Delhi High Court: In a case wherein Plaintiff 1, FSN E-Commerce Ventures Ltd. and Plaintiff 2, Nykaa E-Retail Pvt. Ltd. had filed the present suit seeking protection of the trade mark ‘NYKAA’ against misuse by Defendant 1, Pintu Kumar Yadav and Defendant 2, Cosmetify, Prathiba M. Singh, J., restrained defendants and all others acting for or on their behalf from using the mark/name/logo ‘OYKAA’ or any other mark which was identical or similar to that of plaintiffs’ mark/name/logo ‘NYKAA’ in respect of cosmetic, healthcare products, wellness products, clothing, jewelleries, accessories or any other cognate and allied goods.
Background
Plaintiffs were engaged in the manufacture, sale and distribution of several cosmetic products including makeup, skincare, haircare, fragrances, bath, and body as also clothing, footwear, accessories, jewellery and other wellness products. Plaintiffs also run an online wellness store since 2012, when they adopted the mark ‘NYKAA’. The www.nykaa.com platform which was registered by Plaintiff 1 claimed to be one of the most well-known e-commerce platforms with a large range of products especially focusing on products for women, including their own brand products manufactured by them, under various trade marks, including ‘NYKAA’.
Plaintiffs had obtained registrations for the said ‘NYKAA’ marks and logos in various classes including classes 3, 16, 24,25, 35, 42 and 44. Plaintiffs also had global registrations for the mark ‘NYKAA’ in countries like Singapore, UAE, United Kingdom, Bangladesh, Kuwait, Qatar, etc. Plaintiffs’ grievance was that defendants applied for the mark ‘OYKAA’ in 2022 in respect of a large range of cosmetic products in class 3 on a proposed to be used basis and defendants were engaged in identical goods and services i.e., makeup, skin care, wellness products for women and men under the mark ‘OYKAA’. Defendant 1 was marketing various cosmetic products and had a website www.oykaa.com and Defendant 2 was the manufacturer of such products, who claims to run the website www.cosmetify.in, which was a cosmetic company providing services in skincare, hair care, etc.
Analysis, Law, and Decision
The Court noted that defendants had registered the domain name in 2021 but the trade mark application had been filed in 2022 on a proposed to be used basis. Thus, the Court opined that it was clear that the adoption of defendants was quite recent. The Court further opined that the mark, the name, and the overall look and feel of the website gave a clear impression that defendants were making a deliberate attempt to imitate and copy plaintiffs name/mark ‘NYKAA’ only to gain monetarily by such deception.
Comparison of plaintiffs’ and defendants’ mark and the website
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Plaintiffs’ Mark/website |
Defendants’ Mark/website |
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NYKAA |
OYKAA |
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|
|
The Court noted that the terms and conditions on defendants’ website were identical to that of the plaintiffs’ website including those terms and conditions which might not even be applicable for it and thus, the copying had been to such an extent that defendants had not even cared to change the terms and conditions to suit their own business needs. The Court opined that in the present case, services and goods were identical, the trade channel and customers were identical, and defendants’ marks was almost imitative and identical to that of plaintiffs’ mark, thus, the ‘Triple Identity Test’ had been satisfied by plaintiffs against defendants.
The Court relied on Ahmed Oomerbhoy v. Gautam Tank, 2007 SCC OnLine Del 1685 and opined that in the present case also defendants had adopted a deceptively similar mark to that of plaintiffs’ mark/name ‘NYKAA’, to piggyback on plaintiffs’ goodwill and reputation in an identical field of business, which would cause confusion to the customers.
The Court opined that plaintiffs had made out a prima facie case for grant of an ex-parte ad-interim injunction and the balance of convenience lies in favour of the plaintiffs, considering that the products in the present case were cosmetic, healthcare and wellness products, and quality of all such products was of utmost importance. Such products were for personal use of consumers and if defendants were not injuncted in the present case, it would cause irreparable loss/harm not only to plaintiffs’ business but also to the customers using such products who were under the garb that the same was being manufactured by plaintiffs.
Thus, the Court restrained defendants and all others acting for or on their behalf from using the mark/name/logo ‘OYKAA’ or any other mark which was identical or similar to that of plaintiffs’ mark/name/logo ‘NYKAA’ in respect of cosmetic, healthcare products, wellness products, clothing, jewelleries, accessories or any other cognate and allied goods. Further, the Court ordered that the website and other online listings shall also be taken down immediately and insofar as the website www.oykaa.com was concerned, the website shall be placed under lock and suspension by the Domain Name Registrar concerned.
The Court noted that defendants’ products were also listed on third party websites, like India Mart, Amazon, and Flipkart and thus, directed that the said directories/online platforms shall also take down the listings of defendants upon receiving the specific URLs by plaintiff, if the same were not taken down by defendants.
The matter would next be listed on 05-04-2024.
[FSN E-Commerce Ventures Ltd. v. Pintu Kumar Yadav, 2023 SCC OnLine Del 6765, Order dated 12-10-2023]
Advocates who appeared in this case :
For the Plaintiffs: Saikrishna Rajagopal, Vivek Ayyagari, Angad S Makkar, Rishabh Rao, Advocates
