This Delhi High Court recently heard a trade mark infringement and passing off case involving the competing marks “Blue Valley” and “Blue Very” both being used for cosmetics. The court had  initially granted an ex parte injunction to Sudarshan cosmetics (Sudarshan) on the basis of their  registration of the mark “Blue Valley” against Vinayak Industries’ (Vinayak) use of the mark “Blue  Very” for cosmetics, in particular the hair removal creams. The court while setting aside the  injunction held the averments made by Sudarshan lack an element of candor as there was no reference  to the disclaimer of the word “Blue” (by  Sudarshan) when pleading its registration for BLUE VALLEY.

Sudarshan’s contentions in support of their case:

  1. They own registration of the trademark “Blue Valley” which is a coined word, and that it has  been used in relation to cosmetics since the year 2006.
  2. The  trademark  “Blue  Valley”  is  a  well-known  trademark  and  they  have  established  reputation and extensive sale of products under the said trademark.
  3. The rival marks are similar and used for hair removal cream. Thus, the trade channels were same.
  4. The Defendants, Vinayak Industries and their licensee, are claimant’s competitors and are  infringing their mark by using a deceptively similar mark “Blue Very” for which they have also filed an application for registration.

Vinayak Industries’ arguments to set aside the injunction:

  1. They honestly conceived and adopted the trademark “Blue Very” in 2012.
  2. Sudarshan has misled the court by not explicitly stating that their trademark “Blue Valley” when  advertised in trade mark journal carried a disclaimer for the word “BLUE”, which implies that  Sudarshan has no exclusive right in the word “BLUE”.
  3. Their licensee had filed a suit in the District Court against Sudarshan for declaration and  permanent  injunction  under  Section  142  of  the  Trademarks  Act,  1999,  from  issuing groundless threats. This fact has also not been disclosed in their pleading.
  4. The documents filed by Sudarshan did not establish user since 2006 and the invoices relied on by  them carried the name "Su-zon's Health Care Industries" and not the name of Sudarshan Cosmetics.
  5. There are a large number of marks on the Register with the prefix “Blue” which clearly evidences  the fact that “Blue” is common to the trade. Therefore, the Plaintiff cannot claim any monopoly  over the same.

After hearing the respective submissions and reviewing the documents on record the court while  setting aside the injunction originally granted in favour of Sudarshan observed:

  • The averments made in the plaint did lack an element of candor as there was no reference to the  disclaimer for the word “Blue”. to the disclaimer for the word “Blue”.
  • An  honest reference to the nature of  action  instituted by Vinayak’s licensee  against  Sudarshan was missing.
  • Invoices for the period 2008-2009 pertain to Su-zon's Health Care Industries and there is no   averment  as  to  the  connection  Sudarshan  had  with  the  Su-  zon's  Health  Care Industries.
  • Vinayak has disputed that Sudarshan’s trademark Blue Valley is a well- known mark, which has  attained distinctiveness and secondary meaning.
  • The  consumers  of  the  product  in  issue,  which  is  an  hair  removal  cream,  comprises  generally of ladies, they’ll surely be able to distinguish between the two rival marks.