The District Judge (Commercial Court), New Delhi, in the case of Huda Beauty Limited (the “Plaintiff”) vs M/s Vision Enterprises and Ors (the “Defendants”), decreed a permanent injunction in favour of the plaintiff, whereby Defendant No. 1 was restrained from using the trademark/ label HUDA BEAUTY or any other trade mark/label identical with and/ or deceptively similar to the plaintiff’s registered trade mark/label HUDA BEAUTY in relation to similar goods, thereby infringing plaintiff’s registered trademarks, copyright and passing off its products as that of the plaintiff.
Background
The plaintiff is a company incorporated under the law of the British Virgin Islands and is engaged in the manufacturing, distributing and selling a wide range of cosmetics and beauty products. The plaintiff’s company was founded by Huda Kattan in 2010. ‘HUDA’, being the name of the founder, has always been part of the company’s corporate name and/or trading style since its establishment. Since the company’s establishment, the plaintiff has been using, trading, manufacturing, marketing, trading, and selling its goods under the trademarks/labels HUDA BEAUTY and its variants (the “Trademark”).
In April 2010, Huda Kattan, the owner of the plaintiff’s company, started the beauty-related blog, Huda Beauty, and a YouTube Channel. The contents of Kattan’s channels are beauty tutorial-oriented, wherein Huda Kattan shares makeup techniques, skincare routines and personal-preferred beauty products. In 2011, Huda Kattan launched Huda Beauty Product, which was a collection of false eyelashes. The product was released through Sephora in Dubai. In 2013, Huda Kattan launched a cosmetic line named after her channel, Huda Beauty. In 2015, the Huda Beauty Products were launched in the United States.
The trademarks/labels HUDA BEAUTY and its formative trademarks/labels are well-known trademarks/labels of the plaintiff. They are registered in India under the provisions of the Trade Mark Act, 1999 (“Act”), in favour of the plaintiff, which is valid and subsisting to date. Further, the artworks involved in the said trademarks/labels are original artistic works, and the plaintiff holds a copyright therein. The plaintiff’s goods bearing the trademark have been advertised, promoted, displayed, solicited, sold and traded worldwide on its website, www.hudabeauty.com. The plaintiff also deals in said goods and business in India through its business partners NYKAA & SEPHORA on www.nykaa.com and www.sephora.nnnow.com. The plaintiff has been using the said domain name in the course of trade and, as proprietor thereof, globally, has built up valuable trade, goodwill, and a reputation thereunder.
Further, it was submitted that the plaintiff spends a lot of money on advertising and promoting its products, and the trademark has acquired an enviable reputation and goodwill in the international markets, including in India. In addition, the plaintiff also enjoys a trans-border reputation and usage extending into India and is a well-known trademark within the meaning of Section 2(1)(zg) of the Act.
Defendant No. 1, M/s Vision Enterprises, imported a consignment of counterfeit products of fake HUDA BEAUTY cosmetics at the Kolkata Port, West Bengal, which was intercepted and seized by Defendant No.2 Office of Chief Commissioner of Customs, Kolkata, as the said consignment was found to be in violation of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 framed under the Customs Act, 1962, vide notification No. 47/2007 dated 08.05.2007. The Central Board of Indirect Taxes & Customs is Defendant No. 3 in this case. On April 2, 2021, Defendant No. 2 informed the plaintiffs about the seizure of the aforesaid consignment being imported by Defendant No. 1. The plaintiff inspected the goods imported and confirmed that the goods were not genuine and were counterfeit goods.
The plaintiff submitted that Defendant No.1 had dishonestly and malafidely adopted and started using the impugned trademark HUDA BEAUTY and its formative trademarks/labels, which are visually, structurally identical and/or deceptively and confusingly similar to the registered trademark of the plaintiff. It was averred that by doing so, Defendant No.1 was not only damaging the reputation and goodwill of the Plaintiff company by passing off its substandard products as that of the plaintiff company but was also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademark of the plaintiff’s company.
Therefore, the plaintiff urged that the suit may be decreed in its favour and against Defendant No. 1 to restrain it and all others acting for and on its behalf from using the impugned trademarks/labels. In addition, Defendant Nos. 2 and 3 should be restrained from releasing the impugned goods under impugned trademarks/label HUDA BEAUTY and other variants imported and confiscating the counterfeit goods.
The Court Analysis
Jurisdiction
The Court examined the issue of jurisdiction and observed that Defendant No.1 was soliciting, networking, offering to sell and supplying the impugned goods bearing the impugned trademarks to the dealers and distributors in the markets of New Delhi. The defendant was committing the act of infringement and passing off in New Delhi by making clandestine and surreptitious sales and distribution. The plaintiff was also carrying on its said goods and business under its said Trademark in New Delhi markets through its exclusive dealers and distributors SEPHORA & NYKAA.
Thus, the cause of action for filing the suit has arisen within the territorial jurisdiction of this Court. The plaintiff had also provided screenshots from its website, www.hudabeauty.com, as well as screenshots from the websites (viz. www.nykaa.com and https://sephora.nnnow.com.) respectively, showing the availability of its goods under the said trademark for purchase. Further, the Court opined that the entire testimony of the plaintiff has remained unchallenged and unrebutted by the defendants; therefore, this Court has territorial jurisdiction to try to entertain the suit.
Permanent Injunction
With regard to the relief sought by the plaintiff for permanent injunction against the defendant, the Court inter alia relied on the principles laid down in the following cases:
The Supreme Court, in the case of Renaissance Hotel Holdings Inc. vs B. Vijaya Sai & Ors (reported as MANU/SC/0066/2022), observed that in an infringement action, an injunction would be issued as soon as it is proved that defendant is improperly using the plaintiff’s mark and no case of actual deception, nor any actual damage needs to be proved in such cases.
The Delhi High Court, in the case of Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd‘., 2003 (27) PTC 63 (Del), observed that it is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if he shows that the mark used by the defendant is similar to the mark of the plaintiff.
In view of the above principles, the Court examined the facts of the case and observed that the averments made in the plaint are duly supported by the documents and proved during the course of evidence.
Further, in the case of Amrish Agarwal vs M/s Venus Home Appliances Pvt. Ltd [CM(M) 1059/2018] dated 27-08-2019, passed by the Delhi High Court, it was, inter alia, directed that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint.
(i) Legal Proceedings Certificate (LPC) of the trademark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals, etc.,
(ii) If the LPC is not available at the time of filing of the suit and urgent orders of the injunction are being sought, a copy of the trademark registration certificate, a copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made so that no disclaimers are imposed on the mark, and the mark stands renewed. Any licenses and assignments ought to be pleaded.
In this case, the plaintiff relied upon and filed copies of registration certificates and the status thereof, which were duly proved by the plaintiff. As per these documents, it was duly shown that the mark HUDA BEAUTY was duly registered in favour of the plaintiff as trademark/word marks/ device marks, which are valid and subsisting to date. The plaintiff also provided some of the registration certificates for its trademark/ label across the globe, including the British Virgin Islands, Great Britain, Northern Ireland, Singapore, etc.
In addition, the plaintiff also provided a copy of the e-mail sent by Defendant No. 2 to the plaintiff of the impugned goods being imported by Defendant No. 1, along with the approval of the plaintiff’s request for the physical inspection of the seized goods and the plaintiff’s assessment report in connection with the counterfeit goods. Thus, the plaintiff was able to establish that the impugned seized goods were imported by Defendant No. 1.
Relief Granted to the Plaintiff
Based on the above analysis, the Court opined that the plaintiff was able to prove its case based on preponderance of probability and decreed the suit in favour of the plaintiff and against the defendant (s) and granted the following relief:
- Defendant No. 1 was restrained by itself and also through its proprietors/ partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on its behalf from using, selling, soliciting, importing (in any manner or from any other port), exporting, displaying, advertising or by any other mode or in any manner using impugned trademarks/labels HUDA BEAUTY, any other trademarks/labels which may be identical with and/deceptively similar to the plaintiff’s said registered trademarks/labels HUDA BEAUTY, thereby infringing plaintiff’s registered trademarks, copyright and passing off its products as that of the plaintiff.
- Defendants Nos. 2 and 3 were restrained from releasing the infringed seized goods to Defendant No. 1 and destroying the infringed seized goods.
- The cost of the suit was also awarded in favour of the plaintiff.
Conclusion
The Court’s decision is based on the plaintiff’s successful proof of the trademark infringement, the unauthorized import of counterfeit goods and the defendant’s failure to contest the claims. The decision favouring the trademark HUDA BEAUTY having an international presence highlights the importance of registering trademarks in India. The trademark registration, along with the evidence of sales, promotion and marketing of the products bearing the trademark HUDA BEAUTY in India, provided the plaintiff with the exclusive rights to use the mark HUDA BEAUTY and prevented others from using, selling, soliciting, importing, exporting, displaying, advertising the trademarks/labels which are identical with and/or deceptively similar to the plaintiff’s registered trademarks and/or labels in India.
