Trademark Case Analysis Geneva Laboratories Limited & Anr Vs. Jay Khodiyar & Ors

Trademark Case Analysis Geneva Laboratories Limited & Anr Vs. Jay Khodiyar & Ors. Summary
Trademark infringement is the unauthorized use of a registered trademark without the prior permission of the applicant. There are multiple cases of infringement faced by many famous brands like Nike, Addidas, Gucci, and others. Some often go unrecognized, and some infringement cases end up in mutual settlement but come at a great cost to the public who have been deceived.
This case is an apt example of a famous brand being infringed and the proceeding finally ending in an ex-parte order.
Facts of the Case

Plaintiffs- Geneva Laboratories Limited & Anr

Defendant 1- Mr. Jay Khodiyar
Defendant 2- Rose Collection
Defendant 3- A.A. Collection
Defendant 4- Maharashtra Store
Defendant 5- Mr. Aslam Khan

The Plaintiffs are owners of the famous trademark ‘Bio Oil’ which is sold in over 139 countries. This skincare oil formula is curated after in-depth Research & Development in the cosmetic industry which helps in healing scars and stretch marks.

The Plaintiffs have significant presence in the Indian market since 2013 and have registered both their old and updated device marks, with the old mark dating back to 05/08/2002.

In June 2019, the Plaintiffs discovered the online sale of counterfeit products bearing the identical trademark ‘Bio Oil’ and having identical trade dress by the Defendants. Due to the failure on the part of the Defendants to contest the proceeding, the case was taken ex-parte for final disposal before the High Court of Delhi.

Plaintiffs Case

Plaintiffs have been the exclusive seller, marketer, and manufacturer of products bearing the trademark ‘Bio Oil’. Their products are well-reputed across the globe for their healing properties and consumers associate the goods with that of the Plaintiffs only.

They have supported their claim of being well-recognized and having a considerable market reputation by adducing various substantial documents like copies of the website, awards won positive recommendations, global sales figures between the years 2008-2018, Indian sales figures 2013-2018, all of which makes their case even stronger.

Proceedings Till Date

Defendant No. 1, Joy Khodiyar trading as M/s Maahi Enterprises was a major participant in the import and wholesale supply of counterfeit ‘Bio Oil’ products. Investigations and lab reports carried out later by the Plaintiffs substantiated the counterfeiting products.

An ad-interim ex-parte injunction was issued preventing Defendant No. 1 from using, infringing upon, or passing off Plaintiff's registered trademark or any mark similar/ identical to it.

A Local Commissioner appointed later revealed that Defendant 1 neither manufactured nor imported the counterfeiting goods, instead obtained it from Mumbai.

This discovery later led to the identification of Defendants No. 2, 3, and 4 as importers and sellers of the counterfeiting goods who were later joined in as Defendants to the present proceeding. At a later stage, Defendant No. 5 was declared to be the manufacturer and nationwide supplier of the infringing goods. The Court appointed a Local Commissioner to inspect the premises of all the Defendants and seize all the counterfeiting goods.

During the current proceeding, only Defendants 2 and 4 were represented by their counsel and even such, failed to submit the written statements. Hence, the court decided to proceed ex-parte concerning all the Defendants.

Local Commissioner’s Report 
The Commissioner’s report demonstrated that the Defendants’ counterfeiting ‘Bio-Oil’ goods were identical to that of the Plaintiff's original product to the extent that there was a clear and direct infringement under Section 29(2)(c) of the Trademarks Act, 1999.
Final Judgement
As the Defendants have failed to contest the case, their absence of any specific denial amounts to trademark infringement. The Plaintiffs, on record, have submitted sufficient credible evidence to substantiate their claim. The same when considered together with the report of the Local Commissioner, implicates Defendants No. 1,4 and 5 in the sale of the infringing goods bearing the Plaintiffs mark.
The investigations and laboratory analysis corroborate the counterfeiting nature of the goods and the involvement of Defendants No. 2 and 3 in the same.
The Court finally passed the judgment stating that the goods were not because of innocent adoption was the same but were meticulously and intentionally planned to deceive the customers and strive for the reputation of the Plaintiffs.
The court granted the Plaintiffs nominal damages of Rs.12,00,000 recoverable from the Defendants in different proportions.
Frequently Asked Questions
Q 1. What is trademark infringement?
Trademark infringement occurs when a person without the prior permission of the applicant uses a similar/ identical mark as that of the applicant’s registered mark.
Q2. What are the remedies available when your mark has been infringed?
The following are the remedies:
Civil Remedies

Damages in the form of compensation
Account of profits
Destruction of infringing goods
Injunction/ex-parte injunction/ad-interim injunction
Cost of the proceedings paid to the Plaintiff by the Defendants

Criminal Remedy

With Imprisonment for a period which should not be less than 6 months and can be extended to 3 years.
With a fine which should not be less than Rs. 50,000 and which can be extended to 2 lakh Rupees.

Q3. What is innocent adoption of a trademark?
Innocent adoption means when a person infringes upon someone else’s trademark not knowing that it belongs to an applicant and that the mark has been registered. Thus, using it innocently and in good faith.
Q4. Can an infringement suit be filed for an unregistered trademark?
No, a trademark infringement suit can be filed only for a registered trademark. An unregistered trademark can bring an action of passing off against the perpetrator.

Summary

Trademark infringement is the unauthorized use of a registered trademark without the prior permission of the applicant. There are multiple cases of infringement faced by many famous brands like Nike, Addidas, Gucci, and others. Some often go unrecognized, and some infringement cases end up in mutual settlement but come at a great cost to the public who have been deceived.

This case is an apt example of a famous brand being infringed and the proceeding finally ending in an ex-parte order.

Facts of the Case

Plaintiffs- Geneva Laboratories Limited & Anr

Defendant 1- Mr. Jay Khodiyar

Defendant 2- Rose Collection

Defendant 3- A.A. Collection

Defendant 4- Maharashtra Store

Defendant 5- Mr. Aslam Khan

The Plaintiffs are owners of the famous trademark ‘Bio Oil’ which is sold in over 139 countries. This skincare oil formula is curated after in-depth Research & Development in the cosmetic industry which helps in healing scars and stretch marks.

The Plaintiffs have significant presence in the Indian market since 2013 and have registered both their old and updated device marks, with the old mark dating back to 05/08/2002.

In June 2019, the Plaintiffs discovered the online sale of counterfeit products bearing the identical trademark ‘Bio Oil’ and having identical trade dress by the Defendants. Due to the failure on the part of the Defendants to contest the proceeding, the case was taken ex-parte for final disposal before the High Court of Delhi.

Plaintiffs Case

Plaintiffs have been the exclusive seller, marketer, and manufacturer of products bearing the trademark ‘Bio Oil’. Their products are well-reputed across the globe for their healing properties and consumers associate the goods with that of the Plaintiffs only.

They have supported their claim of being well-recognized and having a considerable market reputation by adducing various substantial documents like copies of the website, awards won positive recommendations, global sales figures between the years 2008-2018, Indian sales figures 2013-2018, all of which makes their case even stronger.

Proceedings Till Date

Defendant No. 1, Joy Khodiyar trading as M/s Maahi Enterprises was a major participant in the import and wholesale supply of counterfeit ‘Bio Oil’ products. Investigations and lab reports carried out later by the Plaintiffs substantiated the counterfeiting products.

An ad-interim ex-parte injunction was issued preventing Defendant No. 1 from using, infringing upon, or passing off Plaintiff's registered trademark or any mark similar/ identical to it.

A Local Commissioner appointed later revealed that Defendant 1 neither manufactured nor imported the counterfeiting goods, instead obtained it from Mumbai.

This discovery later led to the identification of Defendants No. 2, 3, and 4 as importers and sellers of the counterfeiting goods who were later joined in as Defendants to the present proceeding. At a later stage, Defendant No. 5 was declared to be the manufacturer and nationwide supplier of the infringing goods. The Court appointed a Local Commissioner to inspect the premises of all the Defendants and seize all the counterfeiting goods.

During the current proceeding, only Defendants 2 and 4 were represented by their counsel and even such, failed to submit the written statements. Hence, the court decided to proceed ex-parte concerning all the Defendants.

Local Commissioner’s Report

The Commissioner’s report demonstrated that the Defendants’ counterfeiting ‘Bio-Oil’ goods were identical to that of the Plaintiff's original product to the extent that there was a clear and direct infringement under Section 29(2)(c) of the Trademarks Act, 1999.

Final Judgement

As the Defendants have failed to contest the case, their absence of any specific denial amounts to trademark infringement. The Plaintiffs, on record, have submitted sufficient credible evidence to substantiate their claim. The same when considered together with the report of the Local Commissioner, implicates Defendants No. 1,4 and 5 in the sale of the infringing goods bearing the Plaintiffs mark.

The investigations and laboratory analysis corroborate the counterfeiting nature of the goods and the involvement of Defendants No. 2 and 3 in the same.

The Court finally passed the judgment stating that the goods were not because of innocent adoption was the same but were meticulously and intentionally planned to deceive the customers and strive for the reputation of the Plaintiffs.

The court granted the Plaintiffs nominal damages of Rs.12,00,000 recoverable from the Defendants in different proportions.

Frequently Asked Questions

Q 1. What is trademark infringement?

Trademark infringement occurs when a person without the prior permission of the applicant uses a similar/ identical mark as that of the applicant’s registered mark.

Q2. What are the remedies available when your mark has been infringed?

The following are the remedies:

Civil Remedies

Damages in the form of compensation
Account of profits
Destruction of infringing goods
Injunction/ex-parte injunction/ad-interim injunction
Cost of the proceedings paid to the Plaintiff by the Defendants

Criminal Remedy

With Imprisonment for a period which should not be less than 6 months and can be extended to 3 years.
With a fine which should not be less than Rs. 50,000 and which can be extended to 2 lakh Rupees.

Q3. What is innocent adoption of a trademark?

Innocent adoption means when a person infringes upon someone else’s trademark not knowing that it belongs to an applicant and that the mark has been registered. Thus, using it innocently and in good faith.

Q4. Can an infringement suit be filed for an unregistered trademark?

No, a trademark infringement suit can be filed only for a registered trademark. An unregistered trademark can bring an action of passing off against the perpetrator.