23 August 2021
In the recent case of Vikas Gupta & Another v Amit Jain, the Delhi High Court decided that the defendant had made false statements before the court to conceal an act of infringement committed against the plaintiff’s registered trademarks ‘Nehal’ and ‘Sneha’. Further events unfolded how the defendant had been regularly infringing brand names.
A familiar tale
The plaintiffs requested a permanent injunction from the court to restrain the other party from using the marks ‘Nehal’ or ‘Sneha’ or other marks which may resemble the word ‘Neha’.
The court had heard both parties on February 18 2021, when the defendant submitted that they have used only two names – ‘Dr Plus’ and ‘Blueberry’ as their brands, thereby, denying the plaintiffs’ claims. The defendant asserted that they had never used the impugned brand names and that the previous cases of infringement filed against them had been settled. The court directed them to furnish the details of such previous cases, along with the final orders. The defendants obliged with this direction.
However, the plaintiffs alleged that the defendant hid material facts, and made false statements in the court. The plaintiffs also responded to the details submitted by the defendant of their previous cases.
It was submitted that the defendant is a repeat offender who infringes well-known marks, dishonestly adopts deceptively similar trade dresses for the products akin to famous Indian companies like Dabur, Marico, and Hindustan Unilever, among others. The defendant makes illegal profits by riding on the goodwill and reputation of such brands. Finally, he gives up the mark or changes the get up of the product when the company takes legal action.
A history of litigation
The claim that the defendant had only been involved in two or three cases was disproven when they submitted and disclosed a total of nine cases filed against them, of which three were filed by Dabur India and one each by Marico and Hindustan Unilever. A summary of cases against the defendant is given below:
1. Dabur India v Amit Jain: Alleged counterfeiting and infringement of label and design of the products; settled against the defendant.
2. Dabur India v Amit Jain: Alleged infringement of bottle design and label; pending.
3. Dabur India v M/s Siddhi Cosmetics: Alleged infringement of label/get up/trade dress; the court observed that the defendant was a repeat offender, and the matter was settled against the defendant.
4. Hindustan Unilever v Amit Jain: Alleged trademark infringement; final order unclear.
5. Rajesh Jain v Amit Jain: Alleged infringement of trademark, copyright, label, packaging; pending.
6. Mrs Sonia Chadha v Amit Jain & Ors: Allegations of deceptively similar font, logo, getup, style, label; settled against the defendant.
7. Amit Jain v Ayurveda Herbal & Ors: A case of counter blast where the defendant had filed the suit; settled against the defendant.
8. Marico v Vinayak Industries & Ors: Alleged infringement of trade dress, packaging and bottle shape; settled against the defendant.
9. Sanjeev Juneja v M/s Vinayak Industries: Alleged trademark infringement; settled against the defendant.
The above listed cases also prove that the defendant used more than two marks in their business. There was a total of 28 marks which were used by the defendant as shown in court orders and invoices, like ‘Valueline’, ‘Aparna’, ‘Boroviv’, ‘Zohar’, ‘Tushar’, ‘Lesure’, ‘Roop Mantra Roop Ultra’, ‘Nimson Kingson’, ‘Blue Valley Blue Very’, ‘Pushpanjali Patanjali’, ‘Brueline Boroline’, ‘Multitouch’, ‘Fairness Fine’, ‘Men’s Action’, ‘Skin Gloss’, ‘Plush & Lovely’, ‘Plush’, ‘Fairness Beauty’, ‘Fairness & Sweet’, ‘Fime Glow’, ‘Popie Lovely’, ‘Pofie Lovely’, ‘FuorFuor’, ‘Fuor Glow’, ‘Fuor Klick’, and ‘Face Lovely’.
Of these, many are indirect copies of famous brand names and for many others the defendant has been called to court previously.
Attempt at defence
The date of use claimed by the defendant in its applications for trademark registration of the marks ‘Nehal’, ‘Nehal And Lovely’, and ‘Nehal’ (see Figure 1) in 2007, 2008, and 2014, claim use since 2003, 1989, and 2001, respectively. Yet, the defendant could not submit any evidence in support of his user claims.
Similarly, user claim for marks ‘Sneha’, ‘Sneha Lovely’, and ‘Sneha’ has been made since 2006, 1990, and 2001, respectively.
For cosmetics with the name and image of ‘Sneha Lovely Multi Touch’, ‘Sneha’s Neem Tulsi’, and ‘Sneha’s Neem & Line’ was claimed since 1990, 2003, and 2003, respectively.
The defendant had been selling its products in a wholesale market in New Delhi at Sadar Bazaar, which they did not mention in the court.
The plaintiff finally submitted that the “defendant is a repeat offender and shall continue to make false statements and dishonestly adopt well-known trademarks to mislead the public at large if order for making false claims before the court is not passed against him. The public interest is at stake as the quality of defendant’s products cannot be checked.”
Eventually, the court directed the defendant to furnish reasons to show why proceedings for contempt be not initiated against him. The matter is now listed for a further date.
Preventing infringement
What makes this case interesting is that the infringer has been caught many times, had to pay for his misdeeds many times, yet finds loopholes and tries to get away with everything. Perhaps, this time the lesson will be learnt.
Since the court is yet to decide on the matter, one sincerely hopes that a strict penalty is levied on the infringer so that brand owners can finally breathe a sigh of relief.
Authored by Manisha Singh & Simran Bhullar, this article discusses the recent order of the Delhi HC in the case of Vikas Gupta & Another v Amit Jain wherein a habitual trademark infringer was sued.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
