Facts

The plaintiff (Clinique Laboratories) has the registered trademark by the

name ‘CLINIQUE’ since 13th July,1981 in regards to cosmetics, lotions, oils
and  creams, used in cleansing etc, falling under class 3 of the goods and
services mentioned in the 4th schedule to the Trade Marks Rules, 2002.
There are many other trademarks that are owned by the plaintiff and
most of them include the word ‘CLINIQUE’. For the plaintiff’s products
which are used worldwide, Clinique is the most distinguished feature of
the trademark and the plaintiff’s company has been doing business in
India since 2007

The respondent has been selling their product “STRETCH NIL

SKINCLINIQ” since 1999, defendant has their registered trademark by the
name ‘CLINIQ’ but the plaintiff got to know about the registration and
usage of mark “SKINCLINIQ” and use of the label ‘SKINCLINIQ STRETCH
NIL’ on or about September, 2006. Defendants were involved in the same
business as that of plaintiff and both the parties got their trademark
registered with the registrar of trademark authority.

On discovering about the similar trademark that defendant got, the

plaintiff filed a rectification application (cancellation petition) with the
Registrar of Trademarks, India with a view to get the trademark of the
defendant cancelled. At the same time the plaintiff also files a suit in the
court seeking the order of injunction against the defendant prohibiting
them from passing off the goods manufactured under the similar
trademark and selling them in the Indian market not even through their
distributor and agents.

Issues

 Whether there is an infringement of the trademark by the

defendant.                                    
 Whether a suit be brought up against a registered trademark for
infringement of another registered trademark.
 Whether the court can pass interim injunction to restrain the use
of registered trademark.

Order
In this landmark case the court said that a proprietor of a registered
trademark is legally capable of bringing a suit against another proprietor
of the registered trademark if the trademark is identical or similar in any
kind and infringes the right of the trademark owner.

Also Read: Legal Maxims related to the Law of Torts

According to the section 124(1)(ii) of the Indian Trade Marks Act, 1999,
until the cancellation petition is not finally decided by the competent
authorities the suit is liable to be stayed till then.

However the court is competent to pas interlocutory orders in between

like interim injunction, appointment of receiver attachment of property
and keeping of accounts, etc under section 124(5) of the same.

In this case, on 09.09.2009, the hon’ble court passed an order of interim

injunction against the defendant until the rectification application is not
finally decided by the Registrar of the Trademark and further restricting
them to manufacture or sell the products in the market either directly or
through their distributors and agents.

Order of the Appellate court

After this order when the defendant went to the appeal in the Delhi High
Court for vacating the ex-parte order of the lower court, the single judge
upheld the decision of the lower court stating that the test of infringement
laid down in section 29 of the trademark act was completely satisfied as it
is prima facie that the trademark was invalidly registered and
consequently the defendant has been using the similar trademark
illegally.

The High Court also stated that the similarity in the trademark ‘CLINIQUE’
and ‘CLINIQ’ looks a deliberate attempt on part of the defendant to
benefit from the petitioner’s trademark and was done to just showcase
some relation or association between the products.

Also the printing of the words like “Made in India by Gufic Bio Science Ltd”
on the products suggests the idea to public that the gufic is
manufacturing these products under the licence from the petitioner. The
court also observed that the word “SKINCLINIQ” was used in much
smaller font than the rest of the name of the product so even if the court
restricts the defendant from using the trademark the defendant would not
suffer much loss from this order.