CLARIWASH stands strong: L’Oréal’s Cancellation Pleas Rejected by Court

By Bhanu Dhingra and Chirag Tuteja

In a recent case of Loreal India Pvt Ltd vs Rajesh Kumar Taneja trading as Innovate Derma Care and Anr[1], the Hon’ble Delhi High Court observed that composite trademarks should not be dissected into their individual elements when assessing for deceptive similarity, emphasizing that they must be evaluated as a whole. Additionally, it was observed that even though there may be procedural lapse by the Trade Marks Registry at the examination stage, the court was inclined to remand back the matter as the same would amount to cancellation of registration already granted in respondent’s favour as far as in 2012 by observing that ‘minor lapse should not override the sustentative rights established by its registration’. The petitioner was also not able to demonstrate prior use of its mark through substantial and reliable evidences. While dismissing the Appeal in the present case, the Court held that since no deficiency was pointed out at the material time, respondent no.1 cannot be deprived of its valuable rights.

FACTS:-

• Loreal India Private Limited (hereinafter referred to as ‘Petitioner’) is engaged in the business of manufacturing and sale of a wide range of hair care, skincare, toiletries, and beauty products.
• Rajesh Kumar Taneja trading as Innovative Derma Care (hereinafter referred to as ‘Respondent no. 1’) filed application no. 1950938 for the mark ‘CLARIWASH’ in class 03 on April 16, 2010 claiming user from November 16, 2009 with the Trade Marks Registry, Delhi.
• On January 03, 2012 the Trade Marks Registry issued the Examination Report for the mark ‘CHARIWASH’ instead of ‘CLARIWASH’ citing two similar marks:

• The Application was advertised in the Trade Mark Journal No. 1519 dated January 16, 2012 as ‘CLARIWASH’

• The statutory period of 4 months from the date of advertisement got completed on May 16, 2012 and the mark was finally registered on May 18, 2012. However the mark was wrongly mentioned as ‘CHARIWASH’ instead of ‘CLARIWASH’.
• On June 14, 2012, Respondent filed an application before the trademark office for correction of the error in the mark in the Registration Certificate. The Application was allowed and the fresh Registration Certificate for the mark ‘CLARIWASH’ was issued.
• In the year 2022, the Petitioner filed a Cancellation Petition against the registered trademark ‘CLARIWASH’ (Registration no. 1950938) in class 03 before the Hon’ble Delhi High Court seeking removal of the trademark on the ground that the Petitioner’s predecessor has adopted mark ‘CLARIWASH’ since 2010 along with other ‘Clari’ formative marks.

SUBMISSIONS ON BEHALF OF THE PETITIONER

The learned counsel appearing on behalf of the petitioner made the following submissions before the Hon’ble court:

• The Petitioner submitted that Cheryl’s Cosmeceuticals Pvt. Ltd. (hereinafter “CCPL”) has applied/ obtained registration for several CLARI formative marks such as ‘CLARI-FI’, ‘Claripore’, ‘ClariNzyme’, ‘ClarifiAcne’, ‘CLARI GLOW’.
• The petitioner submitted that mark “CLARIWASH” was adopted in 2010 by CCPL (predecessor) and had been used along with other ‘Clari’ formative marks.
• The petitioner by way of Deed of Assignment and Asset Transfer Agreement dated October 23, 2013 acquired Cheryl’s Cosmeceuticals along with the reputation and goodwill of “Clari” formative marks.
• The petitioner had been granted registration for ‘CLARI-FI’ on February 3, 2010, claiming use from April 1, 2009. Whereas Respondent No. 1 had filed the application for the mark ‘CLARIWASH’ in class 3 on April 16, 2010, claiming use from November 16, 2009. However, first invoice placed on record is dated May 10, 2010, which after registration of ‘Clari’ formative mark. Therefore, Respondent no. 1 cannot claim the benefit of concurrent use under Section 12 of the Trademarks Act, 1999.
• It was submitted that the Trade Marks Registry erroneously issued Examination Report by wrongly conducting Trade Mark search for the mark ‘CHARIWASH’ instead of ‘CLARIWASH’.
• Based on examination, the Registration certificate was issued for the mark ‘CHARIWASH’. Subsequently upon filing a request, certificate was modified to ‘CLARIWASH’.
• The procedure adopted by the Trademark Registry in amending the Registration Certificate from ‘CHARIWASH’ to ‘CLARIWASH’ was also erroneous. Having discovered the error, Registry should have proceeded with fresh examination.
• It was also submitted that the Respondent No.1’s application of the mark ‘CLARIWASH’ be remanded back to Registry for consideration afresh from examination stage.

SUBMISSIONS ON BEHALF OF THE RESPONDENT

The learned counsel appearing on behalf of the respondent made the following submissions before the Hon’ble court:

• It was submitted that, even though the Examination Report was in respect to CHARIWASH, the Trademark Journal published the correct mark ‘CLARIWASH’ and therefore, petitioner had the statutory remedy of filing notice of opposition with 4 months of publication, which they choose not to do so.
• The Trademark registry after the statutory limitation, erroneously issued the Certificate for ‘CHARIWASH’ on May 18, 2012. The Respondent no. 1 on June 14, 2012 filed the request for correction of clerical error. Accordingly, Registry rectified the error and issued the fresh Certificate for the mark ‘CLARIWASH’.
• It was submitted that petitioner claims to have been using the mark ‘CLARIWASH’ since 2010 however, no evidence has been placed on record in support of the same. Moreover, Petitioner has not filed a single application for the mark ‘CLARIWASH’ until today.
• Use of the mark ‘CLARIWASH’ by the petitioner or its predecessor can only be ascertained from the invoices placed on record which are of the year 2013 i.e., after the Respondent No. 1 got Registration for the mark ‘CLARIWASH’.
• Several ‘Clari’ formative marks are already existing in the records of the Trade Marks Registry and the same does not imply that the petitioner has a monopoly over a part of the Trademark, i.e., ‘Clari’ and respondent no. 1’s mark CLARIWASH becomes defective.
• Petitioner was aware of the respondent’s use of the Trademark ‘CLARIWASH’, yet never applied for the Trademark registration, nor opposed it.

ISSUES RAISED IN CANCELLATION PETITION

• Whether the registration of the impugned trademark in favour of respondent no. 1 is vitiated on the ground of faulty examination report.
• Whether the Trade Mark “CLARIWASH” is liable to be cancelled in terms of the claim of the petitioner.
• Whether Respondent no. 1’s application is required to be restored before the Registrar for consideration afresh.

OBSERVATION BY SINGLE JUDGE

The Hon’ble Single Judge vide his judgment dated March 23, 2023 dismissed the cancellation petition filed by the Petitioner on the following grounds:

• Although, the Examination Report cited the similar marks as ‘CHARISMA’ and ‘CHARISHMA’, the mark was published correctly as CLARIWASH in the Trademarks Journal. Hence, it was open for the petitioner or its predecessor to oppose the application at the appropriate stage, which they failed to do.
• If the Registrar has committed an error and issued faulty examination report, Respondent no. 1 can neither be faulted nor deprived of his valuable rights of registration on account of mistake.
• The court is not inclined to remand back the matter as the same would amount to cancellation of registration already granted as far back as in 2012.
• There is no similarity in the marks ‘CLARI-FI’ and ‘CLARIWASH’ so as to cause a likelihood of confusion in the public or likelihood of association. It is settled position that while comparing two marks, marks have to be seen as a whole and cannot be broken into individual components. Therefore, ‘CLARIWASH’ cannot be read as ‘CLARI’ plus ‘WASH’ and similarly ‘CLARI-FI’ cannot be read as ‘CLARI’ plus ‘FI’ and hence petitioner cannot seek cancellation of trademark ‘CLARIWASH’.
• Nothing has been placed on record to show that the mark ‘CLARIWASH’ was adopted in 2010 by the petitioner or its predecessor. Also, petitioner has not filed any application for registration of mark ‘CLARIWASH’ till date.
• It was also noted that under the Transfer Agreement petitioner had taken oven approximately 170 trademark from CCPL and only 12 out of 170 trademarks include the words ‘CLARI’ as part of trademark.

Aggrieved by the judgment, the Petitioner preferred an Appeal before the Division bench of Hon’ble Delhi High Court

ISSUES RAISED IN APPEAL

• Whether Learned Single Judge erred in not appreciating that the impugned trademark in favour of respondent no. 1 is vitiated on the ground of faulty examination report.
• Whether Respondent no. 1’s application is required to be restored before the Registrar for consideration afresh.
• Whether Learned Single Judge erred in holding that CLARI formative marks of the appellant including CLARI-FI were not deceptive similar to the Trade Mark “CLARIWASH”.
• Whether Learned Single Judge out not having examining the question of similarity of trademarks as the same was to be examined by the Registrar in the first instance.

OBSERVATION BYAPPELLANT COURT

The Hon’ble Appellant Court vide its judgment dated July 15, 2024 has observed the following 4 principles:

Procedural error

There seem no substantial flaws in the procedure to justify the petitioner’s contention for cancelling the registration of the mark ‘CLARIWASH’. The court emphasized on the judicial principle that ‘minor procedural lapse should not override the substantive rights established by its registration’.

Deceptive similarity

After undergoing detailed analysis (visual, phonetic and conceptual) of both the marks, it was observed that Respondent no. 1’s mark, ‘CLARIWASH’ is not even closely similar to the petitioner’s CLARI formative marks. This approach is based on the judicial principle that ‘A trademark shall not be registered if there exists a likelihood of confusion on the part of the public because of its identity is linked to the earlier trademark and goods or services covered by the trademark are similar.’

Opposition Opportunity

The petitioner’s / predecessor’s failure to oppose the registration of the Respondent no.1 (impugned) mark ‘CLARIWASH’ at the appropriate stage and time. Additionally, the petitioner has acquired the CLARI formative marks from the predecessor in the year 2013, and the cancellation application is filed at the belated time, i.e., in the year 2022.

Remand back

Lastly, nothing is placed on record to show that the petitioner or its predecessor adopted the mark ‘CLARIWASH’ in 2010, invoice placed on record is of December 2013 and the sales figures is of 2014. Also, no application for the mark ‘CLARIWASH’ filed till date. In view thereof, there is no reason for remanding back as the same would amount to cancellation of the registration already granted in favour of respondent no.1 as far back as in 2012.

Conclusion

The Hon’ble Delhi High Court in the present case has tried to reinforce the principles of trademark law that the trademark must be distinct, and distinguishable from the already registered mark in order to avoid any perplexity amongst the consumers and procedural errors must be significant to warrant cancellation. In the present case, Respondent no. 1 filed the application for the trademark ‘CLARIWASH’ almost 14 years ago and it will be unfair if the application is reconsidered on account of procedural error.

Additionally, it is the responsibility of the trademark owner to be proactive in monitoring the freshly filed trademark applications, opposing application and/or taking necessary legal action in case if the same is infringing there rights, within time.

[1] RFA (OS) (IPD) 2/2023 & CM APPL. 23440-41/2023