Allowed

Geneva Laboratories Limited & Anr. v. Mr. Jay Khodiyar & Ors.

Delhi HC8 Feb 2024CS(COMM)/395/2019

Case brief

AI extract

What is this about?

In a suit for trademark infringement and passing off regarding Bio-Oil products, the Delhi High Court decreed favorably the Plaintiffs' claims in ex-parte proceedings. The Court confirmed sales of counterfeit goods by Defendants, ordered the handover of seized inventory to Plaintiffs, and awarded nominal damages.

What did the court decide?

The suit was decreed. Seized goods to be handed over to Plaintiffs for destruction. Nominal damages of Rs. 12,00,000/- awarded to be shared by Defendants. Costs awarded.

Geneva Laboratories Limited & Anr. Vs Mr. Jay Khodiyar & Ors. — Delhi HC (2024) — LawSathi Research

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$~17

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IN THE HIGH COURT OF DELHI AT NEW DELHI Date of Decision 08^th February, 2024

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- CS(COMM) 395/2019 & I.As. 10458/2019, 16292/2019, 1071/2020 GENEVA LABORATORIES LIMITED & ANR. ..... Plaintiffs Through: Ms. Anuradha Salhotra, Ms. Vanshika Arora and Mr. Zeeshan Khan, Advocates.

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versus

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MR. JAY KHODIYAR & ORS. ..... Defendants Through: Ex-parte vide orders dated 21^st September, 2022 and 23^rd November, 2023.

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CORAM:

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HON'BLE MR. JUSTICE SANJEEV NARULA

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JUDGMENT

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SANJEEV NARULA, J. (Oral):

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The Plaintiffs, owners of the trademarks “ ” and “ ”, seek redress against the sale of counterfeit products utilizing identical packaging and bearing their trademark by the Defendants. Despite being served with summons in the suit and being restrained by an interim order, the Defendants have failed to contest the proceedings. Consequently, their defence has been closed, leading to ex-parte proceedings. This matter is now before the Court for final disposal.

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The Plaintiffs’ case

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Plaintiff No. 1, a company incorporated in the British Virgin Islands

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Signature Not Verified Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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CS(COMM) 395/2019 Page 1 of 12

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on 11^th August, 2000, is the exlcusive manufacturer, seller and marketer of

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various skincare products under the brand “BIO-OIL”/ “ ” [ hereinafter, “ Bio-oil trademark ” ]. Plaintiff No. 2-company, founded in South Africa, is a licensee of Plaintiff No. 1 and as such, is manufacturing and distributing goods bearing the Bio-oil trademark.

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The Plaintiffs’ Bio-Oil skincare oil formulation, curated by the German chemist Mr. Dieter Beier, contains a breakthrough ingredient – Purcellin Oil, which helps in healing scars, stretch marks, especially those caused by pregnancy, teenage growth spurts or sudden weight gain. This preparation, which contains plant extracts and vitamins suspended in an oil base, is light and non-greasy, ensuring that the goodness contained in the vitamins and plant extracts is easily absorbed by the skin. The product, prior to being sold, has to undergo multiple safety assessments in accordance with the Regulation of the European Parliament and Council on Cosmetic Products. The toxicological profile, chemical structure, level of inclusion, and total level of daily exposure of each ingredient used, are all assessed before to ensure superior quality.

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Originally launched in South Africa in 1987, Bio-Oil products are now sold in over 139 countries. The products were first distributed in the Indian market in November, 2013. The Bio-oil trademark have enjoyed substantial global sales and market reputation since their launch. To establish this, the Plaintiffs have provided details of their annual global sales between the years 2008-2018 along with consolidated sales figures from

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Signature Not Verified

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CS(COMM) 395/2019 Page 2 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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Indian units for the years 2013-2018, in the plaint,¹ which are also supported by an affidavit from Mr. Alastair George Rippon, IP Director of Plaintiff No. 2.

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Till 04^th July, 2017, the Plaintiffs were utilizing their registered device

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“ ”, however, during the course of business, they fashioned a new

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logo – “ ”, which also stands registered in the name of Plaintiff No.

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The specifics of Plaintiff No. 1’s registered marks are as follows:

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S. No. Trademark and Class and Date of Application
number description of
goods
1.
03
05.08.2002
Essential Oils,
Cosmetics All
Being Goods
Falling In Class
3.
Under No.: 1124058
2.
03
21.11.2016
Soaps; perfumery,
essential oils,
cosmetics.
Under No.: 3414832

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1 At paragraphs No. 5 and 6.

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Signature Not Verified

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CS(COMM) 395/2019 Page 3 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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The Bio-oil trademark is well-recognized across the world. These goods are sold in an attractive packaging, that prominently displays the

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stylized Bio-oil logo “ ”. Plaintiff No. 1 also asserts copyright protection in above-noted artistic creation. The Plaintiffs have provided several supporting materials to demonstrate strong market reputation of Biooil trademark. Extensive advertising has contributed to brand recognition and trust. Furthermore, numerous awards and recognitions received globally (detailed in paragraph No. 12 of the plaint) serve as independent validation of the brand’s quality. The Plaintiffs have also submitted copies of their website, showcasing these awards, positive recommendations, and the high sales rankings their products have consistently achieved. The consumers therefore, exclusively associate the Bio-oil trademark with the Plaintiffs.

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In June 2019, Plaintiffs learnt of online sale of skincare products bearing the Bio-oil trademark and packed in an identical trade dress. Investigations conducted by the Plaintiffs on certain samples revealed counterfeiting of their products. They specifically identified Defendant No. 1, trading as M/s Maahi Enterprises, as a participant in the import and wholesale supply of counterfeit cosmetics, including those replicating the Plaintiffs’ skin oil sold under the Bio-oil trademark. The impugned products bear virtually no difference from the Plaintiffs’, except printing of the word “BAHUBALI” on the rim of the infringing goods. Further, lab analysis reports (annexed with the plaint) obtained by the Plaintiffs confirm the counterfeit nature of the Defendant No. 1’s products. Hence, the Plaintiffs

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Signature Not Verified

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CS(COMM) 395/2019 Page 4 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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initiated the instant suit.

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Proceedings till date

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At the preliminary stage, on 02^nd August, 2019, alongside issuing summons, the Court granted an ad-interim ex-parte injunction preventing Defendant No. 1 from using, infringing upon, or passing off the Plaintiffs’ registered Bio-oil trademark or any identical/ deceptively similar marks. Furthermore, a Local Commissioner was appointed to visit the premises of M/s Maahi Enterprises and confiscate and inventorize the infringing goods.

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During the execution of the Commission on 17^th August, 2019, Defendant No. 1 disclosed that he neither manufactured nor imported the counterfeit products; instead, he procured them from dealers located in Musafirkhana, Manish Market, Mumbai. Following these initial findings, the Plaintiffs commissioned an investigation in Mumbai, leading to the identification of Defendants No. 2, 3, and 4 as importers and sellers of

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counterfeit “BIO-OIL” / “ ” products, who allegedly also supplied the infringing products to Defendant No. 1.

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In view of the above-noted, the aforesaid Defendants were joined to the present proceedings on 22^nd November, 2019, and the ex - parte adinterim injunction was extended against Defendants No. 2 to 4 on 10^th Jnauary, 2020. On the same date, a Local Commissioner was appointed to inspect Defendants No. 1 to 4’s premises and seize all infringing material found thereon.

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Thereafter, contending that Defendant No. 5 is a manufacturer and

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Signature Not Verified

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CS(COMM) 395/2019 Page 5 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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nationwide supplier of these counterfeit products with established links to Defendants No. 2 to 4, Plaintiffs filed I.A. 1070/2020 to array Defendant No. 5. Their application was allowed, and the ad-interim directions operating against Defendants No. 1 to 4 were also directed to apply to Defendant No. 5 on 27^th January, 2020. Another Local Commissioner was also appointed in respect of Defendant No. 5’s premises.

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Since the receipt of summons, Defendants No. 1, 3 and 5 never entered appearance to contest the suit claims. Defendants No. 2 and 4 were represented through counsel, however, despite opportunities, failed to file a written statement. In these circumstances, on 21^st September, 2022, the Court proceeded ex-parte against Defendant No. 1, and also closed the right to file written statement of Defendants No. 2 and 4. Although Defendant No. 3 filed a written statement, they never initiated any steps to cure the defects in filing so that the same could be brought on record. As regards Defendant No. 5, he was served through citation on 21^st March, 2023, but did not join the instant proceedings. Considering the above, the Court proceeded exparte against Defendants No. 2 to 5 on 23^rd November, 2023.

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The Local Commissioners’ Reports

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Visits by the Local Commissioners to Defendants’ premises resulted in the seizure of materials, a full inventory of which is as follows:

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*Name of Defendant*	*Quantity of g*	*oods found*
Mr. Jay Khodiyar [Defendant No. 1]	a. 41 BIO OIL Packaging with	60 ML (White Orange Printing)
	b. 17 BIO OIL Packaging with	125 ML (White Orange Printing)

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Signature Not Verified

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CS(COMM) 395/2019 Page 6 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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Rose Collection [Defendant No. 2]	No stock found
A.A. Collection [Defendant No. 3]	No stock found
Maharashtra Store [Defendant No. 4]	467 finished products
Mr. Aslam Khan [Defendant No. 5]	a. 100 finished counterfeit products b. 482 loose panels of packaging material with the imprint of the packaging.
	c. Each of such panels had 2 boxes printed on them

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Analysis and findings

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A visual representation of the conflicting products is as follows:

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Plaintiffs’ product Defendants’ products
Defendant No. 1

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Signature Not Verified

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CS(COMM) 395/2019 Page 7 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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Defendant No. 2

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Defendant No. 3

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Signature Not Verified Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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CS(COMM) 395/2019 Page 8 of 12

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Defendant No. 4

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Signature Not Verified Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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CS(COMM) 395/2019 Page 9 of 12

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Defendant No. 5

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The above-noted comparison demonstrates that the Defendants’ impugned products are exact replicas of the Plaintiffs’ original products. Adopting an identical mark for identical goods and the imitation of product description, application guidelines, and packaging aligns with the criteria of clear and direct infringement outlined in Section 29(2)(c) of the Trademarks Act, 1999.

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As noted above, the Defendants have refrained from contesting the case. Due to the absence of any specific denials, the allegations of trademark infringement and passing off, in conjunction with the supportive evidence, fall within the ambit of deemed admissions of all facts mentioned in the plaint.² Though the Court has the discretion to require further proof, the Plaintiff has, through the documents presented on record, satisfied the test required to prove infringement. The reports submitted by the Local Commissioners, which can be read into evidence,³ provide unassailable substantiation implicating Defendants No. 1, 4, and 5 in the direct sale of counterfeit goods bearing the Plaintiffs’ registered Bio-oil trademark. Further bolstering their case, an investigation commissioned by the Plaintiffs resulted in the procurement of sample products from Defendants No. 2 and 3, which were subsequently confirmed as counterfeit by laboratory analysis. The Plaintiffs have also presented the affidavit of the investigator, Mr. Amarjeet Choudhary, of 09^th January, 2020, and the accompanying laboratory report. Therefore, the Court deems it appropriate to dispense with

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2 Refer: Balraj Taneja v. Sunil Madan, (1999) 8 SCC 396.

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3 S ee: ML Brother LLP v. Mahesh Kumar Bhuralal Tanna, 2022 SCC OnLine Del 1452.

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Signature Not Verified Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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CS(COMM) 395/2019 Page 10 of 12

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the requirement of leading ex-parte evidence.⁴

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Given that the Defendants have not submitted their defence to the present suit, despite sufficient knowledge of the proceedings, the present suit is liable to be decreed in favour of the Plaintiffs, as per Order VIII Rule 10 read with Order XIII-A of the Code of Civil Procedure, 1908, as applicable to commercial suits, and Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.

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Relief

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Accordingly, the suit is decreed in terms of paragraph No. 39(a) to (c) and (h) of the plaint. The goods seized by the Local Commissioners, which are lying on superdari with the Defendants, details whereof are recorded in the Reports of the Local Commissioners, are forthwith directed to be handed over to counsel for Plaintiffs or Authorised Representative of the Plaintiffs, who are then permitted to destroy the same, in accordance with law.

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As regards claim of damages, this Court is convinced that this is not a case of innocent adoption, and Defendants’ conduct invites the award of damages. Taking a reasonable assessment of the volume of seizure made, nature of counterfeiting, in the opinion of the Court, Plaintiffs are entitled to nominal damages, to the tune of Rs. 12,00,000/-, recoverable from the Defendants in the following proportions:

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*Name of the Defendant*	*Amount of damages to be paid*
Mr. Jay Khodiyar [Defendant No. 1]	Rs. 2,00,000/-
Rose Collection [Defendant No. 2]	Rs. 1,00,000/-

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4 See : Disney Enterprises Inc. and Anr. v. Balraj Muttneja and Ors ., 2014 SCC OnLine Del 781 , Cross Fit LLC v. RTB Gym and Fitness Centre , 2022 SCC OnLine Del 2788, and The Indian Performing Right Society Ltd. v. Gauhati Town Club , 2013 (134) DRJ 732.

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Signature Not Verified

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CS(COMM) 395/2019 Page 11 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

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A.A. Collection [Defendant No. 3]	Rs. 1,00,000/-
Maharashtra Store [Defendant No. 4]	Rs. 3,00,000/-
Mr. Aslam Khan [Defendant No. 5]	Rs. 5,00,000/-

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Plaintiffs are also entitled to actual costs, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022 from the Defendants. Plaintiffs shall file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 31^st March, 2024. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.

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Decree sheet be drawn up.

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The suit, along with pending applications, is disposed of.

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SANJEEV NARULA, J

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FEBRUARY 8, 2024 as

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Signature Not Verified

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CS(COMM) 395/2019 Page 12 of 12

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Digitally Signed By:Sapna Sethi Signing Da te:1 7.02.2024 21:09:25

Geneva Laboratories Limited & Anr. v. Mr. Jay Khodiyar & Ors.

Case brief

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What did the court decide?

Geneva Laboratories Limited & Anr. v. Mr. Jay Khodiyar & Ors.

Case brief

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