Fsn E-Commerce Ventures Ltd & Anr. vs No.2- Nykaa E-Retail Pvt. Ltd. Have on 12 October, 2023

CITATION	CS(COMM) 726/2023, I.A.20126/2023,20127/2023,20128/28
DATE OF JUDGMENT	12 OCTOBER,2023
COURT	DELHI HIGH COURT
APPELLANT	Fsn E-Commerce Venture Ltd &Anr.
RESPONDENT	No.2-Nykaa E-Retail Pvt.Ltd.
BENCH	PRATIBHA M. SINGH

INTRODUCTION

The case involves Plaintiffs FSN E-Commerce Ventures Ltd. and Nykaa E-Retail Pvt. Ltd. versus Defendants Mr. Pintu Kumar Yadav and Cosmetify over the alleged misuse of the ‘NYKAA’ trademark. Plaintiffs, major players in the cosmetic and wellness industry since 2012, claim extensive goodwill and reputation under the mark ‘NYKAA’. Defendants’ adoption of the mark ‘OYKAA’ for similar products is alleged as trademark infringement and passing off. The Court grants an ex-parte ad-interim injunction in favor of the Plaintiffs, restraining Defendants from using ‘OYKAA’ and suspending their website, citing potential harm to Plaintiffs’ business.

FACTS OF THE CASE

The case involves a dispute over trademark infringement and passing off.

The plaintiffs in the case are FSN E-Commerce Ventures Ltd. and Nykaa E-Retail Pvt. Ltd. They are engaged in the manufacture, sale, and distribution of cosmetic products, including makeup, skincare, haircare, fragrances, and other wellness products. They operate an online wellness store under the trademark ‘NYKAA’ since 2012. The defendants are Mr. Pintu Kumar Yadav and Cosmetify, who are alleged to have misused the trademark ‘NYKAA’ by adopting a similar mark ‘OYKAA’ for identical goods and services, including cosmetic products. The plaintiffs claim that the defendants’ adoption of the mark ‘OYKAA’ is deceptively similar to ‘NYKAA’, leading to confusion among customers. The defendants’ website and products bear a considerable resemblance to those of the plaintiffs.

The plaintiffs filed a suit seeking protection of their trademark against misuse by the defendants.

The plaintiffs were granted leave to file additional documents.

The court registered the plaint as a suit and issued summons to the defendants.

Defendants were directed to file written statements along with affidavits of admission/denial of documents within 30 days.

Plaintiffs were given liberty to file replications within 15 days of receiving the written statements.

The case was listed before the Joint Registrar for marking of exhibits and then before the Court on a later date.

An injunction was granted in favor of the plaintiffs, restraining the defendants from using the mark ‘OYKAA’ or any similar mark in connection with cosmetic, healthcare, and wellness products.

 The court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from using the infringing mark and directing the suspension of the defendants’ website and removal of their products from third-party online platforms.

ISSUES RAISED

In this case, FSN E-Commerce Ventures Ltd. and Nykaa E-Retail Pvt. Ltd. accuse Mr. Pintu Kumar Yadav and Cosmetify of infringing their trademark ‘NYKAA’ by adopting a similar mark, ‘OYKAA’. The Plaintiffs argue that the Defendants’ use of ‘OYKAA’ on their products and website creates confusion among consumers, leveraging the reputation of ‘NYKAA’. The Plaintiffs present evidence of their substantial market presence and registrations for ‘NYKAA’ in various classes and countries. They assert that the Defendants’ actions, including the recent trademark application, suggest a deliberate attempt to mimic ‘NYKAA’ for profit. The central issue is whether the Defendants’ use of ‘OYKAA’ constitutes trademark infringement and passing off, given the likelihood of confusion with ‘NYKAA’.

CONTENTIONS OF APPEALENT

1. The appellants argue that the defendants’ adoption of the mark ‘OYKAA’ is deceptively similar to their well-established trademark ‘NYKAA’, despite the absence of the letter ‘N’.
2. They claim that ‘OYKAA’ creates confusion among consumers, especially given the identical goods and services offered by both parties in the cosmetic and wellness sector.
3. The appellants present evidence of their substantial revenue, market presence, and registrations for ‘NYKAA’ in various classes and countries to establish their brand’s reputation and goodwill.
4. They emphasize the recent adoption of ‘OYKAA’ by the defendants, evidenced by the trademark application filed in 2022, as indicative of an intentional effort to benefit from the success of ‘NYKAA’.
5. The appellants assert that the defendants’ use of ‘OYKAA’ constitutes trademark infringement and passing off, aimed at misleading consumers and unfairly capitalizing on the plaintiffs’ brand reputation.
6. Physical products and website analysis submitted to the court support the appellants’ claim of the likelihood of confusion between the two marks.
7. Overall, the appellants contend that the defendants’ actions amount to a deliberate attempt to imitate and profit from the reputation and goodwill associated with ‘NYKAA’.

CONTENTIONS OF REPONDENT

The contentions of the respondent in this case, Mr. Pintu Kumar Yadav and Cosmetify, are not explicitly provided in the text provided. However, based on typical responses in similar cases of trademark infringement and passing off, the respondent’s contentions might include:

1. Denial of any intentional imitation or infringement of the plaintiff’s trademark ‘NYKAA’, asserting that the mark ‘OYKAA’ is distinct and unrelated.
2. Claiming that ‘OYKAA’ is a unique and independently created mark, not intended to cause confusion or capitalize on the plaintiff’s brand reputation.
3. Arguing that there are differences between the goods and services offered under the ‘OYKAA’ mark compared to those under ‘NYKAA’, thus minimizing the likelihood of confusion among consumers.
4. Presenting evidence to demonstrate the respondent’s legitimate rights to use the ‘OYKAA’ mark, such as prior use, independent development, or lack of awareness of the plaintiff’s mark.
5. Challenging the validity of the plaintiff’s trademark registrations for ‘NYKAA’, potentially by questioning distinctiveness, lack of genuine use, or other legal grounds.
6. Requesting the court to dismiss the plaintiff’s claims of trademark infringement and passing off, arguing that there is no evidence of actual confusion among consumers or harm to the plaintiff’s business.
7. Seeking a declaration of the respondent’s rights to continue using the ‘OYKAA’ mark without interference from the plaintiff.

JUDGEMENT

The provided text contains an order issued by the Delhi High Court, but it does not include the final judgment or decision in the case. The order primarily consists of procedural directives, such as granting exemptions, registering the plaint as a suit, issuing summons to the defendants, and scheduling further proceedings.

To ascertain the judgment of the case, you would typically need access to the final ruling or judgment issued by the court, which would outline the court’s findings, legal reasoning, and any remedies or relief granted to the parties involved. This judgment would be based on the evidence presented, legal arguments made, and relevant laws and precedents applied to the case.

If you need the final judgment, you would typically obtain it from the court where the case was heard or from legal databases or resources that provide access to court decisions.

ANALYSIS

The case involves trademark infringement and passing off, where the plaintiffs allege that the defendants adopted a mark, ‘OYKAA’, deceptively similar to the plaintiffs’ well-known trademark ‘NYKAA’, causing confusion among consumers. The plaintiffs, engaged in the cosmetic and wellness sector, provided evidence of substantial revenue and market presence, along with registrations for the mark ‘NYKAA’ in various countries.

The court conducted the proceedings through a hybrid mode, allowing flexibility in procedural requirements, including exemptions and additional document submissions. The plaintiffs’ plaint was registered as a suit, and summons were issued to the defendants through all modes.

Clear timelines were set for filing written statements and replications, ensuring adherence to procedural timelines. The case was scheduled for marking exhibits, emphasizing the importance of documentary evidence. The appellant contends that the defendants’ adoption of the mark ‘OYKAA’ constitutes trademark infringement and passing off, alleging a deliberate attempt to imitate the plaintiff’s mark for monetary gain. Overall, the analysis provides insights into procedural aspects and key contentions, awaiting the final judgment or decision for assessment of the merits of the case.

CONCLUSION

The conclusion of the case is not provided in the excerpts provided. Typically, the conclusion would entail the final judgment or decision reached by the court based on the evidence and arguments presented by both parties. This decision could include findings on whether the defendants’ use of the mark ‘OYKAA’ constitutes trademark infringement and passing off, as well as any remedies or damages awarded to the plaintiffs if their claims are upheld. Without the final judgment or decision, it is not possible to provide the conclusion of the case.

REFERENCES

1. https://indiankanoon.org/
2. https://www.scconline.com/

This Article is written by Shreya Pandey student at Lloyd School of Law in Greater Noida.

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