Delhi High Court Dismisses L’Oréal’s Plea For Cancellation Of 'CLARIWASH' Trademark

Delhi High Court Dismisses L’Oréal’s Plea For Cancellation Of 'CLARIWASH' Trademark

The Delhi High Court recently ruled on an appeal challenging the judgment dated March 23, which dismissed the appellant's application to cancel the trademark 'CLARIWASH' ('impugned trademark'). The Division Bench, comprising Justices Vibhu Bakhru and Tara Vitasta Ganju, declined to overturn the judgment, finding no grounds for interference.

The appellant, a wholly owned subsidiary of L’Oréal, engages in manufacturing, distributing, and selling various beauty and skincare products. On the other hand, the respondent holds the registration for the 'CLARIWASH' trademark. The appellant's predecessor, Cheryl’s Cosmeceuticals Private Limited (CCPL), adopted the 'CLARI' formative trademark in 2009 and the 'CLARIWASH' trademark in 2010. CCPL successfully obtained registration for 'CLARI-FI' in 2011, and subsequently, the appellant acquired CCPL along with the associated reputation and goodwill of various 'CLARI' formative marks.

Respondent applied for registration of the 'CLARIWASH' trademark in Class 03 on April 16, 2010, claiming usage since November 16, 2009. However, an examination report issued by the Registrar of Trade Marks erroneously referred to the conflicting mark 'CHARIWASH' instead of 'CLARIWASH'. Despite this error, the respondent's first application proceeded to registration, albeit with an incorrect certificate initially issued as 'CHARIWASH', later corrected to 'CLARIWASH' through an application for rectification.

The appellant subsequently filed an application seeking cancellation of the 'CLARIWASH' trademark before the Intellectual Property Appellate Board (IPAB), which was later transferred to a single judge. The single judge, in the impugned judgment, rejected the cancellation application, citing that the error in the examination report did not attribute fault to the respondent. The judgment referenced the principle from Corn Products Refining Co. v. Shangrila Food Products Ltd., emphasizing that competing trademarks must be considered in their entirety without dissecting them.

Upon review, the Division Bench acknowledged that if a trademark registration contradicts the Trade Marks Act, it should be subject to cancellation. However, in this instance, the Court found no grounds to reject the respondent's application for registration. The Court noted that the advertisement of the respondent's trademark application in the Trade Mark Journal allowed ample opportunity for opposition, which was not pursued by the appellant or its predecessor. Additionally, the Court deemed it unfair to reconsider the respondent's application due to a procedural error, given the extensive duration since its filing.

Consequently, the Court upheld the impugned judgment, dismissing the appeal on the grounds that there were no valid reasons to interfere.