MAC Personal Care Pvt. Ltd. & Another VS Laverana GMBH & Co.

KG &
Another

FACTS

The Respondent/Plaintiff, Lavarana GMBH & Co. Kg, was registered as a limited liability company in
Germany and adopted the trademark LAVERA in 1980 in connection with its cosmetic product which it
began marketing in 1982. The product has been marketed in a large array of countries, such as Italy,
France, Ireland and Denmark and was pending registration in India in accordance with the Respondent’s
application dated September 16, 2009. The Respondent learned about the Appellant’s use of the mark
‘MAC’s LAVERA’ in September 2010 when it was published in the trademark journal for inviting
oppositions to its registration. The Respondent duly filed its opposition. After considering the material put
forth by the Plaintiff, the single judge came to the conclusion that the Plaintiff had prima facie established
its goodwill as well as trans-border use of its mark which warranted the grant of an ex-parte interim
injunction. An appeal was filed with the division bench against the grant of interim injunction.

CONTENTIONS

The Respondent’s argument was threefold. First, it contended that the scale and scope of the use and
marketing of its mark was reflective of the fact that the mark had attained goodwill and reputation across
the globe. By indicating how the sale figures of its product rose from 74,76,500 euros in 2007 to
1,15,27,839 euros in 2011, the Respondent sought to demonstrate how its mark had attained worldwide
acclaim. Second, the Respondent contended that its products are widely available on online stores like
eBay and it had registered domain names for LAVERA in countries like India, Japan and Denmark.
Therefore, by virtue of its prominent presence in cyberspace, the Respondent contended that its product
was sufficiently well known in India. Third, the Respondent contended that Indians traveling abroad are
exposed to its products and it follows that they associate the mark LAVERA with its cosmetic product.

On the other hand, the Appellant contended that the Respondent had never used its product in India – a
claim best evidenced by the fact that the Respondent admitted in its own registration application that it was
“planning” to sell the product in question in India. Second, the Appellant contended that it had drawn
inspiration from the plant aloe vera for formulating the word LAVERA. By removing ‘a’ from aloe vera,
they had formed the word ‘LOEVERA’ which eventually resulted in the formulation of the word
‘LAVERA’. Further, the Appellant argued that they had been using the words ‘LAVERA’ and ‘MAC’s
LAVERA’ since 2005 and the 7-year delay in the filing of the suit by the Respondent amounted to its
acquiescence of the Appellant’s use. Finally, the Appellant contended that the word LAVERA is Latin for
‘truth’ and, since the word is in the public domain, it cannot be appropriated by the Respondent. The
Appellant assailed the prima facie view of the single judge principally on the ground that, after essentially
implying that the Respondent had failed to prima facie prove that its mark had attained trans-border
reputation, the judge went on to discuss the relevant legal principles that guide the inquiry of whether or
not the threshold for proving trans-border reputation was met and abruptly came to the conclusion that the
Respondent had prima facie demonstrated that the mark had attained sufficient goodwill and reputation.

DECISION

The court held that the single judge was clearly in error in coming to the conclusion that the Plaintiff had
successfully discharged the burden of prima facie establishing its trans-border goodwill without even
considering any evidence to support this proposition. The court noted that the single judge had returned a
self-contradictory finding in paras 44 and 51 of the judgment – he held in para 44 that the plaintiff had
failed to prima facie demonstrate that the mark had attained unique goodwill in other countries which is
the sine qua non for proving trans-border reputation but however held at para 51 that the Plaintiff had
successfully discharged this burden.
The single judge’s order is erroneous. Contrary to what the court states, the single judge did not arrive at a
finding in para 44 that the Plaintiff had failed to prima facie demonstrate the existence of trans-border
reputation; he merely enunciated the threshold that must be met by the Plaintiff for proving the existence
of trans-border reputation. While the court is right in asserting that the single judge abruptly arrived at the
finding that the Plaintiff had met the threshold for proving trans-border reputation in para 51 without
considering any relevant information, I think it would be fallacious to assert that the single judge arrived at
two contradictory findings in paras 44 and 51.
The court also delved into a discussion of what constitutes trans-border reputation and what factors should
guide and inform such an inquiry.

In para 15, the court listed out the two ingredients that are required to be proved to establish trans-border
reputation:

 Existence of international reputation in the plaintiff’s trademark on account of its use made overseas;
and
 The spilling over of the reputation to India.

On account of the proliferation of communication devices in today’s information age, the court noted that
the second ingredient is no longer hard to establish. However, with respect to the first ingredient, the court
set forth three factors to ascertain the international reputation of the mark.
First, the registration of a trademark in a foreign country is of particular relevance because it amounts to a
public declaration by the Plaintiff that the trademark belongs to it and also makes the details of the
trademark publicly accessible. It is also indicative of the distinctive character of the mark because the
registration of the mark takes place only after the registering authorities in the concerned nation assess
its sui generis features. Registration of the mark in multiple jurisdictions can create a strong presumption
of trans-border reputation. Second, a reference to the mark in international journals, magazines and
publications can serve as a powerful indicator of the mark’s reputation, especially if the journal/magazine
is considerably renowned. Third, any form of commercial exploitation of the mark should typically be
adequate to prove its reputation, provided that the same isn’t de minimis or trivial. Volume of sales of the
product bearing the mark can also be a critical piece of evidence in this respect.
In light of these factors, the court took note of the fact that the sale of the Respondent’s product rose nearly
by 50% during the period between 2007 and 2011; the Respondent’s mark was registered in eight
countries; and the Respondent owned seven domain names in relation to the product LAVERA. On the
basis of this, the court came to the conclusion that the Respondent was able to successfully discharge the
burden of demonstrating that its mark had prima facie attained trans-border reputation.
In response to the contention that the word LAVERA was in the public domain and that the Respondent’s
choice was in no way distinctive, the court noted that this argument wasn’t legally tenable because the
English equivalent of the word LAVERA, i.e. truth, has no intrinsic nexus with cosmetic products, so it
would be fallacious to assert that the word LAVERA was an obvious choice for the respondent’s product.
Calling the Appellant’s reasoning for the adoption of the word ‘LAVERA’ “prima facie contrived”, the
court held that the single judge was right in holding that the Appellant’s attempt to get its mark registered
shortly after the Respondent filed its registration application was prima facie dishonest.
In response to the Appellant’s argument about delay and laches, the court, after enunciating the seven
factors to be taken into consideration to address such arguments, held that honesty of adoption at the initial
stage must be shown by the Defendant to sustain a claim of delay or bona fide concurrent use; since the
Defendant in this case was a dishonest adopter of the mark LAVERA, its claims about delay and laches
must fall by the wayside.