIMA Kumkum (L)
1261113
11404
3
24
EYETEX PALLAVI Kumkum (L)
1261114
11404
3
25
EYETEX POORNIMA Kumkum (L) 1261115 11404 3 26
EYETEX PALLAVI (Word Per Se) 1261116 11404
3
27
EYETEX DAZLLER (Word Per Se)
1261117
11404
3
4. It is the claim of the plaintiff that in April 2010, an advertisement issued by the defendant appeared in a magazine, which indicated that they were marketing a nail polish with the trade mark "Daily Dazzler". Therefore, complaining that the defendant is guilty of infringement and passing off, the plaintiff has come up with the above suit and the applications for injunction.
5. The plaintiff has filed as document No.1 series, the copies of the cartons in which their products are sold with the label which contain the words "EYETEX DAZLLER" written in an artistic manner. The plaintiff has also filed the certificates of registration of their trade marks bearing Nos.1261112 and 1261117, as document Nos.2 and 3. These documents disclose that the plaintiff has obtained registration of the word "EYETEX DAZLLER" in respect of Nail Glitter and Nail Polish under Class 3 with effect from 14.01.2004 and had also obtained registration of a device which includes the words "EYETEX DAZLLER". The advertisement issued by the defendant in a magazine titled "New Woman" is filed as document No.4. Document No.4 shows the picture of a bottle in which the nail enamel marketed by the defendant is disp
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