Prior User of 'ECLAT' Mark Gets Injunction; Defendant's 'ECLAT SUPERIOR' Registration Prima Facie Illegal: Bombay High Court - 2025-05-08

Bombay High Court Grants Interim Injunction in 'ECLAT' Trademark Dispute, Cites Prior Use and Defendant's Dishonest Adoption

Mumbai: The Bombay High Court, in a significant interim order, has restrained Sandeep Udai Naraian Gupta (Defendant No.1) from using the trademark 'ECLAT SUPERIOR' for cosmetic products, finding it prima facie infringes upon Dr. Ashok M. Bhat 's (Plaintiff) long-standing registered trademark 'ECLAT'. Justice ManishPitale , presiding over the Commercial Division, held that the plaintiff established a strong prima facie case for both trademark infringement and passing off, emphasizing the plaintiff's prior use since 1935 and the defendant's apparent dishonest adoption of a deceptively similar mark.

Background of the Dispute

The plaintiff, Dr. Ashok M. Bhat , asserted intellectual property rights over the mark 'ECLAT', used for cosmetic preparations like face cream and foundation. The plaintiff claimed user of the mark since 1935 through predecessors, with registration dating back to December 16, 1946. The suit was filed after the plaintiff discovered Defendant No.1's mark 'ECLAT SUPERIOR' and its application for registration in September 2020, with the defendant claiming use since 2016.

Despite the plaintiff's opposition, Defendant No.1 secured registration for 'ECLAT SUPERIOR' in August 2022, after the Registrar deemed the plaintiff's opposition abandoned due to alleged non-filing of evidence—a claim disputed by the plaintiff. The plaintiff filed for rectification of this registration in September 2024 and initiated the present suit upon finding the defendant's products on e-commerce sites in August 2024.

Key Arguments

Plaintiff's Submissions (Argued by Mr. Hiren Kamod ):

* Prior Use and Registration: Plaintiff and predecessors used 'ECLAT' for over 70 years before Defendant No.1's entry.

* Infringement and Passing Off: 'ECLAT SUPERIOR' is deceptively similar to 'ECLAT', with 'ECLAT' being the essential feature of both.

* Defendant's Registration Ex-Facie Illegal: Invoked the Full Bench judgment in Lupin Ltd. vs. Johnson and Johnson , arguing Defendant No.1's registration was fraudulent and ought to shock the court's conscience, especially since the Registrar failed to cite the plaintiff's prior registered mark.

* Inconsistent Stand by Defendant: Defendant No.1 claimed 'ECLAT SUPERIOR' was coined before the Trade Mark Registry but argued 'ECLAT' was generic before the Court, constituting "blowing hot and cold" (citing Hygiene Research Institute Private Limited ).

* 'ECLAT' Not Generic: Argued 'ECLAT' is of French origin and not commonly understood in India (citing Laboratories Griffon Private Limited ).

* No Acquiescence: Mere delay in filing rectification doesn't amount to acquiescence, especially as another opposition by the plaintiff was pending (citing Torrent Pharmaceuticals vs. Wockhardt Limited ).

* Dishonest Adoption: Defendant No.1, being in the same industry, could not have been unaware of the plaintiff's established mark.

Defendant No.1's Contentions (Argued by Mr. Jehan Mehta ):

* Valid Registration: Defendant No.1 holds a valid registration for 'ECLAT SUPERIOR'.

* Plaintiff's Mark is a Label: Argued plaintiff's registration is for a label mark (including a sketch of mountains, etc.) and not exclusively for the word 'ECLAT'.

* 'ECLAT' is Generic/Common to Trade: Claimed 'ECLAT' means "glow" and is widely used in the cosmetics industry.

* No Confusion: The marks, when compared as a whole, are not confusing.

* Acquiescence and Delay: Plaintiff's two-year delay in filing for rectification after defendant's registration amounts to acquiescence, especially given defendant's significantly higher sales turnover.

* Balance of Convenience: Favors defendant due to extensive use and goodwill built since 2016.

Court's Prima Facie Findings and Reasoning

Justice Pitale meticulously analyzed the arguments and evidence, arriving at several prima facie conclusions favoring the plaintiff:

Prior Use and Goodwill: The Court found sufficient material to show continuous commercial use of 'ECLAT' by the plaintiff and its predecessor since 1935, establishing proprietary rights and goodwill. > "The applicant has placed on record sufficient material to show that its predecessor and thereafter, the applicant itself has continuously commercially used the said trade mark from the year 1935, with registration dating back to 16.12.1946." (Para 34)

'ECLAT' as the Essential Feature: The Court determined that 'ECLAT' was indeed the most prominent and essential feature of the plaintiff's registered label mark. > "this Court finds substance in the assertion made on behalf of the applicant that the word ‘ Eclat ’ is indeed the most prominent feature." (Para 36)

Defendant's Registration Suspect (Lupin Test Satisfied): The Court found that the plaintiff made a strong prima facie case that Defendant No.1's registration was ex-facie illegal and fraudulent, satisfying the high threshold set in Lupin Ltd. vs. Johnson and Johnson . > "It is found that before the Trade Mark Registry, the mark of applicant, of which the leading and essential feature is also ‘ Eclat ’, was not even cited and it can be said that the registration itself is prima facie found to be illegal and fraudulent. In that sense, a strong prima facie case is made out to claim that the registration ought to shock the conscience of the Court." (Para 57)

Rejection of 'Generic' and 'Common to Trade' Defenses: The Court held that Defendant No.1 failed to provide cogent evidence that 'ECLAT' was common to trade or widely understood as "glow" in India. > "The defendant No.1 has failed to place any such material on record in the present case... This Court is unable to agree with defendant No.1 that for a common person in India, ‘ Eclat ’ would actually mean ‘glow’." (Para 44, 47)

Defendant "Blowing Hot and Cold": The Court noted the defendant's contradictory stance on the nature of 'ECLAT' as diluting its defense. > "This amounts to blowing hot and cold at the same time and this is frowned upon by this Court in numerous orders." (Para 46)

No Acquiescence by Plaintiff: The delay in filing for rectification was deemed "tardiness" and not a "positive act" indicative of acquiescence, especially since the plaintiff was actively pursuing another opposition against the defendant. The Court noted that Essel Propack Ltd. vs. Essel Kitchenware Ltd. , relied upon by the defendant, is no longer good law post Torrent Pharmaceuticals vs. Wockhardt Limited . > "merely because the plaintiff fails to take any steps to assert its statutory rights or tardiness on the part of the plaintiff, cannot be a ground to claim acquiescence." (Para 53, citing Torrent Pharmaceuticals )

Dishonest Adoption by Defendant: The Court found it "unbelievable" that Defendant No.1 was unaware of the plaintiff's mark and cited Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd. & anr. , stating that a party applying for registration does so at its own risk if it fails to conduct proper searches. > "This also leads to a prima facie conclusion about dishonesty on the part of defendant No.1 in adopting the impugned trade mark." (Para 67)

Passing-Off Test Satisfied: The Court found the classic three-pronged test for passing-off (goodwill, misrepresentation, and damage) was met by the plaintiff.

Balance of Convenience: The Court rejected the defendant's argument that its higher sales turnover tilted the balance of convenience in its favor, especially when the adoption was prima facie dishonest. > "If such a contention is accepted, it would pave the way for big players in the market to...dishonestly infringe a trade mark...and then, turn around to say that due to lower sales figures of the proprietor...balance of convenience should be held in favour of such a party...This Court is unable to accept such a proposition." (Para 71)

The Ruling

Finding a strong prima facie case, irreparable loss to the plaintiff, and balance of convenience in the plaintiff's favor, the Court allowed the interim application. It restrained the defendants from manufacturing, marketing, distributing, selling, or using the impugned mark 'ECLAT SUPERIOR' or any deceptively similar mark, and from using the domain name www.eclatsuperior.com in relation to their cosmetic goods, pending the final disposal of the suit.

This order underscores the robust protection afforded to prior users of trademarks and serves as a caution against adopting marks that are deceptively similar to established brands, even if subsequent registration is obtained under questionable circumstances.