FSN E-Commerce Ventures Ltd. v. Pintu Kumar Yadav

FSN E-Commerce Ventures Ltd. v. Pintu Kumar Yadav

SCC Online Del 6765

Order dated 12-10-2023

 

Background

The plaintiffs are a company that produces, sells, and distributes a variety of cosmetic products, including makeup, skincare, haircare, fragrances, bath and body products, clothing, footwear, accessories, jewellery, and other wellness products. They have been running an online wellness store since 2012, under the trademark "NYKAA". They are also the registered owners of the "NYKAA" marks and logos in various classes, including classes 3, 16, 24, 25, 35, 42, and 44, and NYKAA has secured global registrations for their mark in countries like Singapore, UAE, United Kingdom, Bangladesh, Kuwait, and Qatar.

The plaintiffs' complaint is that the defendants applied for the trademark "OYKAA" in 2022, for a large range of cosmetic products in class 3 on a proposed to be used basis. The defendants are engaged in identical goods and services, i.e., makeup, skincare, wellness products for women and men under the mark "OYKAA". Defendant 1 was marketing various cosmetic products on their website www.oykaa.com, while Defendant 2 was the manufacturer of such products, who claimed to run the website www.cosmetify.in, which was a cosmetic company that provided services in skincare, hair care, wellness products etc.

Comparison of plaintiffs’ and defendants’ marks and the website

The court observed that the defendants' website contained identical terms and conditions to that of the plaintiffs' website, even including terms and conditions that were not applicable to the defendants. The court found that the defendants had copied to such an extent that they had not bothered to change the terms and conditions to suit their own business needs. The court concluded that the plaintiffs had satisfied the 'Triple Identity Test' against the defendants as the goods and services offered were identical, the trade channel and customers were identical, and the defendants' mark was almost identical to that of the plaintiffs. The court relied on the case of Ahmed Oomerbhoy v. Gautam Tank, 2007 SCC Online Del 1685 and opined that the defendants had adopted a deceptively similar mark to that of the plaintiffs' mark 'NYKAA' to take advantage of the plaintiff's goodwill and reputation in an identical field of business, which would cause confusion to customers. The court held that the plaintiffs had made out a prima facie case for the grant of an ex-parte ad-interim injunction and that the balance of convenience lay in favour of the plaintiffs, considering that the products in question were cosmetic, healthcare and wellness products, where the quality of all such products was of utmost importance. The court restrained the defendants and all others acting on their behalf from using the mark 'OYKAA' or any other mark that was identical or similar to that of the plaintiffs' mark 'NYKAA' in respect of cosmetic, healthcare products, wellness products, clothing, jewellery, accessories or any other related goods. The court also ordered that the website and other online listings be taken down immediately, and the defendant's website be placed under lock and suspension by the Domain Name Registrar. The court noted that the defendant's products were also listed on third-party websites like India Mart, Amazon, and Flipkart and directed that the said directories/online platforms take down the listings of the defendants upon receiving specific URLs by plaintiffs if the same were not taken down by defendants.

Analysis, Law, and Decision

The court observed that the defendants had registered the domain name in 2021 while filing for the trademark application in 2022 on a proposed to be used basis. Hence, the court opined that the defendants' adoption of the name was quite recent. Furthermore, the court noted that the website's name, mark, and overall appearance gave a clear impression that the defendants were intentionally trying to copy and imitate Nykaa's name and mark only to profit from such deception. Consequently, the court granted an ad-interim injunction in favour of Nykaa, stating that the balance of convenience weighed in Nykaa's favour.

Conclusion

The court's ruling in favor of Nykaa establishes a strong stance against deceptive practices in the cosmetics and e-commerce industry. By satisfying the 'Triple Identity Test,' Nykaa successfully demonstrated the deceptive similarity between the marks, leading to an ad-interim injunction against the defendants. The decision underscores the significance of protecting intellectual property rights and serves as a deterrent against unfair competition in the online marketplace.