4LIFE TRADEMARKS LLC & ANR. vs. AANCHAL JAIN & ORS.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

th
% Order delivered on: 15 October, 2014
+ CS(OS) No.3141/2014
4LIFE TRADEMARKS LLC & ANR. ..... Plaintiffs
Through Mr.Chander M. Lall, Adv. with
Mr.Subhash Bhutoria, Ms.Tia
Malik, Mr.Anuj Nair & Mr.Manas
Upmanyu, Advs.

versus

AANCHAL JAIN & ORS. ..... Defendants
Through None

CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (ORAL)

I.A. No.20186/2014 (exemption)
The original/certified copies of the documents be filed two
weeks prior to the admission/denial of the documents.
The application is disposed of.
CS(OS) No.3141/2014
Let the plaint be registered as a suit.
Issue summons to the defendants, on filing of process fee and
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Regd. A.D. Covers within a week, returnable on 10 November,
2014. Dasti in addition.
I.A. No.20185/2014 (u/o XXXIX R.1 & 2 CPC)
1. Issue notice to the defendants, for the date fixed.
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2. The plaintiffs have filed this suit for injunction and damages for
infringement of trademarks and copyright, passing off and unfair
competition against the defendants.
3. Brief facts as per the plaint are that plaintiff No.1, a company
organized and existing under the laws of the State of Utah, United
States of America, is carrying on business through its group
company, Forlife Trading India Private Limited, i.e. plaintiff No. 2,
which is a company duly incorporated under the laws of India.
4. Plaintiffs are world-renowned innovators, manufacturers and
distributors of inter alia products related to immune system support,
like vitamins and nutritional and dietary supplements and certain
related products and promotes and markets these products under
the trade marks 4LIFE, 4LIFE TRANSFER FACTOR, 4LIFE
TRANSFER FACTORPLUS, TRI-FACTOR, 4LIFE GLUTAMIN
PRIME, 4LIFE TRANSFER FACTORCARDIO, 4LIFE TRANSFER
FACTORBELLE VIE, 4LIFE TRANSFER FACTOR VISTA,
RIOVIDA, RIOVIDA BURST & GLUCOACH (hereinafter referred to
as the plaintiffs’ marks).
5. The plaintiff No.1’s Company, 4Life, was founded in the year
1998 and plaintiff No.1’s flagship immune system support product
was 4LIFE TRANSFER FACTOR. Today, people in more than 50
countries enjoy the immune system support provided by the
plaintiffs’ products.
6. The plaintiff No.1 is located across 5 continents and has
offices located in 29 countries and approximately 35 locations. The
plaintiff No.1’s size and market proximity gives it global reach and
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local focus, which is a dynamic combination, making the plaintiff
No.1 one of the world’s leading provider of health supplements.
7. Plaintiff No. 1 owns trade mark registrations in India for its
marks, including, 4LIFE, 4 LIFE TRANSFER FACTOR & TRI-
FACTOR. Details of the registrations are provided in Para 4 of the
plaint. In addition to the same, plaintiff No.1 has applied for
registration in India of its well-known trademarks 4LIFE and
GLUTAMINE PRIME vide applications bearing Nos. 1359750 and
1991907, respectively.
8. Plaintiff No.1 has also obtained registrations for its marks in a
number of countries around the world, names of which are
mentioned in Para 6 of the plaint, and the same include United
States of America, Australia, Bolivia, Brazil, European Community,
Indonesia, Japan, Kenya, Malaysia, Philippines, Russia, Singapore,
South Korea, Switzerland, Thailand, Turkey, Ukraine, Hong Kong,
New Zealand and Canada among others.
9. It has been stated that the plaintiffs market, distribute and sell
their products under a highly distinctive trade dress/packaging,
which include unique color combinations and design elements,
distinctive to the plaintiffs’ products and are closely associated
thereto in the minds of consumers.
10. The plaintiffs have substantially invested in creating and
adopting the said distinctive trade dress/packaging for each of its
products which is in continuous and extensive use for years now.
This use, combined with the large sums of money invested by the
plaintiffs in advertising, promoting and marketing the goods sold
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under the plaintiffs’ marks has resulted in a very strong reputation of
the well known marks and trade dress/packaging worldwide,
including in India.
11. The details of the approximate net sales/revenue from the year
2008 to half of 2014, pertaining to India, are mentioned in Para 13 of
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the plaint, with that for the year 2014 (till 30 June) being US$
1,333,538.
12. From 2007 till the end of 2010, plaintiffs have spent more than
an estimated US$ 58 million worldwide in advertising, sales
commissions, and other marketing costs to promote products and to
establish brand awareness of the products among the relevant
consumers. A year-by-year breakdown of these expenses is shown
in the table mentioned in Para 14 of the plaint.
13. The goods under the plaintiffs’ trademarks have been
extensively advertised and promoted through its website
www.4life.com that was created in the year 2003 and can be
accessed from anywhere in the world including India. A list of other
websites which provide details of the plaintiffs business activities
and their products is mentioned in Para 16 of the plaint.
14. The packaging and labeling done by the plaintiffs are unique.
The said unique and distinctive features and the iconic trademarks
constitute the trade dress/packaging of the plaintiffs’ products.
Additionally, the distinctive labels under which the plaintiffs sell their
products bearing the distinctive trade marks and trade
dress/packaging, together, with its distinctive elements constitutes
an original artistic work under Section 2 (c) of the Copyright Act
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1956, the copyright of which vests with the plaintiffs.
15. Since launching in the year 1998, plaintiff No. 1 has been the
recipient of numerous awards for the company’s role as an industry
leader in direct sales. Some of the success stories are listed on
plaintiff No.1’s website www.4life.com and details of some such
success stories are mentioned in Para 17 of the plaint.
16. By virtue of long, extensive and continuous use of plaintiffs
marks in various countries throughout the world, the same have
gained much popularity and dependability across the globe. As
such, given its reputation among the consumers, plaintiffs’ marks
would come within the definition of well known trade marks as
provided under Section 2(zg) of the Trade Marks Act, 1999
(hereinafter referred to as the “Act”).
17. In an attempt to spread its awareness to India, the plaintiffs
have registered a dedicated website for Indian market, namely,
www.india-4life.com that was created in the year 2007, when the
plaintiff No.1 first came to India.
18. Plaintiffs have taken efforts in promoting wellness and healthy
lifestyle in India, by holding and/or attending various conferences,
seminars and educative sessions in India, which are ought to have a
positive impact on the people affiliated to the plaintiffs, including the
distributor and consumer base. The details of some of such
seminars undertaken by the plaintiffs in India is mentioned in Para
22 of the plaint.
19. Plaintiff No. 1 has been actively protecting its exclusive rights
in its well known trademarks, by taking appropriate action against
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third parties and in the past, the plaintiffs have successfully initiated
legal actions against unscrupulous third parties globally.
20. It is the case of the plaintiffs that in and around January 2014,
the plaintiff No. 1 came across defendants No.1 and 2 and was
shocked to find that the said defendants were misusing the plaintiffs’
well known trademarks and the distinctive trade dress/packaging
under which the plaintiffs’ products are manufactured and marketed.
From discreet enquiry by the plaintiffs’ investigator, the plaintiffs
learnt that defendant No. 1 is the proprietor of defendant No. 2
entity.
21. Upon further research, the plaintiffs learnt that the defendants
are offering for sale, advertising and promoting their products under
the marks which are virtually identical to the plaintiffs’ well known
trade marks. The plaintiffs noted that the defendants are misusing
the 4LIFE brand by using the virtually identical FORLIFE mark for
many/all of its variants like, FORLIFE TRANSFER FACTOR,
FORLIFE TRANSFER FACTOR PLUS, FORLIFE GLUCOSAMINE,
FORLIFE CARDIO CAPSULES, FORLIFE GLUCOACH, FORLIFE
TRANSFER FACTOR VISTA, FORLIFE TRANSFER FACTOR
BELLE VIE, FORLIFE TRANSFER FACTOR CLASSIC, FORLIFE
TRANSFER FACTOR RIOVIDA BURST, FORLIFE TRI FACTOR
POWDER, & FORLIFE TRANSFER FACTOR BELLE VIE DROPS
(hereinafter referred to as the “impugned marks”). The defendants
are also using trade dress/packaging which is virtually identical to
the trade dress/packaging of the products sold under the plaintiffs
well known trademarks.
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22. Immediately upon knowledge of the aforesaid violations, the
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plaintiff No.1, got sent a cease and desist letter dated 28 January,
2014 to the defendants calling upon them, inter alia, to cease and
desist from using, amongst other things, the impugned marks,
FORLIFE, FORLIFE TRANSFER FACTOR and FORLIFE TRIPLE
FACTOR FORMULA as a trade mark, company name or in any
other manner whatsoever as the same amounted to infringement of
the plaintiff No.1’s registered marks. The similarity between the
trade dress/packaging was also pointed out to the defendants and
the defendants were requisitioned to cease such misuse of the
plaintiffs’ well known trade marks and trade dress/packaging.
23. Since no response was received from the defendants, the
same letter was resent to the defendants via email at
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marketing@kai-nc.com on 10 February, 2014. The defendants
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then replied vide email dated 11 February, 2014, wherein the
defendants admitted use of the impugned marks. However, the
defendants refused to comply with the requisitions laid down in the
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cease and desist letter dated 28 January, 2014 by stating that
TRANSFER FACTOR & TRI - FACTOR are generic words but still if
the party will submit the Trademark ownership document only
registered under the Act with the Trade Mark Registry, Govt. of
India, Mumbai under Section 30 in respect of Dietary and Health
food Supplements then Kai Natural Care will withdraw using the
same.
24. Subsequent to the above email, the defendants sent another
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email to the counsel of the plaintiff No.1 on 14 February, 2014,
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wherein the defendants on the basis of allegations such as
difference in classification, again refuted and refused to comply with
the plaintiffs’ requisitions.
25. Pursuant to the above emails of the defendants, the counsel
for the plaintiff No.1 conducted further internet investigation which
revealed that the defendants have expanded its dishonest activities
to include additional trademarks and trade dress/packaging of the
plaintiffs’ products.
26. Pursuant to the above said findings, the plaintiff No.1 through
their legal counsel responded to the emails of the defendants, vide
rd
letter dated 23 May, 2014. In the said response letter, the
defendants were made aware that the plaintiff No.1 has been taken
by surprise that despite of sending the first cease and desist letter,
the defendants have considerably expanded its line of impugned
products to include FORLIFE GLUTAMINE PRIME and FORLIFE
CARDIO CAPSULES, which amounts to not only infringement of
the plaintiff No.1’s registration of 4LIFE but are also blatant
imitations of the plaintiffs’ products i.e., NANOFACTOR
GLUTAMINE PRIME and 4LIFE TRANSFER FACTOR CARDIO.
Plaintiffs categorically stated that TRANSFER FACTOR and / or TRI
- FACTOR are not generic words and plaintiff No.1 owns the
registration of the marks TRI-FACTOR per se and TRANSFER
FACTOR in conjunction with 4LIFE. It was also clarified to the
defendants, in the said letter, that goods for which plaintiff No. 1
owns registrations include, amongst others, “dietary and nutritional
supplement; vitamin, mineral and herbal supplement” and it was
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admitted by the defendants that their goods are also pertaining to
dietary and food supplements.
rd
27. Pursuant to the response letter dated 23 May, 2014, on
behalf of the plaintiff No.1, the defendants sent an
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acknowledgement email dated 27 May, 2014 followed by a detailed
st
reply vide email dated 31 May, 2014. In the said email, the
defendants contended that the plaintiffs’ trademarks are applied for
registration by a different entity in a different class.
28. Upon checking the online records of the aforesaid trademark
applications, the plaintiffs learnt that all the applications on behalf of
defendants were filed in the name of Mr. Karan Goel trading as M/s
Keva Industries i.e. defendant No. 3. Upon further internet search,
the plaintiffs learned that in fact defendant No. 3 is also the
registrant of defendant No. 2’s website i.e. www.kai-nc.com. It is
believed that defendant No. 3 is the co-owner of defendant No. 2
entity.
29. It is submitted that the defendants have utter malafide to ride
upon the plaintiffs’ immense goodwill and reputation and hence the
defendants have slavishly copied and applied marks and trade
dress/packaging, confusingly similar to that of almost all the
products of the plaintiffs.
30. Below are pictorial comparisons of products of the plaintiffs’
and defendants’, which were revealed during the investigations
conducted pursuant to the sending of the cease and desist letters. It
has been contended that impugned trade dress/packaging have
been completely lifted/copied by the defendants’, thereby trying to
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deliberately pass off its goods as those of the plaintiffs:

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31. It is the case of the plaintiffs that the defendants have
deliberately adopted identical elements and features for their
products only to gain illegal benefits. The distinctive labels under
which the plaintiffs’ sell their products bearing the renowned and
well-known marks, together with its distinctive elements constitutes
an original artistic work under Section 2 (c) of the Copyright Act
1956, the copyright of which vests with the plaintiffs.
32. In addition to the aforesaid instances of violations, upon a
further perusal of the defendants’ websites being www.kai-nc.com
and www.kainaturalcare.net, it has been noted that not only have
the defendants blatantly copied the trade dress/packaging and
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adopted virtually identical trademarks, the defendants have also
picked up phrases, from the description of the products of the
plaintiffs’, in which the copyright vests with the plaintiff No.1. The
defendants have ad verbatim used the descriptions, to describe the
impugned products on the defendants’ website. Some examples of
such lifting of the description are mentioned in para 38 of the plaint.
33. Learned counsel for the plaintiffs submits that the use of
impugned marks and confusingly similar trade dress/packaging by
the defendants, constitutes violation of the rights of the plaintiffs in
and to the well-known trademarks and trade dress/packaging. In the
instant case, owing to the virtually identical nature of the marks,
including trade dress/packaging, the likelihood of confusion is much
higher. Resultantly, the said use by the defendants is bound to make
the general public believe that the defendants are somehow
connected or affiliated with the plaintiffs when in fact no such
connection or affiliation exists. In addition to the above, the goods
under the impugned marks and trade dress/packaging are identical
and belong to the same trade channels. Therefore the goods of the
plaintiffs and the defendants would be sold at the same counter in
the same shops. These facts further enhance the chances of
confusion.
34. As far as a small delay in filing the present suit against the
defendants is concerned, the same is not fatal in an action for
infringement in view of the settled law laid down by Courts in various
matters. Some of them are as under :
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(i) In the case of Midas Hygiene Industries Pvt. Ltd. vs. Sudhir
Bhatia and Others, 2004 (28) PTC 121 (SC), it was observed
as under:
“5. The law on the subject is well settled. In cases of
infringement either of Trade Mark or of Copyright
normally an injunction must follow. Mere
delay in bringing action is not sufficient to defeat
grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie
appears that the adoption of the Mark was itself
dishonest.”
(ii) In the case of Swaran Singh vs. Usha Industries (India) and
Anr. AIR 1986 Delhi 343 (DB), it was observed as under:
“7. There is then the question of delay. Learned
counsel for the respondents had urged that the
delay is fatal to the grant of an injunction. We are
not so satisfied. A delay in the matter of seeking an
injunction may be aground for refusing an injunction
in certain circumstances. In the present case, we
are dealing with a statutory right based on the
provisions of the trade and Merchandise
Marks Act, 1958. An exclusive right is granted
by the registration to the holder of a registered
trade mark. We do not think statutory rights
can be lost by delay. The effect of a registered mark
is so clearly defined in the statute as to be not
capable of being misunderstood. Even if
there is some delay, the exclusive right cannot be
lost. The registered mark cannot be reduced to a
nullity.....”
(iii) In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s. India
Stationery Products Co. AIR 1990 Delhi 19, it was observed
as under:
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“31. ........ It was observed by Romer, J. in the matter
of an application brought by J.R.Parkingnon and Co.
Ltd., (1946) 63 RPC 171 at page 181 that "in my
judgment, the circumstances which attend the
adoption of a trade mark in the first instance are of
considerable importance when one comes to
consider whether the use of that mark has
or has not been a honest user. If the user in its
inception was tainted it would be difficult
in most cases to purify it subsequently".
It was further noted by the learned Judge in that
case that he could not regard the discreditable
origin of the user as cleansed by the subsequent
history.”
35. From the above facts and settled law, it appears to the Court
that the plaintiffs have been able to make out a strong prima-facie
case for the grant of an ex parte ad-interim injunction in their favour.
Balance of convenience also lies in favour of the plaintiffs and
against the defendants. In case, the interim order is not passed, the
plaintiffs will suffer an irreparable loss and injury. Hence, till the next
date of hearing, the defendants, their agents, distributors, suppliers,
representatives, group companies and assigns are restrained from
manufacturing, selling, marketing, advertising, promoting and using
the trade marks FORLIFE, FORLIFE TRANSFER FACTOR/BELLE
VIE, PRIME, TRI FACTOR, RIOVIDA BURST & GLUCOACH and
also from using the similar trade dress which is shown in packaging,
sample of which is depicted in various Paras of the plaint.


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36. Compliance of Order XXXIX Rule 3 CPC be made within five
days.


(MANMOHAN SINGH)
JUDGE
OCTOBER 15, 2014
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