Colorbar Cosmetics Private Limited (Colorbar) is engaged in manufacturing and selling of cosmetic products. Colorbar is the owner of the mark ‘VELVET MATTE’ which was registered and adopted the mark ‘VELVET MATTE’ for their line of cosmetics being, inter alia, lipstick, lip gloss, liquid pre-makeup base, lip color, lip liner since2009 as a sub-brand/mark under the umbrella brand/house mark ‘COLORBAR’. Various variants of the mark have also been used by Colorbar.
Faces Canada, a Canadian company and its Indian sister company Faces Cosmetics India Private Limited (Faces India) (together jointly referred to as “Faces”), also engaged in the business of manufacturing and selling cosmetic products were using an identical mark ‘VELVET MATTE’ in respect of Products identical to that of Colorbar.
Upon acquiring knowledge of the use of the identical mark ‘VELVET MATTE’ by Faces, Colorbar issued a cease & desist notice to Faces, however Facesdid not comply with the requisitions set forth by COLORBAR, and in fact countered stating that the mark ‘VELVET MATTE’ was common to trade and descriptive and submitted various internet links to these products. It also stated that there were several distinguishing factors between its mark and products as compared to COLORBAR’.
Hence, Colorbar approached the Delhi High Court seeking an injunction against Faces restraining them to use the mark ‘VELVET MATTE’.
Colorbar claimed that on an earlier date, Faces was willing to give up the mark ‘VELVET MATTE’. However later on, Faces not only changed its counsels, but also its stand.
Colorbar submitted that, the various hyperlinks which were cited by Faces as a counter to the Cease & Desist notice were no longer active, and that no products nor any marks were available on the said links.
Colorbar further submitted that it had also protected its mark ‘VELVET MATTE’ by opposing other manufacturers who had applied for the similar marks, such as L’Oreal, Renee Cosmetics, etc. It emphasised that its mark ‘VELVET MATTE’ being a registered trademark, deserves to be protected.
On the other hand, Faces handed over various listings from e-commerce platforms contending that the mark ‘VELVET MATTE’ was used by several cosmetics manufacturers and the same being common to the trade.
Upon hearing both the parties, the Court observed that a perusal of the evidence placed on record, showed that certain products were sold under the mark ‘VELVET MATTE’ on some international e-commerce platforms by certain well-known cosmetic manufacturers. However the Court clarified that in any event, it is the settled position in law that “the mere fact that the Plaintiff may not take action against certain third-party users would not deprive the Plaintiff from seeking protection against those who are affecting the Plaintiff’s business”.
It was thus prima facie established that the cited websites/domain names stood apart and on a different footing from the domain names of Colorbar and Faces. There is neither any occasion nor is there any immediate necessity for Colorbar to precede against those websites/domain names, which were either nonfunctional or non-relatable.
Hence, the Court held that Colorbar could not be denied relief of an injunction solely because it had not proceeded against other similar names.
Secondly, in response to Faces’ contention that the mark ‘VELVET MATTE’ was descriptive and common to trade , the Court observed that since Faces had also applied for the registration for the mark ‘VELVET MATTE’, hence, it cannot be allowed to argue that the said mark was generic or descriptive or common to the trade. Therefore, Faces was estopped from claiming the same. The Court further added that, the manner in which Faces have sought to resile from the statement displayed its intention was merely to gain time and avoid the injunction.
In light of the foregoing observations, the Court granted an injunction in favour of Colorbar restraining FACES from manufacturing, selling and offering for sale cosmetics and other allied products under the mark ‘VELVET MATTE’ or any other mark identical or deceptively similar to Colorbar’s mark VELVET MATTE, till the next date of hearing.