2010 (7) TMI 1146 - HC - Companies Law

Summary

Issues Involved:
1. Interim relief application under Order 39 Rules 1 and 2, CPC.
2. Application for vacating ex parte order under Order 39 Rule 4, CPC.
3. Application under Section 124(1) of the Trade Marks Act, 1999 for stay of proceedings pending rectification.

Detailed Analysis:

1. Interim Relief Application under Order 39 Rules 1 and 2, CPC:

The respondents/plaintiffs filed an application seeking interim relief to restrain the appellants/defendants from using the mark 'CLINIQ' or any mark similar to 'CLINIQUE'. An ex parte order was passed on 16.12.2008, restraining the appellants from marketing goods under the impugned trademark. The learned single Judge made this order absolute till the disposal of the suit, noting that the respondents were the registered proprietors of the trademark 'CLINIQUE' and other related marks since 1981. The Judge observed that the appellants' use of 'SKINCLINIQ' was not above board and raised doubts about their intentions, concluding that the test of infringement under Section 29 of the Trade Marks Act, 1999, was satisfied.

2. Application for Vacating Ex Parte Order under Order 39 Rule 4, CPC:

The appellants filed an application to vacate the ex parte order, arguing that their mark 'SKINCLINIQ' was not deceptively similar to 'CLINIQUE' and was used for different products. They highlighted the significant price difference between their products and those of the respondents, arguing that this would prevent consumer confusion. However, the learned single Judge dismissed this application, holding that the appellants' use of 'CLINIQ' was likely to cause confusion and that the respondents had made out a prima facie case for infringement.

3. Application under Section 124(1) of the Trade Marks Act, 1999:

The respondents also filed an application under Section 124(1)(ii) of the Trade Marks Act to stay the suit proceedings pending rectification proceedings for the cancellation of the appellants' trademark 'SKINCLINIQ'. The learned single Judge allowed this application, adjourning the suit proceedings to await the outcome of the rectification proceedings. However, during the appeal, it was agreed that the Section 124 issue would not be considered, focusing instead on the question of injunction.

Judgment Analysis:

The court compared the trademarks 'CLINIQUE' and 'SKINCLINIQ', noting that they were not identical. The test for deceptive similarity was applied, considering the overall structural and phonetic similarity from the perspective of an average consumer with imperfect recollection. The court found no overall structural or phonetic similarity between the marks when considered as a whole. It was noted that the appellants' mark 'SKINCLINIQ' should not be split into components ('SKIN' and 'CLINIQ') for comparison with 'CLINIQUE'. The significant price differential between the products further supported the conclusion that there was no likelihood of consumer confusion.

The court concluded that the learned single Judge erred in finding a prima facie case of infringement. Consequently, the appeal was allowed, the injunction granted by the learned single Judge was vacated, and the order allowing IA No. 15425/2008 and dismissing IA No. 217/2009 was set aside. The parties were left to bear their own costs.