Clinique Laboratories LLC And Anr v Gufic Limited and Anr [2009] Delhi HC
Case Overview
Plaintiff: Clinique Laboratories LLC (international cosmetics brand) and its Indian affiliate.
Defendant: Gufic Limited, an Indian company marketing herbal products under the name “Skin Cliniq Stretch Nil.”
Issue: Alleged infringement of the registered trademark “CLINIQUE” by use of the deceptively similar “SKINCLINIQ.” Plaintiffs also filed a rectification application to cancel the defendant’s registration.
Legal Issues Raised
Can a registered trademark owner sue another registered proprietor for infringement?
Courts examined whether Section 29 of the Trade Marks Act prohibits such suits or allows remedies if the marks are deceptively similar.
Is the court empowered to grant injunctions during pending rectification proceedings?
While Section 124(1) mandates stay of suit pending such proceedings, Section 124(5) allows interim relief.
Does “SKINCLINIQ” cause deceptive similarity with “CLINIQUE”?
Assessment from the standpoint of an average consumer with imperfect recollection.
Does the coexistence of products in different categories matter?
Considerations whether cosmetics versus herbal products leads to consumer confusion.
High Court Judgment (Single Judge)
Trademark Rights: The plaintiff held several valid registrations for “CLINIQUE” since 1981 (class 3 – cosmetics and toiletries) CaseMineLawBhoomi.
Well-Known Status: Court found Clinique to be well-known globally; that reputation could extend to Indian consumers, despite limited Indian sales before 2007 Indian Kanoon.
Presumption of Knowledge: Gufic, in the same market, was presumed aware of Clinique’s mark and acted in bad faith by adopting “CLINIQ” CaseMineIndian Kanoon.
Deceptive Similarity: The difference between “Q” and “QUE” is negligible; visually and phonetically, “SKINCLINIQ” and “CLINIQUE” are deceptively similar Indian KanoonCaseMine.
Interim Relief: The Court held that even where the defendant is a registered proprietor, the Court can entertain infringement suits. Registration is only prima facie evidence of validity and can be challenged in court. An injunction may be granted during pending rectification if prima facie invalidity is established vLexCaseMine.
Decision: Interim injunction granted; defendant restrained from using “SKINCLINIQ” until rectification proceedings concluded LawBhoomi.
Division Bench (Delhi High Court Appeal)
Issue on Deceptive Similarity: The Division Bench held the test for infringement involving non-identical marks is the same as in passing-off—focused on likelihood of confusion CaseMinerkdewan.com.
Overall Comparison: Emphasis on considering the marks as a whole (structural and phonetic), not dissecting components separately rkdewan.com.
Comparison Result: Found no significant structural or phonetic similarity between “CLINIQUE” and “SKINCLINIQ.” As such, they were not deceptively similar rkdewan.com.
Outcome: Injunction was vacated; Gufic was permitted to continue using “SKINCLINIQ.”
Appeal to the Supreme Court
Supreme Court granted leave and held that the Delhi High Court should not have suspended the injunction at admission stage of appeal. However, the appeal itself needs merit-based examination Indian Kanoon.
Key Takeaways and Legal Principles
| Issue | High Court (Single Judge) | Division Bench / SC Perspective |
|---|---|---|
| Infringement from another registered proprietor | Allowed; registration is prima facie only; valid suit maintainable vLexCaseMine | Not explicitly overturned; injunction stay rejected on procedural grounds Indian Kanoon |
| Injunction during rectification proceedings | Yes—if prima facie invalidity found vLexCaseMine | SC invalidated stay order in interest of justice Indian Kanoon |
| Deceptive similarity test | Found similarity due to visual and phonetic closeness; presumption of bad faith Indian KanoonCaseMine | No deceptive similarity; marks viewed holistically rkdewan.com |
| Brand reputation | Well-known internationally; likely recognized in India Indian Kanoon | Not a determinative factor in later judgment |
| Final Position | Injunction in favor of Clinique | Injunction vacated; demand merits full hearing |
| Procedural Correctness | Injunction validly granted; rectification pending doesn’t block court intervention vLex | SC set aside stay of injunction for procedural misstep Indian Kanoon |
Conclusion
The case illustrates the nuanced balancing act in trademark litigation:
Trademark owners can sue infringers, even if they themselves are registered proprietors, provided a reliable case of prima facie invalidity is established.
Interim injunctions are permissible during rectification proceedings, but must be based on convincing evidence of confusion or invalidity.
Similarity assessments require holistic evaluation—phonetics, structure, overall impression, and target consumer context.
Procedurally, courts must exercise caution in staying injunctive relief
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