The Delhi Commercial Court recently granted a decree of permanent injunction in favor of L’Oreal. This case exemplifies how companies can effectively leverage legal mechanisms to safeguard their reputation and market position against counterfeiters.
Background of the Case
L’Oreal, a renowned French cosmetics company, has been using the marks L’OREAL and various stylized labels/words since around 1910–1915. It is also the owner and proprietor of various trademarks such as MAYBELLINE and holds copyrights over the label artworks.
In 2017, M/s Oneness Enterprises (Defendant No. 1) imported a consignment of cosmetics bearing the trademarks L’OREAL and MAYBELLINE at Nhava Sheva Port, which was intercepted and seized by the Customs Office (Defendant No. 2). The Customs Office promptly informed L’Oreal’s attorneys and requested their participation in the proceedings. Upon inspection, it was confirmed that the seized goods were counterfeits. Accordingly, it was submitted to the Customs Office and the Commissioner of Customs (Defendant No. 3) that the seized goods must not be released to Oneness Enterprises.
Plaintiff’s Case
The Plaintiff argued that Oneness Enterprises’ dishonest and malafide adoption of L’Oreal’s trademarks was likely to cause confusion and deception amongst the public and traders. By passing off its sub-standard products, Oneness Enterprises was also likely to damage L’Oreal’s reputation and goodwill, causing financial loss.
As a result, L’Oreal filed a suit before the Additional District Judge, Patiala House Courts, New Delhi, seeking an ex parte ad interim injunction. The Court granted the injunction, thereby restraining Oneness Enterprises from using the trademarks, and also directed Defendants 2 and 3 not to release the seized goods.
Court Proceedings
Since no one appeared on behalf of the defendant, the Court proceeded ex parte. While the Customs Office did not file any written statement, it provided an affidavit confirming that the seized goods were still being held in their warehouse and had not been disposed of. The evidence submitted by L’Oreal remained uncontested.
Decision
The Court was convinced that Oneness Enterprises had imported seized goods bearing falsified trademarks of L’Oreal. Consequently, the Court directed the following:
- Oneness Enterprises was restrained from using L’Oreal’s trademarks, including similar marks like L’OREAL and MAYBELLINE, in relation to similar goods.
- The Customs Offices were restrained from releasing the seized goods.
- The seized goods were to be considered for destruction as per the procedure laid down in the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, and in compliance with other relevant governing provisions.
- The cost of the suit was awarded in favor of L’Oreal.
Conclusion
This case reaffirms the importance of robust intellectual property enforcement mechanisms in protecting global brands like L’Oreal against counterfeiters. The decision highlights the effectiveness of collaboration between legal and administrative authorities to prevent the circulation of counterfeit goods in the market.
Citation: L’Oreal vs M/s Oneness Enterprises, Delhi District Court, 19th October 2024, [CS (COMM.)/128/2023]. Available at: https://indiankanoon.org/doc/81960115/
Authored by Benita Alphonsa Basil, Trademark Team
Disclaimer
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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