Delhi High Court: Prathiba M. Singh, J. granted an ad interim ex parte injunction in favour of Colorbar cosmetics Private Limited by restraining the Canada based company, Faces Cosmetics India Private Limited from manufacturing, selling and offering for sale cosmetics and other products under the trademark “Velvet matte” or any other mark which indicates or depicts any similarity to the plaintiff’s mark till 19-09-2022 which is the next date of hearing.
The case of the plaintiff was that they used the mark in respect of cosmetics in the year 2009 as sub-brand under ‘COLORBAR’. The plaintiff was the registered proprietor of the mark “VELVET MATTE” which was applied on 22-09-2016 and the claim for the same was from 12-08-2009 onwards. The defendant was also engaged in the business of manufacturing and selling cosmetics products, it used the identical mark “VELVET MATTE” in respect of a similar class of products.
Upon knowing of the Defendants’ use of the mark ‘VELVET MATTE’, Plaintiff issued a cease and desist notice to Defendant on 16-11-2021. Their reply on 09-12-2021 conveyed their disagreement to comply with the requisition of the Plaintiff and argued that the mark is common to trade and descriptive, as also, that there were several distinguishing factors between the Plaintiff’s and Defendants’ products.
Earlier, the Defendants were willing to give up the mark, and the matter was accordingly adjourned to enable the parties to file a joint application under Order XXIII Rule 3 Civil Procedure Code. However, the Court noted that there was a change of stand as the Director of Defendant’s company submitted that the Defendants were no longer willing to give up the mark.
The Court was of the view that the Defendants had also applied for the registration of the mark ‘VELVET MATTE’, and hence, the Defendants cannot be allowed to argue that the said mark was generic or descriptive or common to the trade. “Therefore, the Defendants are stopped from claiming the same,” the Court added.
While listing the matter for further hearing on 19-09-2022, the Court directed that the written statement and reply be filed in accordance with the timelines as prescribed under the Commercial Courts Act, 2015.[Colorbar Cosmetics (P) Ltd. v. Faces Cosmetic (INDIA) (P) Ltd., 2022 SCC OnLine Del 1760, decided on 11-05-2022]
Appearances:
For the Plaintiff: Mr Sagar Chandra, Ms Ishani Chandra, Ms Taapsi Johri, Ms Shubie Wahi, Ms Saniya Scott, Ms Sanya Kapoor & Ms Ankita Seth, Advocates
For the Defendant: Mr Siddharth Yadav & Mr Nageshwar, Advocates