In this appeal filed by L’Oréal India Pvt. Ltd. (“L’Oréal”) against Rajesh Kumar Taneja trading as Innovative Derma Care, the Delhi High Court dealt with a trademark dispute regarding the mark “CLARIWASH,” registered by the Respondent (Rajesh Kumar Taneja). L’Oréal, through its predecessor Cheryl’s Cosmeceuticals Private Limited (CCPL), claimed that it had adopted a series of “CLARI” formative trademarks, including “CLARI-FI”. Thus, it sought the cancellation of “CLARIWASH” from the register under the provisions of the Trade Marks Act, 1999. L’Oréal argued that “CLARIWASH” was deceptively similar to its own ‘CLARI’ formative trademarks. L’Oréal also pointed out that the “CLARIWASH” was registered based on a faulty examination report, which had referred to a non-existent trademark “CHARIWASH.”
The High Court, however, dismissed the appeal, affirming the lower court’s decision, based on the following reasons:
- The Court found that although there was an error in the examination report (which referred to “CHARIWASH” instead of “CLARIWASH”), this procedural error did not warrant cancellation of the Respondent’s mark;
- Especially given that L’Oréal had not opposed the registration at the appropriate stage when the trademark was advertised.
- The Court emphasised that the competing marks must be viewed as a whole, and “CLARIWASH” was neither identical nor deceptively similar to L’Oréal’s “CLARI” formative marks, particularly “CLARI-FI.”
- The Court also held that Respondent no. 1’s use of the “CLARIWASH” trademark predated L’Oréal’s expanded use of the “CLARI” formative trademarks.
As a result, the Court ruled in favour of the Respondent, upholding the registration of the “CLARIWASH” trademark.
Relevant Paragraphs
“30. In the present case, there is no cavil that the impugned trademark was a registerable trademark and there were no grounds to refuse the registration under Section 9 of the Act. The controversy is limited to considering whether the Registrar had correctly examined the question that whether there were any grounds to refuse the registration of the impugned trademark because of its identicality with the earlier trademark in respect of similar goods or services, which would result in likelihood of any confusion on the part of the public including on account of association with an earlier trademark on record (whether registered or pending registration). It is apparent that there was an error in conducting search in as much as the search report indicates that the search was conducted in respect of the mark CHARIWASH instead of CLARIWASH. It is reasonable to assume that the search was confined to the trademark similar to CHARIWASH and not CLARIWASH.
31. Although it cannot be disputed that there was a procedural error in conducting the examination, we are unable to accept that the registration of the impugned trademark in favour of respondent no.1 is required to be cancelled for the said reason.
32. As noted above, the principal purpose of conducting the search is to ascertain whether there were any identical or deceptively similar trademarks in respect of the same goods or services. The registration of the trademark, which is identical or deceptively similar to the trademarks on record inrespect of the similar goods or services may be refused as it would result in confusion in the minds of public. Thus, unless, prima facie it is established that the impugned trademark is identical or deceptively similar to the trademark in respect of similar or identical goods which were on record, at the material time, the registration of the impugned trademark cannot be faulted. Clearly, it would not be apposite to cancel the registration of the trademark, in respect of which there are no grounds for refusing registration under the Act, merely because of some error in the procedure adopted by the Registrar at the material time. It is important to bear in mind that the object of the examination is to ensure the compliance of the provisions of the Act. Thus, no interference with the registration of the trademark would be warranted, unless it is prima facie established that the registration of the trademark falls foul of the provisions of the Act.
33. It is also material to note that respondent no.1’s application for registration of the impugned trademark was duly advertised in the Trademark Journal. The appellant or its predecessor had full opportunity to oppose the registration of the impugned trademark at the material time. However, they had taken no steps to do so.
34. In the present case, the appellant claims that the impugned trademark is similar to its trademarks that include the word CLARI. It is necessary to note that at the material time, the appellant’s predecessor CCPL was using two marks which included the word CLARI. The same being CLARI-FI and CLARIMOIST. CCPL had claimed to be the user of the said marks since 01.04.2009 and 10.09.2009 respectively. Plainly, the impugned trademark CLARIWASH is not deceptively similar to the aforesaid trademarks.
35. Respondent no.1 applied for the registration of the trademark in Class 03 on 16.04.2010 claiming user from 16.11.2009. At the material time, there was no family of CLARI formative trademarks in use by the appellant’s predecessor – CCPL. The applications filed by CCPL in respect of other trademarks including the word CLARI indicate their use from the year 2011 and thereafter. Thus, CCPL had adopted CLARI formative marks subsequent to the application filed by respondent no.1 for registration of the impugned trademark.
36. According to the appellant, if a search was conducted in respect of the impugned trademark, other trademark with letters CL would come up for consideration by the Registrar. Assuming the same to be correct, only one of the trademarks used by CCPL would feature in the search result, the same being CLARI-FI – as the application for registration of the said mark was moved prior to respondent no.1’s application for registration of the impugned trademark. The appellant’s predecessor had applied for registration of CLARIMOIST on 23.04.2010, which was subsequent to respondent no.1’s application for registration of the impugned trademark.
37. The appellant’s challenge to the registration of the impugned trademark on the ground of a faulty search report is required to be considered on the basis of the appellant’s trademark, which would feature in the said report on the said date. As stated above, only two trademark applications of CCPL were on record of the Registrar as on the date of the search report – CLARI-FI and CLARIMOIST. As noted above, respondent no.1’s usage of the impugned trade mark is prima facie prior to CCPL’s adoption of the trade mark CLARIMOIST. The trademark CLARI-FI isclearly not similar to the impugned trademark. It is settled law that the trademarks have to be viewed as a whole and it would not be permissible to compare the competing trademarks by dissecting parts of the trademarks and comparing them. It may, in certain circumstances, be apposite to compare the dominant part of the competing trademarks if it results in an overall commercial impression of the two competing trademarks being similar. However, in the present case, the overall commercial impression of the impugned trademark is not similar to the trademark CLARI-FI. Thus, respondent no.1’s application for registration of the trademark cannot be refused on the ground of the applications filed by CCPL for registration of its trademark CLARI-FI and CLARIMOIST. The impugned trade mark is also not deceptively similar to CLARIMOIST.
38. The reliance placed by the appellant on the decisions of IPAB does not further the appellant’s case.InPrajapati Constructions Limited v. Manoj Ramanand Prajapad & Anr. (supra), the proprietor of registered label ‘Prajapati’, registered under Class 37 in respect of building construction and supervision services, filed an application for cancellation of the registration of a trademark ‘Shivam Prajapati’ label in favour of the respondent. It was the respondent’s defence that word Prajapati was of a community/caste and all the members belonging to said community or caste were free to adopt the common surname in respect of their respective business, trade and profession. The learned IPAB found that if the said contention is accepted, the impugned registration would be contrary to Section 9 of the Act. The learned IPAB also found that the two competing labels ‘Prajapati’ and ‘Shivam Prajapati’ were prima facie deceptively similar.
39. The learned IPAB found that despite the marks being prima facie similar, the applicant’s trademark ‘Prajapati’ label, was not cited in the examiner’s report. In the aforesaid facts, the learned IPAB prima facie held that the registration of the ‘Shivam Prajapati’ label was liable to be cancelled.
40. The later decisions of the learned IPAB in Jahangir Biri Factory Pvt. Ltd. v. Mohd. Dildar Hossain (Proprietor) & Anr. (supra) and Vans Inc. USA, Through Rishi Bansal v. Fateh Chand Bhansali, M/s.Pawan Trading Co. & Anr.(supra) followed the earlier decision in Prajapati Constructions Limited v. Manoj Ramanand Prajapad & Anr. (supra). In the said cases as well, the learned IPAB came to the conclusion that registration of the trademarks, which were subject matter of the challenge were deceptively similar to the trademarks already on record.
41. It is also material to note that the above decisions were interim orders passed by the learned IPAB. In none of the said decisions the question whether the registration of the trademark was liable to be cancelled solely on account of any procedural error, was finally adjudicated.
42. The learned Single Judge had rightly accepted the contention that said decisions would not be dispositive of the question whether the registration of the impugned trademark was liable to be cancelled as the same were interim orders. However, we find that the said decisions are in any case, not be applicable considering that in said cases, the IPAB had, prima facie, concluded that competing marks were similar but the same was not considered by the Registrar.
43. There is no dispute that if the registration of the trademark is contrary to the provisions of the Act, the same would be liable to be cancelled. However, in the present case, we are unable to accept that respondent no.1’s application for registration of the impugned mark was required to be rejected.
44. It is relevant to note that respondent no.1’s application for registration of the impugned trademark was filed over almost 14 years ago. It would be manifestly unfair if respondent no.1’s application is directed to be reconsidered on account of procedural error, which may be of a little consequence.
45. In the peculiar facts of the present case, we find no grounds to interfere with the impugned judgment. The appeal is, accordingly, dismissed. Pending applications also stand disposed of.”
Citation: L’Oréal India Pvt. Ltd. v. Rajesh Kumar Taneja Trading as Innovative Derma Care & Anr., RFA(OS)(IPD) 2/2023 & CM APPL. 23440-41/2023, High Court of Delhi, 15th July, 2024. Available at: https://indiankanoon.org/doc/97196410/
Authored by Kavya S, IP Strategy & Consulting Team, BananaIP Counsels.
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