Clinique Laboratories LLC And Anr v Gufic Limited and Anr [2009] Delhi HC

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Introduction

This case is of such a nature that the Judgement gives the right to the proprietors of the registered trademark. A Trademark is Special Symbol, design or name that a company puts on its products and that cannot be used by any other company. Also, it types of intellectual property consist of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from another Registered trademark.

The trademark act provides for the protection of products and avoids fraudulent use of the mark. A registered proprietor of trademark in person for the time. the of the register as a trademark. mean the being entered proprietor of trademark mean the person for the time being entered in the register as proprietor of the trademark.

Facts of the Case in Clinique Laboratories LLC And Anr v Gufic Limited and Anr

  • The plaintiff (Clinique Laboratories) has the registered trademark by the name ‘CLINIQUE’ since 13th July, 1981 in regards to cosmetics, lotions, oils and creams, used in cleansing etc, falling under class 3 of the goods and services mentioned in the 4th schedule to the Trade Marks Rules, 2002. There are many other trademarks that are owned by the plaintiff and most of them include the word ‘CLINIQUE’.
  • For the plaintiff’s products which are used worldwide, Clinique is the most distinguished feature of the trademark and the plaintiff’s company has been doing business in India since 2007.
  • Plaintiff also held registered trademarks in the following names – CLINIQUE & C DEVICE, CLINIQUE IN TOUCH, CLINIQUE HAPPY, CLINIQUE EXCEPTIONALLY SOOTHING CREAM FOR UPS, CLINIQUE ANTI GRAVITY and CLINIQUE GENTLE LIGHT.
  • The defendants were an Indian company having registered trademarks including the word CLINIQ.
  • The plaintiff got to know about the registration and usage of mark “SKINCLINIQ” and use of the label ‘SKINCLINIQ STRETCH NIL’ on or about September 2006. Defendants were involved in the same business as that of plaintiff and both the parties got their trademarks registered with the registrar of trademark authority.
  • On discovering the similar trademark that defendant got, the plaintiff filed a rectification application (cancellation petition) with the Registrar of Trademarks, India with a view to getting the trademark of the defendant canceled. At the same time, the plaintiff also files a suit in the court seeking an order of injunction against the defendant prohibiting them from passing off the goods manufactured under the similar trademark and selling them in the Indian market.

Issues Raised in Clinique Laboratories LLC And Anr v Gufic Limited and Anr

  • Whether a suit for the infringement of a registered trademark can be filed against another registered trademark.
  • Whether both the trademarks are identical and has to be addressed from the point of view of the average intelligence individual.
  • Whether the court has the power to entertain an infringement application during the pendency of an application for striking down the registration of the disputed trademark is still pending before the registrar.
  • Whether the court can pass an interim injunction to restrain the use of registered trade mark.
  • Whether the defendants were liable for passing off their goods as goods of the plaintiff. This issue was based on the similarity and deceptive indicia of the defendant’s registered mark.

Relevant Provisions of Law Involved in Clinique Laboratories LLC And Anr v Gufic Limited and Anr

  • Section 29 of the Trademark Act, 1999 refers to infringement of the trademark as use of the mark, identity fraudulently by the person who is not the registered proprietor or unauthorised person. In order to prove the infringement, it is important to prove that the infringing trademark is conveying the same meaning and idea.
  • In this case, the questions and arguments raised by both the appellants and defendants were on the similarity of the product. In order to make the infringement, it is necessary to show that it is identical or similar to the appellant and defendant and its use will take away the trademark.

Judgement in Clinique Laboratories LLC And Anr v Gufic Limited and Anr

  • In this landmark case, the court said that a proprietor of a registered trademark is legally capable of bringing a suit against another proprietor of the registered trademark if the trademark is identical or similar in any kind and infringes the right of the trademark owner.
  • The rectification application filed by the plaintiff prior to the institution of suit is already pending. The pleadings in the suit having been completed, it is found that the pleas of the plaintiff regarding the invalidity of the other marks aforesaid of the defendant, already registered are prima facie tenable. The proceedings in the suit are adjourned under Section 124 (1) pending the final disposal of rectification proceedings already instituted and to enable the plaintiff to apply for rectification of the register regarding the other marks. The parties shall have the liberty to apply for the revival of the suit as and when the need arises.
  • The ex parte order dated 16th December, 2008 is made absolute during the period of stay of the suit. The question of costs shall be considered at the time of final disposal of the suit. Needless to state that nothing said herein shall come in the way of the proceedings, pending which suit has been stayed.
  • Since there was no evidence produced before the court that while considering the registration of the defendant’s mark the registrar sufficiently considered the similarity between the two marks therefore the interim injunction shall be granted during the pendency of the rectification application before the registrar.
  • Hence the court allowed the interim injunction and allowed parties to resume the case once the application before the registrar is finally decided. During this period the defendant was restrained from using their registered mark.

This article has been contributed by Arpita Thakur, a student at Ajinkya D.Y Patil University, Pune.


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