In a recent case between Marc Salon and Beauty Equipments Pvt Ltd (“Marc Salon”) and GM Sales, the Delhi High Court confirmed an interim injunction in favor of Marc Salon. The case involved claims of passing off, copyright infringement, unfair competition, and unfair trade practices relating to furniture designs. The Court had earlier granted an interim injunction in favor of Marc Salon, and GM Sales filed an application to vacate the same.
The plaintiff, Marc Salon, manufactures and sells salon furniture and claims to have a comprehensive range of products and an extensive distribution network in India and abroad. Marc Salon alleged that GM Sales, run by Mr. Goutam Acharya, copied its product designs and images, listed the products on deceptively similar websites, and sold the copied product designs under a different brand name, “DECORITE.” Marc Salon claimed that Mr. Acharya, a former distributor of its products, had used this relationship to gain information and subsequently copy its designs.
Marc Salon further asserted that it had developed distinct and innovative designs for its salon furniture, which included chairs, styling stations, and spa beds. Marc Salon provided evidence of its extensive promotion and market recognition, emphasizing that its unique designs were protected under the Trade Marks Act, 1999, and the Copyright Act, 1957. It highlighted its significant investments in developing and advertising these designs and claimed that GM Sales’ actions had caused substantial financial losses and potential consumer confusion. it also pointed out that the defendant had registered a deceptively confusing domain name, www.beautysalonfurniture.in, in addition to hosting another website, www.gmsales.in.
In response, GM Sales argued that Marc Salon’s products were common in the market and not unique. It contended that Marc Salon did not hold design registrations for these products and that such designs were widely available globally, thus lacking distinctiveness. GM Sales maintained that its own trademark, “DECORITE,” distinguished its products from those of Marc Salon and that any similarities were coincidental and influenced by common market trends. GM Sales further stated that it had ceased using the allegedly infringing website and was operating under a different domain. It also argued that Marc Salon’s claims were unfounded since it did not possess any registered trademarks or other intellectual property rights for the designs in question.
Upon reviewing the submissions and evidence, the Court concluded that Marc Salon’s designs were prima facie unique and deserving of protection. The Court noted that Marc Salon had consistently advertised its products’ distinct shapes and designs in industry magazines, receiving multiple awards for its innovations. The prior association of GM Sales with Marc Salon and the adoption of a deceptively similar domain name indicated bad faith and an intent to create market confusion. The Court dismissed GM Sales’ argument that the designs were common, emphasizing that no other industry or public member had contested Marc Salon’s claims of originality. The Court found that GM Sales’ actions amounted to passing off and noted that the extensive promotion and recognition received by Marc Salon supported their claims of distinctiveness.
Consequently, the Court confirmed the interim injunction granted earlier, and asked GM Sales to not use the product designs and images of Marc Salon. It dismissed GM Sales’ plea to vacate the injunction.
Relevant Paras from the Judgment
Paragraphs from the Judgment that contain the Court’s analysis read as follows:
“Analysis
- Having perused the documents on record and post appreciation of the submissions of the counsel for the parties, this Court is of the opinion that the plaintiff is entitled to the injunction as sought and the defendant’s plea for vacation of the said injunction is not sustainable, inter alia, for the following reasons:
31.1 Section 2(zb) of the Trade Marks Act includes shape of goods as part of “trademark”, capable of being represented graphically and capable of distinguishing goods of one person from that of the other. Shape is also included as part of the definition of “mark” in Section 2(m) of the Act. Both these provisions are extracted as under for ready reference:
“Section 2(m): “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof; Section 2(zb): “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors; and–
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in relation to goods or services for the purpose of By:MANISH KUMAR CS(COMM) 493/2021 38 of 44 indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;”
31.2 Plaintiff’s claim that they were specializing in customization of salon furniture and have developed these unique designs, is prima facie acceptable. This is on a conjoint reading of their advertisements in the industry magazines, where plaintiff has consistently sought to advertise their products’ shape and design in a prominent manner (sample pictures have been extracted above in paras 26 and 27). The salon furniture supplied by the plaintiff has also received extensive recognition, as evident from the various awards that it has received for their “Beauty Equipment”, listed in para 6 above. If, as per the defendant’s submissions, it was to be believed that plaintiff was indulging in selling mere copies of international products, or was otherwise merely trading an international product, there is no reason why industrial awards are conferred on plaintiff as recognition for their equipment.
31.3 Moreover, the interview of Mr. Durgesh Sharma, to which defendant adverted, in fact seems to suggest that the company did not believe in Chinese and European imports, but instead was customizing and creating furniture indigenously for domestic consumption. At best, it could be assumed, if one were to accept defendant’s submissions, that inspiration for designing salon furniture by the plaintiff was taken from international brands. That is a matter of evidence and trial and at this prima facie stage, some scattered pieces of pictures, which the defendant has produced to show that some of the plaintiff’s products seem similar to those sold abroad, cannot be determinative.
31.4 This allegation by the defendant also has to be weighed in context of other surrounding circumstances, inter alia, the extensive reputation which the plaintiff claims, evident from their extensive promotions in industry magazines; profile of their company and various industry awards; absence of any other article or comment by any member of the industry or public that plaintiffs’ furniture were indeed slavish copies of those manufacturers abroad. There is also no proceeding initiated by any design/mark owner of salon furniture alleging that the plaintiff’s designs were indeed copied. In this context, it would be difficult to accept the defendant’s submissions, of lack of uniqueness of plaintiff’s salon furniture.
31.5 Once it is prima facie accepted that the plaintiff’s designs were indeed unique, they would be entitled to protection under the Trade Marks Act. In any event, the common law right that the plaintiff has against entities passing off their goods, as that of the plaintiff, would always remain. From the tabulations given in para 11 above, it is quite evident, at least prima facie, that the defendant substantially copied these designs being developed/sold by the plaintiff, and had only sought to present them on their own website by changing its color or its name. For example, the Brilliant Chair of the plaintiff in a dark- brown colour presented on their website and brochure, is exactly the same as the chair sold by the defendant, though named Stella Prime Salon Chair in a lighter-brown colour. The same is with Glitz Chair of the plaintiff in a darker- red colour, which the defendant shows as Milano Prime Beauty Parlor Salon Chair, in a more vibrant red colour. Some of the pictures do not even have a different colour combination but seem like a slavish copy of what has been shown by the plaintiff on their website. There is no evidence placed on record by the defendant that they entered the industry prior to the plaintiff, and were in fact a prior user of such salon furniture.
31.6 The adoption by the defendant of a deceptively similar domain name being www.beautysalonfurniture.in to that of the plaintiff’s domain www.salonfurniture.in, prima facie shows dishonest intent to come closer to the plaintiff as much as possible and to cause confusion and association in the market. Despite the averment made by defendant’s counsel during their submissions that they had stopped using the said website, it transpired that the site was still active and was recorded in the order dated 14th May, 2024.
31.7 Prior association of the defendant as an informal distributor of the plaintiff also prima facie shows that the defendant was aware and fully in knowledge of the plaintiff’s products, having traded in them independently or through other entities like Raghunandan Furcos Pvt. Limited. The commencement of defendant’s own website subsequently points out to a strong likelihood of the defendant having taken advantage of their market knowledge of the plaintiff’s products and used them, slavishly as that of their own.
- Defendant’s submission that they had many designs on their website and only 45 had been shown by the plaintiff cannot come to their rescue. 45 designs which are being sold, promoted and represented in exactly the same manner as that of the plaintiff, are enough prima facie evidence of passing off the defendant’s products as that of the plaintiff.
- This Court’s opinion is also informed by the decisions relied upon by the plaintiff, in particular, the decision in Gorbatschow Wodka KG (supra); the relevant paragraph thereof is produced hereunder:
“22. The test is whether the shape that has been adopted by the plaintiff is one that is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off. In a judgment of the Division Bench of this Court in Aktiebolage Volvo v. Volvo Steels Limited, 1998 PTC (18) (DB) the Division Bench has laid a considerable amount of emphasis on the reason for the adoption of the mark. If the defendant has no plausible explanation, then that is certainly a circumstance which must weigh in the balance. In R.R. Oomerbhoy Pvt. Ltd. v. Court Receiver, 2003 (5) Mh.LJ. 372 : 2003 (27) PTC 580 (DB) (Bom) a Division Bench of this Court adverted to the fact that the shape of the container and of the plastic bottle in which the defendant had sold its product, had a striking resemblance to those of the plaintiff. In a judgment of the Delhi High Court in Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 2005 (1) Mh.LJ. 613 : 2003 (27) PTC 478 a Learned Single Judge observed that “trade dress is the soul for identification” of goods to their source or origin and a customer forms an overall impression of the source of origin of the goods from a visual impression of the colour combination as well as from the shape of the container and packaging. A conscious imitation of the colour combination, get up or layout of the container would lead to the design of the defendant to cause confusion in the mind of the customer. (emphasis added)”
Citation: Marc Salon and Beauty Equipments Pvt Ltd v. GM Sales, CS(COMM) 493/2021 (H.C. Delhi May 30, 2024). Available at: http://indiankanoon.org/doc/123809939/, Visited on: 01/06/2024.
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The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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