WP(C) Nos. 1210 & 1213 of 2005 Page 1 of 29 IN THE HIGH COURT OF DELHI AT NEW DELHI W.P. (C) No. 1210 of 2005 Reserved on: 10th March 2010 Decision on: 28th April 2010 JOLEN INC. ..... Petitioner Through: Mr. Sanjay Jain, Senior Advocate with Mr. Reetesh Singh, Mr. Virendra Kumar and Ms. Prabhsahay Kaur, Advocates versus SHOBANLAL JAIN & ORS ..... Respondents Through: Mr. M.K. Miglani with Mr. Sanat Kumar, Mr. Gaurav Miglani, Mr. Kapil Kumar Giri and Mr. Ankit Relan, Advocates AND W.P.(C) No. 1213 of 2005 JOLEN INC. ..... Petitioner Through: Mr. Sanjay Jain, Senior Advocate with Mr. Reetesh Singh, Mr. Virendra Kumar and Ms. Prabhsahay Kaur, Advocates versus SHOBANLAL JAIN & ORS ..... Respondents Through: Mr. M.K. Miglani with Mr. Sanat Kumar, Mr. Gaurav Miglani, Mr. Kapil Kumar Giri and Mr. Ankit Relan, Advocates. CORAM: JUSTICE S.MURALIDHAR 1. Whether Reporters of local papers may be WP(C) Nos. 1210 & 1213 of 2005 Page 2 of 29 allowed to see the judgment? No 2. To be referred to the Reporter or not? Yes 3. Whether the judgment should be reported in Digest? Yes JUDGMENT 28.04.2010 1. These petitions challenge the separate orders dated 12th January 2005 passed by the Intellectual Property Appellate Board (IPAB) dismissing the Petitioner‟s appeals thereby upholding the orders dated 11th March 1999 and 11th October 2000 of the Assistant Registrar of Trade Marks (`AR) refusing registration of the trademark JOLEN applied for by the Petitioner. Background Facts 2. The Petitioner Jolen Inc., was formed as a partnership firm in the year 1955 in USA and later incorporated as a company in 1964. The Petitioner states that it is the proprietor of the invented trademark JOLEN coined from the names of the founders of the Petitioner company John & Evelyn. It is stated that the trademark JOLEN forms a predominant feature of the Petitioner corporate name and trading style. Its trademark JOLEN has been registered in more than 40 countries all over the world. 3. The Petitioner‟s JOLEN crème bleach is sold extensively in various countries including countries in the middle-east and Gulf from where a number of Indians frequently visit India and bring with them the Petitioner‟s JOLEN products for their personal use and as gifts for friends and relatives. It is stated that Petitioner‟s JOLEN products have been brought to India also by WP(C) Nos. 1210 & 1213 of 2005 Page 3 of 29 Indians visiting abroad. The Petitioner‟s JOLEN crème bleach are extensively advertised in international magazines having large circulation in India. According to the Petitioner its JOLEN crème bleach is freely available in India in several Customs notified shops and duty free shops in India. Therefore, it is submitted that by virtue of the long, extensive and continuous use in the international market and wide publicity, the Petitioner‟s trademark JOLEN enjoys great reputation and goodwill. In the above circumstances, it has been pleaded that the Petitioner‟s JOLEN has acquired trans-border reputation which is spilled over to India. 4. The Petitioner applied for registration of the trademark JOLEN in India under No. 522509 on 9th January 1990 in Class 3. Respondent No. 1 trading as M/s Hindustan Rimmer through its proprietor Shobanlal Jain and its licencee Ashok Kumar trading as M/s Cosmo International filed oppositions DEL-9820 and 9821 respectively. By an order dated 11th March 1999, the AR allowed the oppositions and rejected the Petitioner‟s applications. The appeal, CM (M) No. 422 of 1999 filed in this Court by the Petitioner was transferred to the IPAB after the enactment of the Trade Marks Act, 1999 (TM Act, 1999). By the impugned order dated 12th January 2005 in TA/151/2003/TM/DEL[CM(M) 422/1999], the IPAB dismissed the Petitioner‟s appeal. 5. The Respondent No. 1 Shobanlal Jain also applied for registration of the trademark JOLEN under No. 555920 in Class 3 on 6th August 1991 (as associated with the registered trademark No. 434499 in Class 3) for a wide range of cosmetic goods. The said application was opposed by the Petitioner WP(C) Nos. 1210 & 1213 of 2005 Page 4 of 29 under Opposition No. DEL 600. The AR by an order dated 11th October 2000 dismissed the Petitioner‟s application and allowed the Respondent‟s application for registration. The Petitioner‟s appeal filed in this Court, CM (M) No. 104 of 2001 was transferred to the IPAB. By the impugned order dated 12th January 2005, the IPAB dismissed the said appeal. 6. Certain related developments need to be mentioned. It is stated that Respondents 1 and 2 obtained registration of a trademark JOLEN in India under No. 434499B in Class 3 in respect of “tooth paste and perfumery”. The Respondents applied for the above registration on 25th February 1985 and registration certificate was issued on 15th November 1991. The Petitioner filed rectification petition being Del-694 on 6th May 1994 for removal of the trademark JOLEN registered in favour of the Respondents under No. 434499B. The said application is stated to be pending before the Registrar. It is submitted by the Petitioner that as long as the said opposition was pending, the present case ought not to have been decided by the AR. 7. The Petitioner filed Civil Suit No. 397 of 2000 in the High Court at Madras against the Respondents and others for permanent injunction restraining them from passing off their cosmetic preparations bearing the trademark JOLEN and from infringing the copyright in the artistic work in the JOLEN carton. The Petitioner applied for interim reliefs in the said suit. Against the refusal by the Single Judge to grant reliefs, the Petitioner preferred appeals before the Division Bench. By a judgment dated 30th April 2004 Jolen Inc., v. Shobanlal Jain 2005 (30) PTC 385 (Mad-DB), the Division Bench allowed the Petitioner‟s appeal and granted injunction WP(C) Nos. 1210 & 1213 of 2005 Page 5 of 29 restraining Respondents and others from using the trademark JOLEN for cosmetic preparations and from using the imitative carton. The special leave petition Nos. 11663 to 11665 of 2004 filed by the Respondents were dismissed by the Supreme Court on 2nd August 2004. 8. It is stated that since the Respondents and others continued to use the trademark JOLEN as part of their corporate name/trading style notwithstanding the judgment of the Division Bench of the Madras High Court, the Petitioner filed yet another suit, C.S. No. 831 of 2004 in the Madras High Court and an interim injunction was granted on 20th October 2004 restraining Respondents from using the trademark JOLEN as part of their corporate name/trade name. The injunction is stated to be operating. 9. The ground of opposition by the Respondents to the Petitioner‟s application for registration of the trademark JOLEN under No. 522509 in respect of “hair bleach, skin creams and lotions, astringents toilet waters, colognes, perfumes, eye makeup, face power, rouge and nail polish” in Class 3 was that the mark applied for was not distinctive of the goods of the petitioner and was hit by Sections 9, 11(a) and 11(e), 12 and 18 of the Trade and Merchandise Marks Act, 1958 (TM Act 1958). The Petitioner filed separate counter statements to the above notice of opposition in the month of November 1996. The Respondents 1 and 2 filed evidence in support of their opposition along with their affidavit. The Petitioner filed affidavit by way of evidence in February 1997. In this affidavit, the Petitioner set out in detail about the packaging of the mark, its prior adaption and use, the worldwide WP(C) Nos. 1210 & 1213 of 2005 Page 6 of 29 registration, international use and sales figures, goodwill and reputation attached to the mark JOLEN. The Petitioner also gave details of the worldwide registration for the trademark JOLEN, range of cosmetic products in respect of which it had registrations; year-wise expenditure on advertisement in US$ for the years 1986 to 1993; the sale invoice in different countries; advertisements in various international magazines and newspapers having circulation in India, and documents showing the sale of the Petitioner‟s mark JOLEN crème bleach in India. 10. The case of the Petitioner was that the adoption of the Petitioner‟s mark JOLEN by the Respondents was fraudulent. It was a slavish imitation of the Petitioner‟s mark and failed to substantiate the claim of the user of the mark JOLEN. It was stated that the trademark JOLEN was a well-known trade mark used exclusively by the Petitioner. It was submitted that the earlier registration No. 434499 in Class 3 had been obtained by the respondents through fraud and misrepresentation. The Orders of the Assistant Registrar 11. By an order dated 11th March 1999, the AR allowed the opposition filed by Respondents 1 and 2 and dismissed the Petitioner‟s application. The summary of the findings of the AR was as follows: (a) The trademark applied for by the Petitioner was identical to the registered trademark JOLEN of the Respondent under No. 434499B dated 25th February 1985 and the perfumes covered by the said registration were goods of the same description as that applied for by the Petitioner. WP(C) Nos. 1210 & 1213 of 2005 Page 7 of 29 Hence the registration of the mark was prohibited under Section 12(1) of the TM Act 1958. (b) The respondent could rely upon the use of the said mark JOLEN by their licencesee, Respondent No. 2 and it was not necessary for the purpose of Section 11(a) that the Respondents should rely upon the use and the reputation of their own trademark. The Petitioner had failed to prove that there was any sale of goods or advertisement of trade mark JOLEN by it in India. (c) There was no evidence produced by the petitioner to show that the magazines and newspapers in which the trademark JOLEN was advertised, had any circulation in India at that point in time. There was, therefore, no use by or reputation of the Petitioner in India in respect of the trademark JOLEN as on the date of its application. There was also no clear and cogent evidence in respect of the said mark‟s trans-border reputation in India. (d) The evidence produced by the Respondents indicated that a substantial number of traders/traders identified JOLEN products as manufactured by the Respondents as on the date of the application. Therefore, the use of the said trademark by the Petitioner was likely to cause confusion and therefore prohibited under Section 11(a) of the TM Act 1958. (e) The claim by the petitioners for registration of the trade mark JOLEN held by the Respondents was hit by Section WP(C) Nos. 1210 & 1213 of 2005 Page 8 of 29 18(1) of the TM Act 1958. (f) The Petitioner‟s evidence did not show use of the trademark JOLEN prior to the date of the application. Therefore, the Petitioner could not take advantage of Section 33 of the TM Act 1958. 12. As regards the Petitioner‟s Opposition No. DEL 600 under No. 555920 in respect of cosmetic goods included in Class 3, the Registrar passed an order dated 11th October 2000 holding: (a) There was no merit in the contention of the Petitioner that since the Respondents had not filed any counter- statement under Section 21(2) of the TM Act, 1958 to the application filed by the Respondents, their opposition should be deemed to have been abandoned. (b) There was no evidence on record to show that there would be any likelihood or confusion in India if the Respondents use the mark JOLEN. Therefore Section 11(a) of the TM Act 1958 had no application. (d) Admittedly the earlier registration of the mark under No. No. 434499 in Class 3 was in the name of the Respondents. This was an additional factor in their favour. The application made by the Respondents for registration in Class 3 was only an extension for the earlier registration already granted in Class 3 (tooth paste and perfume). (f) As such the Respondents had been using the mark since WP(C) Nos. 1210 & 1213 of 2005 Page 9 of 29 1987, i.e., for about four years as on the date of the application. The said use was sufficient to distinguish the Respondent‟s goods from other traders. Therefore, the registration of the mark in favour of the Respondents was justified under Section 9 of the TM Act 1958. The impugned order of the IPAB 13. By the impugned order dated 12th January2005 the IPAB rejected the Petitioner‟s appeals. After referring to the observations in “Intellectual Property” by W.R. Cornish, Third Edition, at page 550, the decision of the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 (5) SCC 714 and this Court in Jolen Inc v. Doctor & Company (2002) 2 CTMR 6, it was held that the Appellant, i.e., the Petitioner herein had “totally failed to produce any piece of evidence regarding the number of immigrants from foreign countries or the tourists returning to India who brought the appellant‟s products to India”. There was no evidence to show that even a small number of Indians were aware of the products. After discussing the various advertisements in the foreign magazines, the IPAB held that the Petitioner had not produced any evidence with regard to the circulation of any of the said magazines in India as well as the channels through which such magazines were circulated. The Respondents had established prior use since 1985 whereas the Petitioner‟s application was filed in 1991 claiming user of the said trade mark since December 1985. The Petitioner had failed to establish through evidence that by way of advertisements in foreign journals about their trans-border reputation. It was held that in order to substantiate WP(C) Nos. 1210 & 1213 of 2005 Page 10 of 29 the claim to a trans-border reputation the mark should be shown to be a well- known one having been identified by a large number of persons. Therefore evidence regarding availability of journals and the volume of circulation had to be proved. Reputation and goodwill had to be proved and not presumed. 14. Referring to the judgment of the Madras High Court in Jolen Inc., v. Shobanlal Jain, the IPAB held that the said judgment was not binding since the findings on facts were only prima facie. It was held that the IPAB had to dispose of the appeal independent of any observations of the Madras High Court in the aforementioned judgment. It is further held that the fact that the Petitioner had filed the suit in 2000 and had not till the date of the disposal of the appeal raised any objection to the use of the mark by the Respondent No. 2. Respondent No. 2 had proved that they were the prior users. The Petitioner had failed to establish trans-border reputation. The appeals were accordingly dismissed. Submissions of Counsel 15. This court has heard the submissions of Mr. Sanjay Jain, the learned Senior Counsel, appearing for the Petitioners and Mr. M.K. Miglani, the learned counsel appearing for the Respondents 1 and 2. 16. It is submitted by Mr. Sanjay Jain that the IPAB erred in holding that the Petitioner had not proved its trans-border reputation. Relying on the observations of this Court in N.R. Dongre v. Whirlpool Corporation AIR 1995 Delhi 300, it is submitted that in the present case, the existence of the trans-border reputation of the Petitioner‟s marks was proved by the evidence WP(C) Nos. 1210 & 1213 of 2005 Page 11 of 29 placed on record. Since the Petitioner‟s goods were being sold in the open market there was no confusion or deception by the registration of the impugned mark. Therefore, Section 11(a) of the TM Act 1958 did not apply. It is submitted that the Respondents‟ marks are identical with that of the Petitioner. The trademark, trade dress, colour scheme, get up, font size, lay- out, carton and the labels used therein were identical with that of the Petitioner. The IPAB also failed to appreciate that in Class 3 goods there are several other items and therefore the mere fact that the registration is obtained for toothpaste and perfumes by the Respondents did not automatically mean that the registration could not be granted to the Petitioner in respect of other goods although falling in the same class. Referring to the decision in Vishnudas Trading v. Wazir Sultan Tobacco Ltd. 1996 PTC 16 (SC) 512, it is submitted that registration with regard to one category of goods does not prevent registration of trademarks with respect to other goods in the same class. The findings of the Madras High Court in Jolen Inc., v. Shobanlal Jain affirmed by the Supreme Court clinched the issue in favour of the petitioners. Mr. Jain also places reliance on the judgments in Milmet Oftho Industries v. Allergan Inc 2004 (12) SCC 624 and Hyundai Corporation v. Rajamal Ganna 2007 (35) PTC 652 (Del). Highlighting the approach of the Courts in cases of passing off and infringement involving identical marks, Mr. Jain referred to the decisions in Atlas Cycles Ltd. v. Atlas Products Pvt. Ltd. 146(2008) DLT 274; Kaviraj Pandit Sharma v. Navratna Pharmaceuticals Laboratories AIR 1965 SC 960; Hero Honda Motors Ltd. v. Shree Assuramji Scooters 2005 (4) RAJ 186 (Del); Revlon Inc. v. M/s Sarita Manufacturing Co. AIR 1998 Del 38 and Frito Lays India v. Radesh Foods 2009 (40) PTC 37 (Del). WP(C) Nos. 1210 & 1213 of 2005 Page 12 of 29 17. Appearing for the Respondents, Mr. M.K. Miglani, the learned counsel submitted that the Respondent‟s licensee has obtained the permission of the Drugs Controller and started manufacturing and selling cosmetics under the trademark JOLEN in 1987. According to the Respondents, its use of the mark was open, continuous and extensive. When the Respondent‟s application for registration of mark JOLEN was accepted and advertised in the Trademarks Journal, it was not opposed by any member of the trade or public and therefore registration was granted for toothpaste and perfumery. 18. It is submitted that after the Petitioner filed a subsequent application 15th November 1991 for registration of cosmetics, the Petitioner herein filed oppositions and issued various caution notices. It filed a suit against Doctor & Company in 1993. Therefore, it had complete knowledge about the Respondents and yet took no action. It is submitted that the JOLEN is not an invented word but is a name of the city in Afghanistan. It is claimed that there are several businesses being run in the name JOLEN. While the Respondents successfully proved by evidence their long and bona fide user of the mark, the Petitioner had failed to prove any sale, advertisement of its goods in India using the mark JOLEN. The Petitioners failed to prove that its goods under the mark JOLEN had any trans-border reputation. Since the goods of the Petitioner were not available in India at the relevant point in time, the learned AR had rightly concluded that there was no likelihood of deception or confusion. WP(C) Nos. 1210 & 1213 of 2005 Page 13 of 29 19. It is submitted that the present petition relates a mark adopted and used in and around the 1980s, i.e., the era of pre-globalization and pre-liberalization of economy. It is claimed that in the said era, the means of communication, publicity and advertisement as also the means of travel were not as advanced as now where simultaneous launching of a product and/or brand in various countries throughout the world has become the norm. If one went by the sale figures of the petitioner‟s products in 20 countries worldwide, then only 35,000 odd products priced 3$ each were found to be sold. The sales were therefore negligible and could not substantiate the claim of the Petitioner‟s product enjoying an immense reputation which has spilled over to India. Therefore, there is no question of the Respondents trading upon any goodwill or reputation of the Petitioner in the said market. Relying upon the decisions in Management of Madurantakam Co-op. Sugar Mills Ltd. v. S. Vishwanathan (2005) 3 SCC 193 and Union of Bank of India v. Chanderkant Gordhandas Shah (1994) 6 SCC 271, it is submitted that the High Court exercising jurisdiction under Article 226 of the Constitution will not re-examine factual disputes or the evidence and sit in appeal over the concurrent findings of the AR or the IPAB. The scope of the powers of the judicial review were limited to correcting errors of law or procedural errors leading to manifest injustice or violation of principles of natural justice. Reliance in this regard is also placed on the judgments in Chandigarh Administration v. Manpreet Singh JT 1991 (4) SC 436; Lalit Popli v. Canara Bank (2003) 3 SCC 583 and Indian Iron & Steel Co. Ltd. v. Prahlad Singh (2001) 1 SCC 424. It is submitted that in any event in paras 14 to 18, the IPAB had discussed the evidence produced on record. It had WP(C) Nos. 1210 & 1213 of 2005 Page 14 of 29 discussed law relating to trans-border reputation and held that that the Petitioner had miserably failed to prove the same. The IPAB had rightly opined that the question of dishonesty of adoption have to be gone into only where the Petitioner proved that it is a well known mark having trans-border reputation. The Petitioner admittedly never manufactured or sold its products in India and even its application for registration was on “proposed to be used” basis. Therefore, the question of confusion between the two marks did not arise since the Petitioner‟s mark was not even known, much less, used in India. Further as held in Pioneer Nuts & Bolts Pvt. Ltd. v. Goodwill Enterprises [2009 (41) PTC 362 Del.], the use of a mark in advertising media must be concurrent with the placing of the goods in the market if it is to be regarded as a trademark. Reliance is also placed on the judgments in The Gillette Co. v. A.K. Stationery [2001 PTC 513 Del.] and M.S. Smithkline Beecham Plc v. M.S. Hindustan Lever Ltd. [2000 PTC 83 Del.]. Comparison of the two marks 20. Before considering any issue in the present case, the two competing marks and cartons may first be examined. This Court was shown the cartons and packaging used on the Petitioner‟s products and those for the Respondent‟s products. If these two are placed side by side, even the most trained eye would not be able to make out one from the other. In fact, this was acknowledged too by the counsel for the Respondents. The Court had to use a black rubber band around the carton of the Petitioner only to identify it. The portion of the packaging reflecting the mark used by the Petitioners is as WP(C) Nos. 1210 & 1213 of 2005 Page 15 of 29 under: 21. The position of the packaging reflecting the mark used by the Respondents is as under: 22. Elsewhere in the packaging and in the container placed within it, the Respondents have depicted the word the word `JOLEN‟ within an oval with identical lettering in identical font against a blue background. The mark JOLEN and every aspect of it as used and depicted by the Respondents is a classic example of slavish imitation of the mark of the petitioner. It is so brazen that the Respondents have copied even the byline „Lightens Excess Dark Hair‟ appearing below the word JOLEN. There is also no manner of doubt that an average customer will mistake the Respondents‟ products as that of the Petitioner. The confusion is also likely to be about the origin of the WP(C) Nos. 1210 & 1213 of 2005 Page 16 of 29 goods. The name of the manufacturer is given in an insignificant portion of the Respondents‟ carton in an extremely small font. The Respondents products in the above packaging with the JOLEN mark are likely to be viewed as counterfeit of the petitioner‟s obviously more expensive foreign branded products. The Indian law concerning trademarks does not permit this kind of a brazen and slavish imitation of a well known international mark.