MS SHAHNAZ HUSSAIN vs. M/S HER EVER RUTH & ANR

$~ 11
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1063/2009
nd
% Date of decision :2 December, 2014

MS SHAHNAZ HUSSAIN ..... Plaintiff
Through: Mr Raunaq Kamath, Adv
Versus

M/S HER EVER RUTH & ANR ..... Defendants
Through:
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI


G.S.SISTANI, J. (ORAL)

1. Plaintiff has filed the present suit for permanent injunction restraining
infringement of trade mark, passing off, rendition of accounts, delivery up
etc.
2. It is pointed out by counsel for the plaintiff that on 10.08.2010, learned
counsel for defendant no.2 had made a statement that defendant no.2 is
neither manufacturing nor selling nor distributing “NATURE‟S GOLD”
including range of Nature‟s Gold Skin Radiance Gel or any other product
deceptively similar to that of plaintiff‟s product. Counsel for defendant
no.2 reiterates the statement made in Court on 10.08.2010.
3. In view of the statement made on behalf of defendant no.2 on 10.08.2010,
which has been reiterated today, as agreed by counsel for the parties,
present suit is disposed of qua defendant no.2. Defendant no.2 shall
remain bound by the statement made by counsel on 10.08.2010 and
reiterated today.
4. Learned counsel for the plaintiff points out that despite service through
publication in the newspapers „Dainik Jagran‟ and „Statesman‟ dated
18.04.2011, defendant no.1 has chosen not to appear in this matter and
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defendant no.1. Defendant no.1 was proceeded ex parte vide order dated
28.05.2012.
5. Counsel further submits that the present plaint is duly supported by the
affidavit of authorized signatory of the plaintiff and the plaint itself should
be read as affidavit by way of evidence. It has been averred in the plaint
that the plaintiff is a pioneer and undisputed leader in herbal beauty care
and is engaged in the formulation and marketing of Ayurvedic
formulations for skin, hair and body care, as well as in the running of
franchise shops, schools and salons.
6. It has further been averred in the plaint that the plaintiff, since starting her
business in the early 1970‟s, has become a leader in the field of natural
beauty and anti-aging treatments and introduced a totally new concept of
“care and cure” and began to formulate her own Ayurvedic products
„Shahnaz Herbal‟. It has next been averred in the plaint that the plaintiff
has become known for her specialized clinical treatments and therapeutic
products for specific problems like acne, pigmentation, scars and
blemishes, skin-sensitivity, dandruff, hair loss and alopecia and heads a
chain of over 400 franchise salons in India and abroad, popularizing the
plaintiff‟s formidable range of nearly 350 products.
7. It has also been averred in the plaint that the plaintiff is a very well
reputed name in the beauty business and has received numerous national
and international awards, including the World's Greatest Woman
Entrepreneur Award from the Success Group of U.S.A and the plaintiff is
the first woman to be so honored in the 107-year history of the Success
awards.
8. Plaint also discloses that the plaintiff in the year 1997 introduced a skin
radiance gel called “NATURE‟S GOLD” range including the
“NATURE‟S GOLD SKIN RADIANCE GEL”, NATURE‟S GOLD
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BEAUTIFYING MASK” etc which contains 24-carat pure gold, along
with plant extracts and essential oils, with a built-in resistance against
aging skin. It has also been averred in the plaint that the plaintiff is the
proprietor of the trademark NATURE‟S GOLD and is registered under
no. 809031 in class 03 in favour of the Plaintiff. The products sold under
the said trademark are used extensively and have come to be associated
exclusively with the plaintiff.
9. It has further been averred in the plaint that the skin radiance gel of the
plaintiff under its trademark NATURE‟S GOLD is sold in a distinctive
trade dress/packaging with a unique color combination, get up,
arrangement of features and lay out. The salient features of the said
packaging are as under:

(i) a square carton with a circular opening on the top panel and
transparent rectangular openings on the side panels;

(ii) the words/ marks „SHAHNAZ HUSAIN‟, „NATURE‟S
GOLD SKIN RADIANCE GEL‟ and „MOISTURISING
CREAM‟ appearing on the along of the circular opening;


(iii) Prominent display of „SHAHNAZ HUSAIN, NATURE‟S
GOLD SKIN RADIANCE GEL‟ on the opening flap of the
carton;

(iv) A legend elucidating the unique components of the product
and its purpose on the back flap of the carton.

10. It has next been averred in the plaint that product of the plaintiff is
contained in a spherical container for the gel with a unique shape and
features and the trade/ dress packaging has a unique source indicator for
the plaintiff‟s skin radiance gel under its trademark NATURE‟S GOLD.
The salient features of the said container are as under:
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(i) A spherical device in the middle with a flattened ring running along its
circumference with a gold strip bearing the details of use and packaging
of the product on one side and „SHAHNAZ HUSAIN‟ and „NATURE‟S
GOLD SKIN RADIANCE GEL‟ on the other side
(ii) A division in the spherical device creating two separate compartments
therein, in the ratio of 3: 1 consisting of the skin radiance gel and the
moisturizing cream respectively.
11. It has also been averred in the plaint that the plaintiff‟s constant
communication with consumers through advertisements and directly
through the numerous Shahnaz Herbal franchise clinics all over the
country the relevant class of consumers recognize the packaging of
NATURE‟S GOLD as emanating from the plaintiff and the essential
features of the packaging, specifically the spherical container on which
the trademark NATURE‟S GOLD is represented on a unique flattened
ring running along its circumference, and the distinctive division
compartmentalizing the skin radiance gel and the moisturizing cream, has
come to be associated with the plaintiff.
12. Plaint also discloses that due to the efficacy of the product under the
trademark NATURE‟S GOLD in conjunction with its distinctive
packaging combined with the concerted efforts of the plaintiff and its
licensee to promote the same, it has achieved substantial reputation and
goodwill throughout India and the plaintiff‟s product under the trademark
NATURE‟S GOLD have gained immense popularity on account of the
various articles that regularly appear in various newspapers, magazines
etc. in addition to popularity that has been attained through word of mouth
publicity.
13. It has also been averred in the plaint that the plaintiff also manages a
website www.shahnazhusain.com.my which lists the plaintiff‟s various
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products including those under the trademark NATURE‟S GOLD, their
benefits etc. and the plaintiff‟s products can also be ordered online by
consumers through this website.
14. A statement of sales turnover for the last three years is as under:

prior registration and long, continuous and extensive use of the trademark
NATURE‟S GOLD throughout India and the packaging with its unique
colour combination, get up, arrangement of features and lay out, the
plaintiff has acquired tremendous goodwill and reputation and the
plaintiff‟s product is trusted by millions of consumers all over the country.
16. It has also been averred in the plaint that the NATURE‟S GOLD product
has come to be exclusively associated by the industry, trade and the
shareholders with the plaintiff and they identify the packaging with the
plaintiff‟s products. It has next been averred in the plaint that any
unauthorized use of the plaintiff‟s trademark NATURE‟S GOLD and or
the combination of features including colour scheme, get up and lay out,
amounts to violation of the plaintiff‟s statutory rights in the trademark and
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common law rights in the trade dress, and passing off of the unauthorized
goods as those of the plaintiff.
17. Further as per the plaint the plaintiff in the month of February 2009 came
across the impugned product being sold under the trademark HER EVER
RUTH NATURAL GOLD at defendant no. 2‟s premises which appears to
be a proprietorship concern dealing in cosmetics of the plaintiff as well as
defendant no. 1 and defendant no. 1 appears to be a proprietorship
concern engaged in manufacturing of cosmetic products including skin
gel.
18. It has been averred in the plaint that the defendant‟s no.1 mark
NATURAL GOLD is deceptively similar to the plaintiff‟s registered
trademark NATURE‟S GOLD and the adoption of the said mark by the
defendant no.1 amounts to an infringement of the plaintiff‟s registered
trademark under no. 809031.
19. It has further been averred in the plaint that the defendant‟s no.1
packaging for its NATURAL GOLD product is a look-alike of the
plaintiff‟s NATURE‟S GOLD product and the products being sold by the
defendants under the impugned trademark and packaging bear the most
minute similarities to the packaging used by the plaintiff for its product-
specifically, mustard colored text on the inside of the carton saying
„SHAHNAZ AYURVEDICS‟ in case of the plaintiff‟s product and „HER
EVER RUTH‟ in the case of the defendant‟s no.1 impugned product in
addition to the net weight of both products being 40 gm leading to passing
off of the defendant‟s no.1 product as that of the plaintiff. The similarities,
in detail are thus compared in the table, as under:

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20. It has also been averred in the plaint that by the use of the impugned
packaging and trademark in respect of a product identical to that of the
plaintiff, which is sold through identical trade channels and to the same
class of customers, the defendant no.1is holding out its product to be a
variant of, or associated with or approved by the plaintiff and such
misrepresentation by the defendant no.1 will inevitably cause confusion or
deception in the mind of the purchasing public and members of trade,
leading to passing off.
21. It has further been averred in the plaint that the defendant no.1 has
adopted the trade mark NATURAL GOLD and the impugned packaging
in respect of their skin gel with a view to trade upon the immense
goodwill and reputation that vests in the plaintiff by virtue of its extensive
and uninterrupted use of the trade mark NATURE‟S GOLD and the
defendant no.1 is trying to earn easy profits on the basis of the reputation
built by the plaintiff.
22. Plaint also discloses that the product manufactured and marketed by the
Defendants could also prove dangerous and hazardous to the health of the
consumers since it is a cosmetic product for application on the skin and
may contain harmful chemical ingredients the effects of which are not
known and unwary consumers may purchase and use the same believing
that it is an Ayurvedic product manufactured or marketed by the plaintiff
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and such unauthorized use by the defendants would tarnish, degrade, or
dilute the exclusivity and the distinctive quality of the plaintiff‟s well-
known and world-renowned cosmetics and beauty products thereby
causing irreparable loss and damage not just to the business of the
plaintiff but also to its reputation and goodwill.
23. I have heard counsel for the plaintiff and carefully perused the documents
which have been placed on record along with the plaint duly supported by
affidavit which has been treated as affidavit by way of evidence on the
averment of the counsel for the plaintiff. The evidence of plaintiff has
gone unchallenged and unrebutted. Trademark registration certificate of
the trademark “NATURE‟s GOLD” in favour of plaintiff has been filed
along with the plaint. Photographs of the plaintiff‟s skin radiance gel
product and beautifying mask product under the trademark SHAHNAZ
HUSAIN NATURE‟s GOLD and photographs of the defendant no.1 skin
radiance gel product and beautifying mask product under the trademark
HER EVER RUTH NATURAL GOLD have been placed on record.
Newspaper articles and internet articles evidencing the repute of the
plaintiff‟s products with the trademark NATURE‟s GOLD have been
filed along with the plaint.
24. On the basis of documents placed on record, plaintiff has been able to
establish that plaintiff is the owner of the trademark NATURE‟s GOLD
and the plaintiff has an exclusive right to use the same. Plaintiff has also
established that on account of huge amount spent on advertisements and
promotion of “NATURE‟s GOLD” products through newspapers,
magazines and internet, plaintiff has been able to generate vast sales and
the plaintiff has built up an unparallel reputation and goodwill with
respect to its trademark “NATURE‟s GOLD”. Plaintiff has also
established that the trademark “NATURE‟s GOLD” is recognized and
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associated exclusively with the plaintiff only and no one else. Plaintiff has
further established that the defendant no.1 by adopting the mark
“NATURAL GOLD” and impugned packaging in respect of identical
products is causing infringement of rights in the trademark of plaintiff.
25. In a very recent judgment delivered by another bench of this court, The
Indian Hotels Company Ltd vs. Ashwajeet Garg and Ors. CS(OS)
394/2012, decided on 01.05.2014, following observations were made: "
23. ...........
39. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna
Pharmaceutical Laboratories 1965 SCR (1) 737, the Hon'ble
Apex Court in the following paras held as under: "In an
action for infringement, the Plaintiff must, no doubt, make
out that the use of the Defendant's mark is likely to deceive,
but where the similarity between the Plaintiffs and the
Defendant's mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is
an imitation, no further evidence is required to establish that
the Plaintiffs rights are violated. Expressed in another way, if
the essential features of the trade mark of the Plaintiff have
been adopted by the Defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from
that of the registered proprietor of the mark would be
immaterial;...... When once the use by the Defendant of the
mark which is claimed to infringe the Plaintiffs mark is
shown to be "in the course of trade", the question whether
there has been an infringement is to be decided by
comparison of the two marks. Where the two marks are
identical no further questions arise; for then the infringement
is made out...."

26. In an another case of Evergreen Sweet House Vs. Ever Green and
Ors. , 2008 (38) PTC 325 (Del), it was observed as under:

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15. A mark, is said to be deceptively similar to another
(Section 2(1)(h), Trademarks Act, 1999) if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion. Section 29(1) deals with a situation where the
defendant uses a mark, which is identical or deceptively
similar to that of the plaintiff, in respect of the same goods or
services, and in such manner that it is likely that such use is
taken as being an use as a trademark. This amounts to
infringement. To fall within Section 29(1), the defendant's
use of the mark must be so that it is likely that the public
assumes that the said mark is used as a trademark.
Section 29(2) deals with three situations; one where the
defendants mark is identical to that of the plaintiff and in
respect of similar goods. Two, where the marks are similar
and in respect of goods which are identical or similar. Three,
the marks as well as the goods are identical. Infringement
does not take place if only one of the three ingredients are
satisfied; the plaintiff has to prove that use by the defendant
is likely to cause confusion on the part of the public or is
likely to have an association with the registered mark.

27. In Corn Products Refining Co. v. Shangrila Food Products Ltd.
reported at 1960 (1) SCR 968, the Supreme Court observed that the
question whether two competing marks are so similar as to be likely to
deceive or cause confusion is one of first impression and it is for the court
to decide it. The question has to be approached from the point of view of a
man of average intelligence and imperfect recollection.
28. In the case of Laxmikant V. Patel Vs. Chetanbhai Shah And Another ,
reported at (2002) 3 SCC 65, Apex court made following observation:

"..........The law does not permit any one to carry on
his business in such a way as would persuade the
customers or clients in believing that his goods or
services belonging to someone else are his or are
associated therewith. It does not matter whether the
latter person does so fraudulently or otherwise. The
reasons are two. Firstly, honesty and fair play are, and
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ought to be, the basic policies in the world of
business. Secondly, when a person adopts or intends
to adopt a name in connection with his business or
services which already belongs to someone else it
results in confusion and has propensity of diverting
the customers and clients of someone else to himself
and thereby resulting in injury."

29. Comparing both the marks and the similarities as detailed in para 18
aforegoing, I am of the view that the impugned trademark of defendant
no.1 “NATURAL GOLD” is deceptively similar to the plaintiff‟s
trademark “NATURE‟s GOLD”. The use of the mark “NATURAL
GOLD” by the defendant no.1 along with similar packaging as that of
plaintiff‟s in relation to identical goods is likely to dilute the distinctive
character of the plaintiff‟s trademark “NATURE‟s GOLD” and the same
is likely to erode the goodwill and reputation of the plaintiff among its
existing as well as potential customers in the market. The adoption and
use of the identical and deceptively similar trademark along with the
similar packaging in relation to identical products amounts to an
infringement of the plaintiff‟s statutory rights in the registered trademark
“NATURE‟s GOLD”. Furthermore, the defendant no.1 in a malafide,
dishonest and an unethical manner is encashing upon the goodwill and
reputation of the plaintiff, established by the latter over the period of
years.

30. Further, a clear cut case of passing off is established in view of dictum of
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported at
(2001) 5 SCC 73. Relevant portion of the judgment is reproduced below:
"The Supreme Court held that in a passing off action for
deciding the question of deceptive similarity the following
facts had to be taken into consideration:

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a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks, i.e. both words
and label works.

b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used
as trade marks.

d) The similarity in the nature, character and performance of
the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for
the goods and

g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the competing
marks."

31. The Defendant No.1 has chosen not to contest the matter and thus the
plaintiff is also entitled to the benefit of damages with a view to ensure
that such litigants desist from indulging into such activities and they are
not given benefit of the acts, which resulted to the loss to the plaintiff. It
would be useful to refer to the judgment in the case of Time Incorporated
v. Lokesh Srivastava and Anr., reported at 116(2005) DLT 599 wherein
this court has observed as under:
“This court has no hesitation on saying that the time
has come when the courts dealing actions for
infringement of trademarks, copyrights, patents etc.
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should not only grant compensatory damages but
award punitive damages also with a view to discourage
and dishearten law breakers who indulge in violations
with impunity out of lust for money so that they realize
that in case they are caught, they would be liable not
onlt to reimburse the aggrieved party but would be
liable to pay punitive damages also, which may spell
financial disaster for them”.

32. For the reasons stated above, the plaintiff has made out a case for grant of
decree as prayed in the plaint. Accordingly, the order dated 02.12.2014 is
confirmed and the suit is decreed in favour of the plaintiff and against the
defendant no.1 in terms of prayer 25(i) and (ii) of the plaint. In addition
thereto, the plaintiff would be entitled to damages to the tune of Rs.2.00
lakhs.
33. Decree sheet be drawn up accordingly.





G.S.SISTANI, J
DECEMBER 02, 2014
msr


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