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BECAUSE YOU(r trade marks) ARE WORTH IT!

November 25, 2021

By Lucy Rana and Ragini Ghosh

CASE ANALYSIS: L’ORÈAL S.A. v. ASHOK KUMAR & ORS. – CS (COMM) 474/2021

The well-known personal care and beauty brand – L’Orèal S.A., recently stumbled upon an entity who was found to be fraudulently impersonating them by using their trademarked brand name Loreal in their domain name while also using phony business email addresses suffixing their domain name. Upon discreetly demanding documents to ascertain a proof of validity of their business, under the disguise of setting a business deal in motion, L’Orèal was able to make the  infringer furnish fake and forged documents, such as fake GST certificate, fake certificate of incorporation, forged cancelled cheques, etc., made out in the name of  L’Orèal  S.A. The infringer was also found to be operating a rogue website at the domain name www.lorealglobal.in.

L’Orèal S.A. (Plaintiff) lodged a commercial case in the Delhi High Court against the infringing party misusing the name of the Plaintiff’s well-known company for impersonation, and the domain name registrar and the telecom service provider were made parties as Defendants to the case.

Grounds

  • That L’Orèal S.A. (Plaintiff) is an anonymously organized society, existing under the laws of France, and are actively engaged in the business of manufacturing, distributing and sale of personal care and beauty products;
  • That the trademark ‘L’ORÈAL’ has been adopted and used by the Plaintiff since the year 1900, along with various stylized labels thereof;
  • That owing to their operations, they have acquired goodwill and reputation both globally as well as in India, and hold several trademark registrations in India as well;
  • That the Defendant is impersonating the Plaintiff, L’Orèal A.’s, Indian subsidiary;
  • That the Defendants are hosting a rogue website under the domain name lorealglobal.in, which is deceptively similar/identical to the Plaintiff’s original website; and are also impersonating as an employee of the Plaintiff company and using email IDs that incorporate the Plaintiff’s trademark/domain name, such as operations@lorealglobal.in, paresh.deshmukh@lorealglobal.in and ashwini.r@lorealglobal.in.
  • That along with the aforementioned email IDs, the Defendant is also operating a mobile number linked to the said email IDs;
  • That in view of the abovementioned contentions, the Plaintiff has established a prima facie case to seek an injunction against the actions of the Defendant.

Accordingly, Judge Sanjeev Narula observed that the balance of convenience lies in favour of the Plaintiff and ex parte directed the following:

  • Defendant No. 1 (unknown) and its proprietors/partners, agents, representatives, distributors, assignees, heirs, successors, stockists and all others acting for and on their behalf are restrained from using the website lorealglobal.in and email addresses – operations@lorealglobal.in, paresh.deshmukh@lorealglobal.in and ashwini.r@lorealglobal.in, and/or any other email address, website, social media accounts containing the Plaintiff’s trade mark;
  • Defendant No. 1 is further also restrained from using the Plaintiff’s trade-name by any other mode or manner, including the Plaintiff’s trade-mark/label ‘L’OREAL’ and/or other formative trademarks/labels/variants in relation to any impugned, fraudulent and violative activities amounting to or likely to amount to
  1. Infringement;
  2. Passing-off;
  3. Violation of the Plaintiff’s proprietary rights in their trade name including the copyrights of the Plaintiff; and
  4. Falsification, unfair and unethical trade practices in respect of Plaintiff’s aforesaid registered trademark ‘L’ORÈAL’.
  • Defendant No. 2 (Domain name registrar) are directed to furnish all details and information about Defendant No. 1 to the Plaintiff, including payment details (as provided while purchasing the impugned domain name), and to block access to the impugned domain name/website at– lorealglobal.in.
  • Defendant No. 3 (telecom service provider) is directed to disclose to the Plaintiff, the user details along with KYC details of the mobile number found to be used by Defendant No. 1.
  • Defendant Nos. 4 and 5 are directed to issue directions to all internet service providers registered under it to block access to the impugned domain name/website – lorealglobal.in.
  • The Delhi Police is directed to submit a report in respect of the Plaintiff before the Delhi High Court.

The matter has been listed once again before the Delhi High Court on December 08, 2021.

In the instant matter, the interim order passed by the Delhi High Court shows its pro-active approach in effectively redressing a case, even though the whereabouts of the infringer of the Plaintiff’s trademark was yet to be ascertained. The order was delivered effectively, providing ample scope to practically ascertain the details of the infringer by directing the Domain Name Registrar and the Telecom Service Provider to furnish the same. Further, to ensure that the infringers are in fact restrained from operating the impugned website, the Court went the extra mile by issuing a direction to block public access on the impugned website as well. This evidenced how curbing further harm/loss to the injured party holds first priority in the eyes of the Court, and that they were therefore committed to tackling the matter without letting the lack of details about Defendant No. 1 act as an impediment in the substantial adjudication of the matter. Further, apart from granting the ex parte injunction to safeguard the Plaintiff’s interest, it may be pertinent to note that the directions issued innately also safeguarded the interests of the consumers, wherein the existence of a fake domain name operating under the identical trade mark of the Plaintiff, posed a grave and inherent threat to the target consumers as well. Therefore, the injunction also acts to efficiently mitigate the same, as the instance of infringement, i.e. the adoption of an identical domain name, may in fact quite likely be overlooked by any person/consumer of average intellect and memory.

Girishma Sai Chintalacheruvu, Associate at S.S. Rana & Co. has assisted in the research of this article.

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