Full Text
HIGH COURT OF DELHI
Date of Decision: 14th December, 2022
M/S TEJ RAM DHARAM PAUL & ANR. ..... Plaintiffs
Through: Mr. Saurabh Kirpal, Senior Advocate with Mr. Anirudh Bakhru, Mr. Shailen Bhatia, Ms. Ekta Nayyar, Mr. Arnav Chatterjee, Mr. Nikhil Arora, Mr. Sheril Bhatia, Mr. Raghav Bhalla and Mr. Nakul Mehta, Advocates.
Through: Mr. Rajshekhar Rao, Senior Advocate with Mr. Ankur Sangal, Ms. Sucheta Roy, Mr. Kiratraj Sadana and Mr. Shashwat Rakshit, Advocates.
JUDGMENT
I.A. No. 20717/2022 (u/Order XXXIX Rules 1 and 2 r/w Section 151 of
Code of Civil Procedure, 1908)
1. The Plaintiffs have filed the instant suit seeking, inter alia, permanent injunction against passing off and restraining infringement of registered trademark and copyright, delivery up and damages, among other ancillary reliefs. By way of above-captioned application, Plaintiffs seek an interim injunction against Defendants, pending adjudication of the suit. After being afforded an opportunity vide order dated 08th December, 2022, Defendants have filed a reply to the application along with relevant documents, however, pleadings in the suit are yet to be completed.
2. Plaintiff No. 1 is engaged in the business of manufacturing and trading in chewing tobacco, zarda, mouth fresheners etc. under its registered copyright and trademark “COOL LIP” and “LIP” and other variations thereof. Plaintiff No. 2 is utilising “COOL LIP” mark under a license from Plaintiff No. 1. Details of registrations in India and other countries have been listed in the plaint at paragraphs No. 7 and 12, respectively. Besides these registrations, several registrations of variations of “COOL LIP” and “LIP” are pending before the Trade Marks Registry.[1]
3. The packaging and trade dress of Plaintiffs’ products is as under: Mentioned in paragraph No. 9 of the plaint.
4. Plaintiffs claim that “COOL LIP” has been in long continued use since 2009 and they have expended heavily towards advertisement/ promotion of the marks and generated considerable revenue, as is seen from yearly sales figures from the year 2010-11 onwards, mentioned in paragraph No. 17 of the plaint and documents annexed therewith.
5. On the other hand, Defendant No. 1 and its partners (Defendants NO. 2 to 4) are registered proprietors of trademark “ICE FEEL”. Defendant NO. 5 is registered owner of the mark “LIP LOCK”, which has been assigned in favour of Defendant No. 1/ firm. Impugned marks of Defendants are as follows:
6. Parties have been aware of each other’s presence since 2019. Plaintiffs first came across Defendant No. 1’s trademark application NO. 4037026 for the mark “ICE LIP” and opposed the same. Since then, Plaintiff No. 1 and Defendant No. 1 have filed notices of opposition and rectification petitions against each other’s trademarks. In 2022, litigation saga commenced, with Defendant No. 1 filing Original Suit No. 6260/2022 before Additional City Civil Judge, Bangalore seeking, inter alia, permanent injunction against Plaintiff No. 1 from infringing “ICE FEEL” and “LIP LOCK” marks and trade dress [hereinafter, “Bangalore suit”]. Therein vide order dated 28th September, 2022, an ex-parte interim injunction was granted restraining Plaintiff No. 1 from using “COOL LIP”. Later, on an application filed by Plaintiff No. 1,[2] injunction was vacated on 19th November, 2022 and Defendant’s interlocutory application was dismissed. The parties are now in appeal, but reportedly, there is no stay on the dismissal order. I.A. No. 7 in O.S. 6260/2022.
7. This time, it is the Plaintiffs (who are Defendants in the Bangalore suit), seeking an interim injunction against Defendants from infringing their registered marks.
8. Mr. Saurabh Kirpal, Senior Counsel for Plaintiffs, argues that this is a clear case of infringement as the impugned marks are deceptively similar to Plaintiff’s registered marks, an incontrovertible and admitted fact, duly acknowledged by Defendant No. 1 in its plaint in Bangalore suit. He makes it clear that although Plaintiff No. 1 (Defendant therein) has successfully opposed the injunction application, it did not dispute the deceptive similarity between the competing marks; it succeeded by proving prior use than that of Defendant No. 1. Indeed, Plaintiff No. 1 is the prior adopter and user of the marks and has been using its registered marks since 2009, when Defendant No. 1/ firm did not even exist. Defendants have dishonestly and malafidely adopted a deceptively similar mark and identical trade dress, and filed the Bangalore suit to enforce rights, which do not exist. Defendants have failed to produce any documentary evidence to support adoption/ use of impugned marks, prior to that of Plaintiffs. The website of Defendant No. 1 [http://ospindia.net] also does not show products sold under the mark “LIPLOCK” or the alleged packaging/ trade dress of “ICE FEEL” products. Thus, Defendants’ claim of prior use remains unsubstantiated, as held by court in Bangalore in order dated 19th November, 2022. On behalf of Defendants
9. Mr. Rajshekhar Rao, Senior Counsel for Defendants, at the outset, strongly asserts that this Court does not have territorial jurisdiction to entertain the present suit. He argues that Defendant No. 1’s products are not sold within the territory of Delhi; Plaintiffs have failed to produce any document showing sale in Delhi and made bald assertions in paragraphs NO. 59 and 60 of the plaint to file a suit in Delhi. Under Section 20(3) of the Code of Civil Procedure, 1908 [“CPC”], territorial jurisdiction of this Court can be invoked only when cause of action, wholly or partly, arises within its territory. Since no goods are sold or offered for sale in Delhi, there is no cause of action in Delhi. Further, under Section 134 of the Trademarks Act, 1999 [hereinafter, "TM Act"] and Section 62(2) of the Copyright Act, 1957, an aggrieved registered proprietor can sue for infringement of trademark/ copyright at its principal place of business. Plaintiff No. 1 – registered owner of marks has its head office in Maur Mandi, Punjab and thus, only the courts of competent jurisdiction in Punjab would have jurisdiction under the afore-noted provisions. Merely because Plaintiff No. 1 has a branch office in Delhi, does not entitle them to invoke jurisdiction of this Court. On this proposition, reliance is placed upon Ultra Home Constructions Pvt. Ltd. v. Purushottam Kumar Chaubey and Ors.[3] Further, it is contended that there is no justifiable reason for not approaching the court in Bangalore, which is presently in seisin of the inter-se dispute relating to conflicting registered marks; clearly, Plaintiffs are engaging in forum shopping by filing a fresh suit before a Court which has no territorial jurisdiction. As regards Plaintiffs’ reliance on website of Defendant No. 1 as a ground to invoke this Court’s jurisdiction, Mr. Rao clarifies that said website is merely informational and not interactive and therefore plea of online presence is a clever drafting attempt to create a cause of action within the bounds of territorial jurisdiction of this Court, where none exists. Thus, this Court should decline to entertain present suit and dismiss the interim application.
10. Additionally, it is argued that there is an unexplained delay on the part of Plaintiffs in initiating the misconceived action against the Defendants, and the same disentitles them from seeking an injunction. Having regard to the provisions of Order 39 of CPC, there is no compelling reason for grant of interlocutory injunction. Plaintiffs have consciously not contested Defendants' use of impugned marks since 2019 and there has been no change in circumstances since then, which would create a ground to grant an injunction. In paragraph No. 59 of the plaint, Plaintiffs have averred that they became aware of alleged infringing activities of Defendants in 2019 however, there is no convincing reason for the delay of three years in filing the instant suit, which is only a counter-blast to Bangalore suit filed by Defendant No. 1. Moreover, as the grounds and reasons urged by the Plaintiffs for seeking an injunction are also their defences to the Bangalore suit, the subject matter of the present suit is evidently, materially and substantially similar to Bangalore suit, which indubitably, was filed prior in time. Thus, present suit is liable to be stayed in terms of Section 10 of CPC.
11. Without prejudice to the above, Mr. Rao submits that Defendant No. 1 has been using impugned mark “ICE FEEL” much prior in time through its predecessor-in-title viz. Mr. Kampic Matjaz, who assigned the mark “EIS FÜHLEN” (English translation – “ICE FEEL”) and the label/ artistic work viz., to Defendant vide assignment deed dated 12th November, 2018 [hereinafter, " Assignment Deed"]. Mr. Matjaz has been using said mark since 2001 and thus, by virtue of the assignment, Defendant No. 1 has been using the mark and trade dress of products under “ICE FEEL” since 2001 i.e., prior to Plaintiff No. 1. To buttress this submission, reliance is also placed upon an invoice dated 30th January, 2002 for sale of “EIS FÜHLEN” products [hereinafter, " Invoice"].
12. On the issue of findings of the court in Bangalore adverse to Defendants, Mr. Rao points out that same can only be considered as a prima facie view; nevertheless, order dated 19th November, 2022 has been assailed before the High Court of Karnataka, wherein notice has been issued to Plaintiffs, and therefore matter is still at large. He further refutes Plaintiffs’ claims that pleadings in the Bangalore suit amount to admission of deceptive similarity of marks by Defendant No. 1. He emphasises that Defendant NO. 1 had claimed similarity in trade dress of and and not in word marks “COOL LIP” and “ICE FEEL”. Defendant No. 1’s predecessor-in-title had created unique trade dress/ packaging comprising of combinations of different shades of blue and grey, stylized tangled logo in the middle; continuous and long use by Defendant No. 1 has resulted in substantial goodwill and reputation and no interim relief should be granted. Plaintiffs have failed to satisfy the essential pre-conditions for grant of injunction set-out in the CPC and also the legal principles governing grant of interim injunctions. Therefore, parties must be afforded an opportunity to lead evidence.
REJOINDER SUBMISSIONS
13. Qua territorial jurisdiction, Mr. Kirpal argues that the issue has to be determined on the basis of pleadings alone and Defendants’ denial cannot be a guiding factor. Reliance is placed upon M/s. Maan Pharmaceuticals Ltd. v. M/s. Mindwave Healthcare Pvt. Ltd.[4] and Nirex Industries (P.) Ltd. v. Man Chand Foot Wears Industries.[5]
14. On delay in filing of present suit, Mr. Kirpal firstly emphasises that there is no delay and secondly, relying on judgements in M/s. Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors.,[6] Pankaj Goel v. Dabur India Ltd.[7] and Automatic Electric Limited v. R.K. Dhawan and Anr.,[8] he argues that delay in instituting an action for infringement does not preclude the Plaintiffs from seeking an injunction.
15. He also challenges the veracity of Assignment Deed stating that the same is neither notarised, nor has it been signed or attested by the witnesses. In the interim order dated 19th November, 2022, Bangalore court has noted Neutral citation: 2022/DHC/003604. that there is no proof of such assignment. Thus, documents are forged and an afterthought, evidencing manipulation by Defendants to mislead the Court. Given the fraudulent conduct of Defendant No. 1, delay and laches, being a defence in equity, is not available to them.
16. On dissimilarity in reliefs sought by the Defendants in the Bangalore suit, Mr. Kirpal draws attention of the Court to averments made in the plaint in Bangalore suit to argue that Defendant No. 1 had sued for infringement of both, the trade dress as well as the trademarks.
17. Mr. Kirpal vociferously argues that Defendants are attempting to steal a march on the Plaintiffs by filing a malicious, frivolous and misconceived suit for injunction, aimed to bring operation of Plaintiff-companies to a standstill. In view of the admission in Bangalore suit that Plaintiff’s registered marks are deceptively similar to theirs, Defendants are estopped from contending to the contrary. Reliance is placed upon the judgment of this Court in Peps Industries Pvt. Ltd. v. Kurlon Limited.[9] ANALYSIS On territorial jurisdiction
18. Mr. Rao’s objection to jurisdiction of this Court is founded primarily on two grounds: first, no cause of action has arisen in Delhi as the impugned products are not sold in Delhi; second, Plaintiff No. 1 is not actually and voluntarily residing, carrying on business or personally working for gain in Delhi, and therefore benefit of Section 134 of the TM Act or Section 62(2) of Copyright Act is not available to Plaintiffs.
19. The Supreme Court in Indian Performing Rights Society Ltd. v. Sanjay Dalia has summarised the legal position on question of jurisdiction in infringement cases, as under: 10
20. Relying upon the afore-noted judgement in Sanjay Dalia (Supra), Division Bench of this Court in Ultra Home (Supra) has very succinctly set out the law on this aspect, relevant portion whereof is reproduced hereunder:
21. Now, coming to pleadings and cause of action narrated in paragraphs No. 59 and 60 of the plaint, extracted hereinbelow:
CAUSE OF ACTION
59. That the cause of action first arose in March, 2019 when the Plaintiff No. 1 came across the dishonest and mala fide trade mark application of the Defendant No. 1 under no. 4037026 in class 34 for trade mark ICE LIP. The Plaintiff no. 1 immediately preferred a Notice of Opposition against the impugned application of the Defendant NO. 1. However, at that stage, no goods of the Defendants were available in the market. Thereafter, the cause of action again arose in October, 2022 when the Plaintiff No. 1 received knowledge of the filing of the false and frivolous Suit by the Defendant No. 1 before the Ld. Additional City Civil Judge, Bengaluru and the passing of the ex-parte ad-interim injunction order dated 28.09.2022 by the Ld. Bengaluru Court and the same has been vacated by order dated 19.11.2022. During the case, the Plaintiff came to know that the Defendant No. 1 is seeking to utilize the vacuum created in the market by operation of stay order on the trade mark COOL LIP and the Defendant in month of October-November, 2022 introduced the goods under the trade mark ICE FEEL in identical/ deceptively similar packaging. Hence, the cause of action has arisen in October, 2022.
JURISDICTION
60. That the Hon’ble Court has territorial jurisdiction to entertain and try the present Suit. The goods of the Plaintiffs are available in entire Delhi-NCR besides Pan-India. The Defendant No. 5 has acquired registration for the identical trade mark LIPLOCK and the same has been acquired in the appropriate office of the Ld. Registrar of Trade Marks in Delhi. The Hon’ble Court has jurisdiction under Section 20(c) of the Civil Procedure Code, 1908. This Hon’ble Court also has jurisdiction under Section 134 of the Trade Marks Act, 1999. The Plaintiff No. 1 has its office in Delhi and the Plaintiff No. 2 is also having its registered office in Delhi. The Hon’ble Court has jurisdiction under Section 134 (2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957. The goods of the Defendants bearing the impugned trade mark are available in Delhi at various Pan shops and hence, the Hon’ble Court has jurisdiction. The Defendant has during the month of October, 2022 flooded the market with the impugned goods and same are available in Delhi in shops in Karol Bagh, New Delhi, Shahdara, Vikas Marg, Khan Market, New Delhi. Hence, this Hon’ble Court has exclusive jurisdiction to entertain the present Suit.”
22. Admittedly, Plaintiff No. 2 has its principal place of business in Delhi, but it is only a licensee of Plaintiff No. 1, and therefore that may not be material for the purpose of deciding jurisdiction. Plaintiff No. 1, the registered proprietor of mark “COOL LIP”, has its principal/ head office at Maur Mandi, Punjab, but it also has a subordinate/ branch office in Delhi. Plaintiffs have averred that cause of action arose in Delhi inasmuch as the infringing goods have been found to be sold in various markets and areas of Delhi. It is well-settled that material facts pleaded in the plaint are to be taken as correct and veracity thereof can be conclusively determined only after trial. Since Plaintiffs have made a positive statement that infringing goods have been found within territorial jurisdiction of Delhi, at this stage, the Court must proceed assuming these statements to be correct. Whether in fact such goods have been found in Delhi shall be established through evidence led by Plaintiff, during trial.11
23. Thus, present suit falls under third category of cases noted in aforeextracted paragraph of Ultra Homes (Supra). Plaintiff No. 1 has its principal office at one place (Punjab) and subordinate office at another (Delhi); however, since cause of action, as pleaded in the plaint, arose within territorial bounds of court in Delhi, Plaintiff No. 1 had an option to sue either in Delhi or Punjab, and it chose to do so in Delhi. Therefore, for the Court to assume jurisdiction, averments in the plaint are sufficient and meeting the requirements of law. Merits of Defendants’ defence cannot be elaborated and weighed in for the purpose of deciding this application. On delay
24. The Court does not find merit in the objection of delay to reject the application. In paragraph No. 59 of the plaint (extracted above), although it is mentioned that Plaintiffs became aware of Defendants’ intended use of impugned mark in 2019, however, it is also explained that they decided to file the instant suit now, as earlier no goods of the Defendants were available in the market. In the Court’s opinion, litigation initiated by See: Exphar SA and Anr. v. Eupharma Laboratories and Anr. (2004) 3 SCC 688; M/s. RSPL Limited v. Mukesh Sharma and Anr., 2016 SCC OnLine Del 4285; Dassault Systemes S.E. and Anr. v. Defendant No. 1 is sufficient cause of action for the Plaintiffs to file the present case. That said, it must also be noted that courts have consistently held that right of a registered proprietor to enforce remedy against infringement shall not be defeated solely due to delay in initiation of action, after knowledge of infringement.12 In circumstances noted above, merely because Plaintiffs became aware of Defendants’ intended use of impugned mark at an earlier point of time, cannot be read adversely against them. Infringement and passing off are a recurring cause of action and therefore, this objection of the Defendants is meritless.13 On infringement of Plaintiff’s registered marks
25. First and foremost, litigation history between the parties needs to be briefly discussed. In the Bangalore suit, Defendant No. 1 (as Plaintiff) raised the same grounds and contentions on the issue of deceptive similarity as Plaintiffs herein are urging, same is evident from following pleadings made in the plaint in Bangalore suit:
26. Thus, there is an admission on the part of Defendant No. 1 to the extent of deceptive similarity between conflicting marks. Whether such an admission would amount to an estoppel from making a contrary submission, is a question that requires further deliberation, however, at this stage, stand taken by Defendant No. 1 in Bangalore suit is sufficient for the Court to take a prima facie view on the matter. That said, before adverting to afore-noted rival contentions on the above-captioned issue, a comparison chart of Plaintiffs’ and Defendants’ marks would give clarity on the dispute: DEVICE MARK/ LABEL/ TRADE DRESS Particulars Mark Registration status Plaintiffs’ mark Registered in class 31 and Registration Application in class 34 pending (opposed by third party) Registered in class 34 (rectification filed by third party) and class 31 Defendants’ mark Registration Application in class 34 pending (opposed by Plaintiff NO. 1) Unregistered WORD MARK Particulars Mark Registration status Plaintiffs’ mark “COOL LIP” Registered in class 31 and Registration Application in class 34 pending (opposed by third party) “LIP” Registered in class 31 Defendants’ marks “ICE FEEL” Registered in class 34 Plaintiff No. 1) “LIP LOCK” Registered in class 34 Plaintiff No. 1)
27. Manifestly, parties before the Court possess registrations of their respective marks, entitling them to benefit of Section 31(1) of the TM Act. The TM Act also contemplates a situation where two parties can possess registration of marks which are “identical with or nearly resemble each other” without amounting to infringement, and in such cases, exclusive right to use of any of the marks shall not be deemed to have been acquired by any one of them as against the other.14 Registration is however, only prima facie evidence of validity, and can be rebutted by way of evidence; provisions under Sections 28(3) and 30(2)(e) of TM Act do not bar filing of a suit for injunction where the two marks are registered. Further, on account of interplay of Sections 27, 28 and 34 of TM Act, the rights of a registered proprietor are not indefeasible and are subservient to rights of a prior user.15 On this facet, it also merits mentioning that Plaintiff No. 1 has filed: (a) rectification to Defendant No. 1’s registration of word mark “ICE FEEL” (under application No. 4037025), and (b) opposition to application NO. 4860937 for registration of trade dress/ device mark “ICE FEEL” by Defendant No. 1. Since rectification and opposition proceedings are pending before the concerned authority, determination of invalidity of registration of “ICE FEEL” in favour of Defendant No. 1 will necessarily have to await its outcome. However, in light of the afore-noted legal and factual position, pending final adjudication of the suit, Court can proceed to form a prima facie view as to whether impugned marks are infringing Plaintiff’s registered marks. Prior use
28. For injuncting Defendants from using impugned marks, it is crucial to See: Section 28(3) and Section 30(2)(e) of the Trademarks Act, 1999. See: Shamrock Geoscience Ltd. and Anr. v. Kaba Infratech Private Limited and Anr., Neutral citation: 2022/DHC/004053; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 and N.R. Dongre and Ors. v. Whirlpool Corp and Anr., (1995) SCC OnLine Del 310. determine which of the parties is the ‘prior user’ of the conflicting marks. Plaintiff No. 1 first obtained registration of “COOL LIP” wordmark w.e.f 10th September, 2008 in class 31 on a proposed-to-be-used basis. Plaintiffs have placed on record invoices dating back to 2010 as also advertisements in various magazines to demonstrate long and continued use of Plaintiff’s registered marks. Per contra, Defendant No. 1 claims use since February, 2001 by virtue of Assignment Deed executed between Mr. Matjaz – a Slovenian national (assignor) and Defendant No. 1 (assignee). The Court has perused the Assignment Deed and finds merit in the contentions of Mr. Kirpal that the veracity of the Invoice and the Assignment Deed is prima facie doubtful. The insufficiency of consideration for assignment of mark “EIS FÜHLEN” also casts doubt on its authenticity; Mr. Matjaz has absolutely assigned/ transferred said mark for a modest sum of €100.00 (presently amounting to about Rs. 8,757). Further, Assignment Deed bears the stamp of a company named Combitrans Logistika, who has not been defined as a signatory/party to the Assignment Deed. It is also noted that Invoice has also been issued in the same name. The role/ authority of Combitrans Logistika company in assignment of “COOL LIP” mark by Mr. Matjaz remains ambiguous and therefore, proprietary rights of Mr. Matjaz over the assigned mark is not convincingly demonstrated. Mr. Kirpal’s argument that Invoice for €40,000,00/- dated 30th January, 2002 issued in Slovenia, is suspicious as Slovenia adopted Euro as a currency only in January, 2007, also has considerable merit. In a nutshell, the documents relied on by Defendants do not inspire confidence and cannot be accepted on face value at this juncture.
29. That apart, assignment deed relied upon is of the mark “EIS FÜHLEN” and not “ICE FEEL”. Although it is argued that “EIS FÜHLEN” translates to “ICE FEEL” in English, the assignment cannot be interpreted for “ICE FEEL” mark. Therefore, prima facie, for the mark “ICE FEEL”, Mr. Matjaz cannot be considered as predecessor-in-title and interest. The goodwill generated by Mr. Matjaz from use of “EIS FÜHLEN” cannot be said to have accrued in favour of Defendant No. 1, as alleged. Further, the material consideration is the use of impugned mark by Defendant No. 1 in India. In this regard, it is noticed that Defendant No. 1’s application for registration of “ICE FEEL” mark (bearing No. 4037025), is dated 25th December, 2018 on a proposed-to-be-used basis. Based on documents placed on record, Court is unable to discern use of said mark by Defendant No. 1, prior to 03rd May, 2021. Since this is only an interlocutory stage, no final or firm view needs to be formed, but on a prima facie basis, it can be safely concluded that the claim of prior use by the Defendants, has remained unproved. Similarity of marks
30. Plaintiff No. 1’s use of its registered marks precedes Defendant NO. 1’s use of its registered mark. What now falls for consideration is whether the concerned marks are deceptively similar, which may cause confusion to average consumers.
31. On a comparison of “COOL LIP” mark with “ICE FEEL” and “LIPLOCK” marks, it manifests that trade dress/ packaging of products bearing “COOL LIP” and “ICE FEEL” and “LIPLOCK” have several commonalities, which are likely to create confusion amongst the consumers. The difference in the shade of blue colour is immaterial as the overall colour scheme of blue and white colours is identical. The pattern and placement of trapezium shaped box containing the brand name/ wordmark [“COOL LIP” / “ICE FEEL”/ “LIPLOCK”], though angled differently, look alike. The phrase “FILTER TABBAQ” has also been written in the same font, placed in a rectangular box and positioned similarly in all products. Pertinently, in the Bangalore suit, Defendant No. 1 has acknowledged that trade dress of “ICE FEEL” is deceptively similar to that of “COOL LIP”, and trade dress and word mark “LIPLOCK” is deceptively similar to trade dress and word mark “COOL LIP” of Plaintiffs. Thus, Plaintiffs have made out a prima facie case of infringement. However, to avoid confusion, it must be clarified that the prominent feature in the trade dress are word marks “COOL LIP” and “ICE FEEL”; which are not phonetically or visually similar, and to that extent, the Court cannot find Defendants’ mark “ICE FEEL” as infringing “COOL LIP”. RELIEF
32. For the foregoing reasons, Plaintiffs have made out a strong prima facie case for an injunction against Defendants. There are substantial similarities in Plaintiff No. 1’s registered trade dress of “COOL LIP” and Defendants’ unregistered trade dress of “ICE FEEL” and “LIPLOCK”. In view of the admissions made by Defendant No.1, there is also deceptive similarity between registered word marks “COOL LIP” and “LIPLOCK”. Further, as Defendant No. 1 is a recent entrant in the market and Plaintiffs have been using their marks much prior in time, balance of convenience lies in favour of the Plaintiffs; irreparable loss would be caused to them if Defendants are not restrained from using the impugned marks.
33. Accordingly, Defendants and its directors, employees, officers, servants, agents and all others, acting for and on its behalf are restrained from manufacturing, using, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in: (a) trade dress/ device mark viz. "ICE FEEL"/ (b) trade dress/ device mark viz. "LIPLOCK"/
(c) word mark “LIPLOCK” or any other marks which are identical and/or deceptively similar to said marks, in respect of all kinds of tobacco, filter tabbaq, khaini, mouth freshner, pan masalas and which amounts to infringement or passing off or dilution thereof.
34. With above directions, the present application is allowed and disposed of. Postscript
35. At the time of closing of arguments, Mr. Rao indicated Defendants' intentions to resolve the issue by changing/ altering/ modifying their trade dress. He has shown the proposed label/ packaging/ trade dress to the Court as well as Mr. Kirpal. In case parties are willing to explore amicable settlement, counsel must encourage them to move forward in that direction.
36. List before the Joint Registrar for completion of pleadings on 01st February, 2023 and before the Court on 08th May, 2023.