GUFIC PVT. LTD. & ANOTHER vs. CLINIQUE LABORATORIES, LLC & ANOTHER

* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (OS) No. 222/2009
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Reserved on : May 27 , 2009
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Date of decision : May 29 , 2009
GUFIC PVT. LTD. & ANOTHER . ...Appellant
Through : Mr. Sudhir Chandra, Sr. Advocate with
Mr. Abhinav Vasisht, Ms. Harshita Priyanka,
Ms. Depbjyoti Bhattacharya, Ms. Girija Krishan
Varma, Advocates

VERSUS

CLINIQUE LABORATORIES, LLC & ANOTHER ...Respondent
Through : Mr. Sandeep Sethi, Sr. Advocate with
Ms. Anuradha Salhotra, Ms. Reetika Walia,
Mr. Sumit Wadhwa and Mr. Sindhu Sinha,
Advocates
CORAM:
HON’BLE MR. JUSTICE MUKUL MUDGAL
HON’BLE MR. JUSTICE VALMIKI J.MEHTA

1. Whether the Reporters of local papers may be allowed to see
the judgment? No

2. To be referred to the Reporter or not? No

3. Whether the judgment should be reported in the Digest?No
% ORDER
MUKUL MUDGAL J

1. The two trade marks in question are “Clinique” of the respondent and “Skin
Cliniq Stretch Nil” of the appellant. By the impugned judgment the appellant has
FAO (OS) No.222/09 Page 1


been restrained from the use of the word “Cliniq” as part of its trade mark. The
learned Single Judge has held that use of the word “Cliniq” by the appellant as a
part of its trade mark amounts to infringement and passing off of the trade mark
“Clinique” of the respondent.
2. We are of the opinion that the impugned judgment is liable to be stayed for
the following reasons :-
(A) The two trade marks are not identical. One trade mark is Clinique and the
other trademark is Skin Cliniq Stretch Nil. Even if the action is one for
infringement, when however the impugned trade mark is not identical with the
registered trade mark, the issue to be looked at is that of deceptive similarity, and
for determining deceptive similarity, for an infringement action the tests which are
applied are the same tests as those of passing off. This position is now well
established by the two judgments of the Supreme Court as given below. In the case
of Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 it
was held in para 7 as under :-
“ In an action for infringement where the defendant‟s trade mark is
identical with the plaintiff‟s mark, the Court will not enquire whether the
infringement is such as is likely to deceive or cause confusion. But where
the alleged infringement consists of using not the exact mark on the
register, but something similar to it, the test of infringement is the same as
in an action for passing-off. In other words, the test as to likelihood of
confusion or deception arising from similarity of marks is the same both in
infringement and passing-off actions. ”
(Emphasis added)
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The ratio of the abovementioned case was also followed recently by the
Hon‟ble Supreme Court in its case of Ramdev Food Products (P) Ltd. v.
Arvindbhai Rambhai Patel,(2006) 8 SCC 726, at page 765 where in para 91 it is
stated as under :-
“ Although the defendant may not be using the actual trade mark of the plaintiff,
the get-up of the defendant‟s goods may be so much like the plaintiff‟s that a
clear case of passing-off could be proved. It is also possible that the defendant
may be using the plaintiff‟s mark, the get-up of the defendant‟s goods may be so
different from the get-up of the plaintiff‟s goods and the prices also may be so
different that there would be no probability of deception to the public. However,
in an infringement action, an injunction would be issued if it is proved that the
defendant is improperly using the plaintiff‟s mark. In an action for infringement
where the defendant‟s trade mark is identical with the plaintiff‟s mark, the court
will not enquire whether the infringement is such as is likely to deceive or cause
confusion. The test, therefore, is as to likelihood of confusion or deception
arising from similarity of marks, and is the same both in infringement and
passing-off actions . ”

Another judgment which would be relevant is the recent judgment of the
Hon‟ble Supreme Court reported as Khoday Distilleries Ltd. v. Scotch Whisky
Assn., (2008) 10 SCC 723 . In this judgment the Supreme Court has said that huge
and substantial difference in the prices of the two products is a factor which would
show that there is no passing off with respect to the goods of the person who
claims to be aggrieved as compared to the goods with the disputed trade mark. In
the facts of the said case the Supreme Court on account of the difference in the
price of whisky being sold under the brand “Peter Scot”, the same was held not to
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result in passing off of the scotch whisky as is/was being manufactured by the
scotch whisky manufacturers of Scotland.
The two trademarks are therefore to be compared to see whether use of the
trade mark Skin Cliniq Stretch Nil by the appellant leads to passing off of the
trade mark Clinique of the respondent. We are of the view that no case of passing
off and deceptive similarity arises in the facts of the present case for the following
reasons :-
(a) There is a substantial and marked difference between the two trademarks
“Clinique” of the respondent and “Skin Cliniq Stretch Nil” of the appellant.
(b) There is a huge price difference between the two products and the class of
customers therefore would be substantially different. The difference in the price of
the two products is between 4-8 times i.e the product of the respondent is around 4-
8 times costlier than the product of the appellant.
(c) The style, manner of writing and the colour combination of the two trade
marks are totally different as a reference to the packaging of the two products
show.
(d) Whereas the product of the appellant is an Ayurvedic cream, the product of
the respondent is not an ayurvedic product.
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(e) Merely because the respondent has a green colour packaging and the fact that
the word cliniq in the trade mark of the appellant is shown in another shade of
green cannot mean that there is deceptive similarity between the two trademarks
because the trademarks are used on packaging which are totally, completely and
absolutely separate and has almost no common features.
(B). Another important factor which persuades us to stay the impugned judgment
is that the appellant is in the business as claimed by it from the year 1998 and at
least since 2001 as per its sales figures given in the written statement which are
reproduced below :-

The goods are said to be excisable goods and therefore according to the
appellant there cannot be any doubt as to the genuineness of these figures.
FAO (OS) No.222/09 Page 5


The law with regard to grant of a pendent lite/interim injunction is well
settled and it has been consistently held by this court and by the Hon‟ble Supreme
Court that if the business of the defendant has recently started or is about to start,
then the things are looked at differently than the position if the business of the
defendant has commenced way back and is running successfully for many years.
In the latter category of cases where the business is running for many years
injunction is not granted to stop a running business because the object of injunction
is not to create a new state of affairs not existing in around the date of the suit.
Reference in this behalf is invited to a judgment of Single Judge of this court in
QRG Enterprises & Anr. Vs. Surendra Electricals & Ors, 2005 (120) DLT
456: 2005 (30) PTC 471 . Paras 30, 31 & 39 of the said judgment are relevant
wherein the Single Judge has relied upon the Supreme Court judgments for this
purpose, and which paras read as under:
“30. Interlocutory remedy is normally intended to preserve in status quo
rights of the parties which may appear of a prima facie case. As observed by
Their Lordships of the Supreme Court in the decision reported as 1990 (Supp.)
SCC 727, Wander Ltd. & Anr v. Antox India Pvt. Ltd:
“Usually, the prayer for grant of an interlocutory injunction is at a stage when
the existence of the legal right asserted by the plaintiff and its alleged violation
are both contested and uncertain and remain uncertain till they are established
at the trial on evidence. The Court at this stage acts on certain well settled
principles of administration of this form of interlocutory remedy which is both
temporary and discretionary. The object of the interlocutory injunction, it is
stated, “… is to protect the plaintiff against injury by violation of his rights for
which he could not adequately be compensated in damages recoverable in the
action if the uncertainty were resolved in his favour at the trial. The need for
such protection must be made against the corresponding need of the defendant
to be protected against injury resulting from his having been preventing from
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exercising his own legal rights for which he could not be adequately
compensated. The Court must weigh one need against another and determine
where the „balance of convenience‟ lies.”
31. As observed by Their Lordships in Mahendra & Mahendra Paper Mills
Ltd. (supra):
“The Court also, in restraining a defendant from exercising what he considers
his legal right but what the plaintiff would like to be prevented, puts into the
scales, as a relevant consideration whether the defendants has yet to commence
his enterprise or whether he has already been doing so in which latter case
considerations somewhat different from those that apply to a case where the
defendant is yet to commence his enterprise, are attracted.”
39. I am required to preserve a status quo, the rights of the plaintiffs and
defendants which may appear on a prima facie case. Protection of the interest
of the plaintiffs has to be weighed vis-a vis the corresponding interest of the
defendants. It is not a case where the defendants have to commence enterprise.
Real challenge is to defendants 5 and 6 who have been in business since 1956
and 1974 respectively. In the light of the prima facie facts noted above,
balance of convenience and irreparable loss and injury, I am of the opinion that
the ex parte ad interim injunction granted to the plaintiffs on 25.11.2004
requires to be vacated.”

3. In the facts of the present case the appellant/defendant has pleaded a case of
acquiescence in para 4.1 of its written statement and such a defence when laid,
especially when the business is going on at least since 2001, then in the year 2009
a running business should not be stopped and acquiescence can be validly pleaded
and it would be established during trial when so pleaded and supported by prima
facie facts. In such a situation injunction ought not to be granted. Acquiescence is
a statutory defence under Section 30(2)(c)(i) of the Trade Marks Act, 1999. In
fact the Hon‟ble Supreme Court in the judgment of Power Control Appliances
V. Sumeet Machines (P) Ltd., (1994) 2 SCC 448 has held that the case of
FAO (OS) No.222/09 Page 7


acquiescence at the stage of grant of interim relief when pleaded by the defendant
is to be more easily accepted than at the stage of final arguments because unlike
the stage of interim injunction the plea of acquiescence when accepted at the stage
of final arguments would result in forever depriving the right as claimed by
plaintiff.
4. Accordingly, in the facts of the case for the reasons inter alia stated above
we stay the operation of the impugned judgment until further orders and further
hearing in the C.M. 7977/2009. Dasti under the Court Master‟s signature.

(MUKUL MUDGAL)
JUDGE


(VALMIKI J. MEHTA)
JUDGE


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May 29 , 2009
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