Delhi Court Restrains Siliguri Traders From Dealing In Fake “GARNIER” Products

A Delhi Court has granted a permanent injunction in favour of Laboratoire Garnier, restraining multiple Siliguri traders from manufacturing and selling counterfeit products bearing the identical “GARNIER” trademark, ruling that such use reflected a mala fide attempt to leverage the company's established market presence and amounted to infringement.

The court presided over by District Judge Arul Varma held, “There is irrefragable evidence on record to demonstrate that the Defendants have taken advantage of the Plaintiff's ingenuity, and have infringed the trade mark of the Plaintiff with impunity, and have nonchalantly sold off their counterfeit goods in the market to credulous buyers. Such knavery cannot be brooked. The issues are therefore decided in favour of the plaintiff."

The dispute surfaced when Laboratoire Garnier, a French company owning the Garnier trademark for beauty and cosmetic products, found that several traders in Siliguri were selling counterfeit products using its mark.

Laboratoire Garnier approached the Court seeking a permanent injunction against the traders. At the initial stage, the Court granted an ad interim injunction and appointed Local Commissioners to inspect their premises.

In 2010, the Local Commissioners visited the premises and seized 10 counterfeit products from one of the traders, and submitted a report before the Court.

The company stated that its registered trademarks had, over the years, acquired significant goodwill and reputation worldwide and that it held exclusive statutory and proprietary rights over their use. It argued that the traders had plagiarised the artistic features of its registered trade mark “GARNIeR” and used identical marks, thereby also infringing its copyright.

It also pointed out that these actions had not only dented its reputation but had also resulted in business losses.

Laboratoire Garnier further submitted that while some of the traders had entered an appearance at the outset, they later stopped participating in the proceedings and were proceeded against ex parte, leaving the company's claims unchallenged.

On their part, a few traders, in their written statements, questioned the maintainability of the suit, mainly on the ground that the Delhi court lacked territorial jurisdiction. They also denied any wrongdoing, disputing the allegations of infringement and passing off.

As the case progressed, some traders chose to settle or were removed from the array of parties, while others remained absent and were proceeded against ex parte.

Dealing with the objection on jurisdiction, the Court relied on invoices issued by an authorised distributor to note that Laboratoire Garnier was carrying on business in South Delhi. This, it held, was sufficient to confer jurisdiction under Section 134 of the Trade Marks Act.

The Court also noted that the record clearly showed that Laboratoire Garnier held valid registrations for its trademarks, including the widely recognised 'GARNIeR' mark.

On examining the photographs of the seized goods, the comparison chart, and the Local Commissioners' report, the Court found that the traders had plainly imitated the distinctive typography of the 'GARNIeR' mark, including its peculiar styling with a small 'e' in an otherwise large font.

It observed, “Thus, defendants not only used the identical mark (GARNIeR)but also used the mark in respect of identical goods (like eye liner, mascara, shampoo, creams etc.) which are being sold by the plaintiff. The products recovered from the possession of defendants were certainly meant to be sold in the market for profit. There is thus indisputable evidence to establish that defendants had been using a mark exactly identical to the registered trademark of the plaintiff”

The court further noted, "Despite the lawful registration of the trade marks of the Plaintiff, the defendants employed these marks in respect of identical goods as the plaintiff's, thereby leaving no opportunity to the hoi polloi, the consumers, to make a discernment, or an informed choice"

Finding that the traders had acted with malafide intent to benefit from Laboratoire Garnier's goodwill, the Court held that infringement and passing off were clearly established.

Accordingly, the court decreed the suit in favour of Laboratoire Garnier and restrained the traders from manufacturing, selling, or dealing in products bearing the “GARNIeR” mark or any deceptively similar mark.

The seized counterfeit goods have been directed to be handed over to Laboratoire Garnier for destruction.