Trademark suit over 'VELVET MATTE' mark settled jointly by plaintiff and defendants; court decreed the suit in terms of the settlement.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
$~32
COLORBAR COSMETICS PRIVATE LIMITED ..... Plaintiff
Through: Ms. Sanya Kapoor & Ms. Shubhie Wahi, Advs.
versus
FACES COSMETICS INDIA PRIVATE LIMITED & ORS.
..... Defendants Through: Mr. Nageshwar Kumar, Adv. for D-1 to 3.
CORAM: HON'BLE MR. JUSTICE ANISH DAYAL
O R D E R % 29.01.2024
I.A. 2018/2024 ( under Order XXIII Rule 3 CPC)
“A. The Defendants along with their directors, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and on their behalf undertake to this Hon’ble Court, not to manufacture, sell offer for sale, export, advertise, market and/or in any manner use directly and/or indirectly in relation to cosmetics, specifically lip colours and lipsticks, and/or such allied and cognate goods under any mark that is identical to and/or deceptively similar to or contains the Trade Mark ‘VELVET MATTE’ and/or any other identical and/or deceptively similar Mark to the Plaintiff’s Trade Mark ‘VELVET MATTE’ amounting to infringement of the Plaintiff’s Mark registered in Class 3, passing off, unfair competition and dilution of the Plaintiff’s Mark;
This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
B. The Defendants along with their directors, sister concerns, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and, on their behalf, agree and acknowledge the statutory rights of the Plaintiff in the Trade Mark ‘VELVET MATTE’ as set out in the Plaint. The Defendants acknowledge and state that the Plaintiff is the registered proprietor of the Trade Mark as per the details provided below:
C. The Defendants along with their directors, sister concerns, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and on their behalf agree and acknowledge the common law rights of the Plaintiff in the Trade Mark ‘VELVET MATTE’ that the Plaintiff has acquired by virtue of prior adoption, long and extensive use, and the Defendants do not claim any rights over such Trade Mark which is similar and/or identical in any manner to the Trade Mark ‘VELVET MATTE’ of the Plaintiff; D. The Defendants along with their directors, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and on
This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
their behalf undertake in future never to adopt any trade mark identical and/or deceptively similar to the Plaintiff’s Mark ‘VELVET MATTE’;
E. The Defendants along with their directors, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and on their behalf agree to immediately withdraw the Trade Mark Application filed for the Impugned Mark ‘FACES CANADA Velvet Matte Lipstick’ bearing Application No. 5218416 in Class 3 and undertake not to file in India or in any other jurisdiction an Application for any mark identical to, containing or deceptively similar to the Plaintiff’s Mark ‘VELVET MATTE’ before the Trademarks Registry or Copyright Office or any other mark, the use or registration of which may amount to passing off or infringement of trademark of the Plaintiff;
F. The Defendants along with their directors, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and on their behalf undertake to this Hon’ble Court that the Inventory Sheet listing the existing stock of the impugned Product bearing the Impugned Mark ‘VELVET MATTE’ has been enclosed along with the present Application as DOCUMENTI and no other stock of the Impugned Product bearing the Impugned Mark ‘VELVET MATTE’ remains with the Defendants;
G. The Plaintiff herein allows the Defendants to exhaust and/or dispose of the existing stock as mentioned in the Inventory Sheet within a period of 90 days from the date of signing of the present Application. The Defendants agree and acknowledge to this Hon’ble Court that the said time limit is non-extendable and under no circumstances shall the Defendants be allowed to sell/dispose of the Impugned Product bearing the Impugned Mark ‘VELVET MATTE’ after the expiry of the afore-stated period of 90 days;
H. The Defendants along with their directors, sister concerns, executives, subsidiaries, subsequent assignees, proprietor, partners, officers, servants and agents and all those acting for and, on their behalf, undertake to this Hon’ble Court that the last batch of the Impugned Products under the Impugned Mark
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
‘VELVET MATTE’ manufactured on their behalf; annexed in DOCUMENT- II. The Defendants undertake and confirm to the Hon’ble Court that they have not manufactured any product bearing the Impugned Mark ‘VELVET MATTE’ and/or any other deceptively similar mark and/or bearing a Trade Mark identical or deceptively similar to the Plaintiff’s Trade Mark ‘VELVET MATTE’ after 11th May, 2022;
I. The Defendants undertake and agree that they shall destroy all labels, cartons, brochures, packets, dies, packaging, stationery, carry bags, price stickers, visiting cards, bill boards, brochures, promotional material, point of sale material, letter heads, cash memos, sign boards, sign posts, leaflets, and any other document or goods including but not limited to the products as mentioned in the Inventory Sheet annexed as DOCUMENT- II which are in the power, control and possession of the Defendants, bearing the Impugned Mark ‘VELVET MATTE’ and/or any other mark identical and/or deceptively similar to the Plaintiff’s Trade Mark ‘VELVET MATTE’ in the presence of a representative of the Plaintiff within 1 week from the recordal of the present Settlement Agreement;
J. The Defendants undertake and agree that if they are found violating any terms of the present Application, then they shall be liable to pay to the Plaintiff, Liquidated Damages for a sum of Rs. 2,00,00,000 (Rupees Two Crore only) and shall compensate the Plaintiff for all expenses, damages and losses suffered/incurred by the Plaintiff due to the Defendants’ violation of the present Application for a sum to be determined by the Hon’ble Court;
K. Notwithstanding the contents of Clause J, the Defendants shall not be liable for breach of the present Settlement Agreement in the event the:
(i) Impugned Products bearing the Impugned Mark ‘VELVET MATTE’, with Batch Nos. as mentioned in Clause H, which were already in the commercial stream with third party retailers and not in the power, possession and control of the Defendants prior to the Injunction Order dated 11th May, 2022, are not exhausted within the exhaustion period of 90 days expiring on 28th February, 2024, and/or
This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
(ii) The Impugned Products bearing the Impugned Mark ‘VELVET MATTE’ which may be released in the commercial stream during the exhaustion period pursuant to the terms of the present Settlement Agreement, and are still available in the commercial stream with third-party retailers after the exhaustion period of 90 days expiring on 28th February, 2024, beyond the power, possession and control of the Defendants.
L. The Defendants agree that the afore-stated undertakings given by the Defendants contained in the present Application are to the Hon’ble Court and agree that if they are found violating any of the terms of the present Application, then they will be liable for contempt of the orders of the Hon’ble Court;
3. In consideration of the above acknowledgements and undertakings by the Defendants, the Plaintiff gives up its claim for rendition of accounts, damages, costs etc;”
“i. A Decree for permanent injunction restraining the Defendants, its directors, executives, partners or proprietors, as
This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
the case may be, their officers, servants and agents or any other persons acting for and on their behalf from launching, manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to Lipstick; Lip-gloss; Liquid Pre Make-up base; Matte Touch Lipstick 3D Matte Lip Color, Color Lip Liner, Shinning Lip- Gloss and other cosmetics, including in class 3 and/or such allied and cognate goods under the Impugned Mark ‘VELVET MATTE/FACESCANADA Velvet Matte Lipstick’ or any other identical and/or deceptively similar mark to the Plaintiffs ‘VELVET MATTE’ amounting to infringement of the Plaintiffs Mark ‘VELVET MATTE’ registered in Class 3;
ii. A Decree for permanent injunction restraining the Defendants, their directors, executives, partners or proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from launching, manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to Lipstick; Lip-gloss; Liquid Pre Make-up base; Matte Touch Lipstick 3D Matte Lip Color, Color Lip Liner, Shinning LipGloss and other cosmetics, including in class 3 and/or such allied and cognate goods under the Impugned Mark ‘VELVET MATTE/ FACESCANADA Velvet Matte Lipstick’ or any other identical and/or deceptively similar mark to the Plaintiff’s ‘VELVET MATTE’ or doing any other thing which will lead to Passing off of the goods of the Defendant as those of the Plaintiff;
iii. A Decree for permanent injunction restraining the Defendants, their directors, executives, partners or proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from launching, manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to Lipstick; Lip-gloss; Liquid Pre Make-up base; Matte Touch Lipstick 3D Matte Lip Color, Color Lip Liner, Shinning Lip-Gloss and other cosmetics, including in class 3 and/or such allied and/or cognate goods under the Impugned Mark ‘VELVET MATTE/ FACESCANADA Velvet Matte Lipstick’ or any other identical and/or deceptively similar mark to the Plaintiff’s ‘VELVET MATTE’ or doing any other thing amounting to dilution of the Plaintiff’s Trademarks mentioned in the Plaint
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
including but not limited to Plaintiff’s trademark ‘VELVET MATTE’;
iv. A Decree for permanent injunction restraining the Defendants, their directors, executives, partners or proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from launching, manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to Lipstick; Lip-gloss; Liquid Pre Make-up base; Matte Touch Lipstick 3D Matte Lip Color, Color Lip Liner, Shinning Lip-Gloss and other cosmetics, including in class 3 and/or such allied and/or cognate goods under the Impugned Mark ‘VELVET MATTE/ FACESCANADA Velvet Matte Lipstick’ or any other identical and/or deceptively similar mark to the Plaintiff’s ‘VELVET MATTE’ or doing any other thing amounting to unfair competition;
v. A Decree for delivery up of all the labels, cartons, brochures, packets, dies, packaging, stationery, carry bags, price stickers, visiting cards, bill boards, brochures, promotional material, point of sale material, letter heads, cash memos, sign boards, sign posts, leaflets, and any other document or goods bearing the Impugned Mark ‘VELVET MATTE/FACESCANADA Velvet Matte Lipstick’ and/or any other mark identical or deceptively similar to the Plaintiff’s ‘VELVET MATTE’ to the authorized representative of the Plaintiff for the purpose of destruction/erasure;”
ANISH DAYAL, J
JANUARY 29, 2024/sm/sc
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 30/07/2024 at 12:46:41
1 provisions across 1 enactments
Faces Cosmetics India Private Limited
Anish Dayal
As recorded by the court registry
A suit of a commercial nature above the specified value, governed by the Commercial Courts Act 2015.
Judgements on the same questions, provisions and authorities, from every court
