Prima Facie Dishonest Adoption And Fraudulent Registration Of ECLAT SUPERIOR Shocks Conscience Of Court | Bombay High Court Grants Injunction Protecting Longstanding Trademark ECLAT
Safiya Malik
The High Court of Judicature at Bombay, Commercial Division, Single Bench of Justice Manish Pitale, granted interim injunctions in favour of the plaintiff, restraining the defendants from using the impugned mark "ECLAT SUPERIOR" in connection with cosmetic products. The court recorded that the plaintiff had made out a strong prima facie case of infringement and passing-off, satisfying the stringent threshold laid down in Lupin Ltd. vs. Johnson and Johnson (2014 SCC OnLine Bom 4596) for grant of interim reliefs even against a registered trademark.
The plaintiff, Dr. Ashok M. Bhat, sought protection of his intellectual property rights in the trademark 'ECLAT', registered since 1946 with claimed use since 1935 through his predecessor. He alleged that defendant no.1, Sandeep Udai Naraian Gupta, was infringing his rights by using the mark "ECLAT SUPERIOR" on cosmetic goods including face creams and serums. The plaintiff also claimed passing-off and challenged the registration granted to the impugned mark.
Supporting documents included the trademark registration certificate, a deed of assignment dated 10.10.2006, a Chartered Accountant's certificate of sales and advertising expenses, copies of invoices dating from 1999, and documents evidencing opposition proceedings initiated by the plaintiff. It was alleged that registration was granted to the impugned mark after the Registrar treated the plaintiff's opposition as abandoned.
It was recorded that while the registration for "ECLAT SUPERIOR" was granted in August 2022, the plaintiff filed a rectification application in September 2024. Defendant no.1 argued that the delay in challenging the registration amounted to acquiescence.
Defendant no.1 further argued that its mark was different from the plaintiff’s label mark, that the word 'ECLAT' was common to trade, and that the plaintiff could not claim exclusivity in the word. Defendant also cited its significantly higher turnover to claim balance of convenience in its favour.
The plaintiff countered that 'ECLAT' was the essential and prominent part of its label mark, and that the defendant’s use of the same constituted infringement and passing-off. The defendant's contradictory stance before the Registrar (claiming it invented 'ECLAT SUPERIOR') and the Court (claiming 'ECLAT' was generic) was pointed out. The plaintiff also referred to the Full Bench and Division Bench decisions of this Court including Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd. and Torrent Pharmaceuticals vs. Wockhardt Limited.
The Court observed: "The applicant has placed on record sufficient material to show that its predecessor and thereafter, the applicant itself has continuously commercially used the said trade mark from the year 1935, with registration dating back to 16.12.1946." It held that the label mark may consist of multiple elements but "the word 'Eclat' is indeed the most prominent feature."
The Court rejected the defendant’s argument under Section 17 of the Trade Marks Act, stating: "It is only if this most leading, essential and prominent feature of its trade mark is non-distinctive in character and is common to trade, that the applicant would be disentitled to assert its exclusive right." It held that no such proof of extensive use by others was placed on record by the defendant.
Regarding the Registrar’s conduct, the Court observed: "Before the Trade Mark Registry, the mark of applicant, of which the leading and essential feature is also 'Eclat', was not even cited...the registration itself is prima facie found to be illegal and fraudulent."
On the issue of delay, the Court stated: "Delay in a situation, where the plaintiff has registration for its trade mark, pales into insignificance, as the highest statutory protection is available to a plaintiff that approaches the Court to assert its statutory rights."
It also rejected the plea of acquiescence, stating: "Failure to challenge the registration for a period of about two years, in itself cannot be said to be a 'positive act'...At worst, it can be said to be an aspect of tardiness."
On the issue of passing-off, the Court held that the plaintiff had satisfied the three-pronged test, observing: "Such a misrepresentation is causing and, in any case, is likely to cause injury and damage to the applicant."
As to balance of convenience, the Court stated: "If the very adoption of the impugned trade mark is prima facie found to be dishonest, it cannot lie in the mouth of defendant No.1 that since its sales turnover is far higher...interim reliefs should be denied."
The Bombay High Court allowed the interim application and issued directions pending the hearing and final disposal of the suit. The Court directed that the defendants, including their proprietor, partners, servants, agents, distributors, assignees, stockists, and all those connected with them in business, are restrained by temporary injunction from manufacturing, marketing, distributing, selling, or using in any manner cosmetic goods such as face cream, shampoo, serum, toner, and other like cosmetic goods under the impugned mark "ECLAT" or "ECLAT SUPERIOR," or any mark identical with or deceptively similar to the plaintiff's registered trademark "ECLAT," so as to infringe upon the plaintiff’s registered trademark.
The Court also directed Defendant No. 1, along with its proprietor, servants, agents, distributors, assignees, stockists, and all connected persons, to refrain by temporary injunction from marketing, distributing, selling, or using in any manner the domain name or website "www.eclatsuperior.com" or any domain name identical with or deceptively similar to the plaintiff's registered trademark "ECLAT," in relation to cosmetic goods, so as to infringe upon the said trademark.
In addition, the Court ordered that the defendants, their proprietor, partners, servants, agents, distributors, assignees, stockists, and all connected persons are restrained by temporary injunction from manufacturing, marketing, distributing, selling, or using the mark "ECLAT" or "ECLAT SUPERIOR" or any similar mark in connection with cosmetic products, so as to pass off their goods and business as those of the plaintiff or in any way connected or associated with the plaintiff.
Furthermore, the Court directed Defendant No. 1, along with its proprietor, servants, agents, distributors, assignees, stockists, and all connected persons, to refrain by temporary injunction from marketing, distributing, selling, or using the domain name or website "www.eclatsuperior.com" or any identical or deceptively similar domain name to pass off goods as those of the plaintiff or in any way connected or associated with the plaintiff.
Advocates Representing the Parties
For the Petitioners: Mr. Hiren Kamod, Advocate, along with Mr. Vinod Bhagat, Ms. Sonam Pradhan, and Ms. Ishita Maheshwari, instructed by Mr. Vinod A. Bhagat.
For the Respondents: Mr. Jehan Mehta, Advocate, along with Mr. Rahul Punjabi. Mr. Shon Gadgil, Advocate
Case Title: Dr. Ashok M. Bhat vs. Sandeep Udai Naraian Gupta & Anr.
Case Number: Interim Application (Lodging) No. 37430 of 2024 in Commercial IP Suit (Lodging) No. 37157 of 2024
Bench: Justice Manish Pitale
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