L’Oreal Wins Landmark Trademark Case: Court Grants Injunction & Damages Against Counterfeiters
L'Oreal S.A. vs. Sahil Collection & Ors.
Case Summary:
Citation: L'Oreal S.A. vs. Sahil Collection & Ors., TM No. 11/2020, District Judge (Commercial Court)-02, Patiala House Courts, New Delhi
Headnote:
L'Oreal S.A. filed a trademark infringement and passing-off suit against Sahil Collection and others, alleging unauthorized use of its registered marks, including "L’OREAL PARIS," "L’OREAL PROFESSIONNEL," and "MAYBELLINE COLOSSAL KAJAL." The court ruled in favor of L’Oreal, granting a permanent injunction, delivery-up of infringing goods, and awarding damages of INR 1,00,000.
Background:
- Plaintiff: L'Oreal S.A., a France-based multinational engaged in beauty and cosmetic products.
- Defendants: Sahil Collection, MK Stores, Imran Motiwala, and Cosmetic Corner Point, all engaged in the sale of cosmetics in Mumbai.
- The suit was filed under Sections 134 & 135 of the Trademarks Act, 1999, and Section 55 of the Copyright Act, 1957.
- Plaintiff alleged that the defendants were engaged in the sale of counterfeit products under marks identical or deceptively similar to L'Oreal's registered trademarks.
- The suit was filed in February 2019, with an ex parte interim injunction and appointment of a local commissioner granted soon after.
- Defendant No. 1 was later withdrawn from the suit.
Key Issues:
- Whether the defendants' use of "L’OREAL PARIS," "L’OREAL PROFESSIONNEL," and "MAYBELLINE COLOSSAL KAJAL" constituted trademark infringement and passing off.
- Whether the plaintiff was entitled to permanent injunction and damages.
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- Jurisdiction of the Delhi Commercial Court to hear the matter.
Court’s Observations:
- Prior Use & Trademark Rights: Plaintiff demonstrated continuous, bona fide use of the trademarks since the early 1900s. The trademarks were well-known and registered in India.
- Trademark Infringement & Passing Off: The defendants’ use of marks identical and deceptively similar to L’Oreal’s registered trademarks was likely to deceive consumers, constituting infringement and passing off.
- Jurisdiction: The plaintiff established that the defendants’ infringing goods were available in New Delhi, including via online marketplaces, satisfying jurisdiction under Section 134(2) of the Trademarks Act and Section 62(2) of the Copyright Act.
- Local Commissioner’s Report: Confiscated goods confirmed the presence of counterfeit L'Oreal products at the defendants’ premises.
Judgment:
- Permanent Injunction: Defendants (Nos. 2 to 4) were restrained from using the infringing marks in any manner, including online sales.
- Delivery-Up: Defendants were directed to surrender all infringing goods for destruction.
- Damages: Court awarded INR 1,00,000 as exemplary damages against Defendants 2 to 4.
- Costs: The plaintiff was awarded the cost of the suit.
Significance:
This case reinforces the protection of well-known trademarks against infringement and passing off, emphasizing the importance of brand reputation and consumer protection. The court’s reliance on local commissioner reports and trademark registration details underscores the need for strong evidentiary support in IP disputes.