Delhi High Court Restrains Faces Cosmetics From Selling Products Under 'Velvette Matte' Trademark In Suit Filed By Colorbar Cosmetics

The Delhi High Court has restrained a Canada based company Faces Cosmetics from selling and manufacturing its products under the mark 'Velvette Matte' in the trademark infringement suit filed by Colorbar Cosmetics.

Justice Pratibha M Singh granted ad interim ex parte injunction in favour of Colorbar Cosmetics Private Limited by restraining Faces Cosmetics India Private for manufacturing, selling and offering for sale cosmetics and other products under the mark 'VELVET MATTE' or any other mark identical or deceptively similar to the Plaintiff's mark VELVET MATTE, till September 19, the next date of hearing.

The case of the Plaintiff was that it adopted the mark 'VELVET MATTE' in respect of cosmetics in the year 2009 as a sub-brand or mark under the umbrella brand or house mark 'COLORBAR'.

The Plaintiff was the registered proprietor of the mark 'VELVET MATTE' which was applied on 22nd September, 2016 and the user claim was of 12th August, 2009 onwards.

The Defendant No.2 was a Canadian company which was also engaged in the business of manufacturing and selling cosmetic products. It used the identical mark 'VELVET MATTE' in respect of an identical class of products.

Upon acquiring knowledge of the Defendants' use of the mark 'VELVET MATTE', the Plaintiff had issued a cease and desist notice to the Defendant on 16th November, 2021. Vide Reply dated 9th December, 2021, the Defendants did not agree to comply with the requisition of the Plaintiff, and argued that the mark 'VELVET MATTE' I'das common to trade and descriptive, as also, that there were several distinguishing factors between the Plaintiff's and Defendants' products.

Earlier, the Defendants had instructed their counsels that they were willing to give up the mark 'VELVET MATTE', and the matter was accordingly adjourned to enable the parties to file a joint application under Order XXIII Rule 3 CPC.

However, the Court noted that there was a change of stand as the Director of Defendant's company submitted that the Defendants were no longer willing to give up the mark 'VELVET MATTE'.

The Court was of the view that the Defendants had also applied for the registration of the mark 'VELVET MATTE', and hence, the Defendants cannot be allowed to argue that the said mark was generic or descriptive or common to the trade.

"Therefore, the Defendants are estopped from claiming the same," the Court added.

It also said "Moreover, the manner in which the Defendants have sought to resile from the statement made on the last date of hearing shows that the intention of the Defendants is merely to gain time and avoid the injunction."

Accordingly, while listing the matter for further hearing on September 19, the Court directed that the written statement and reply be filed in accordance with the timelines as prescribed under the Commercial Courts Act, 2015.

Case Title: COLORBAR COSMETICS PRIVATE LIMITED v. FACES COSMETICS INDIA PRIVATE LIMITED & ORS.

Citation: 2022 LiveLaw (Del) 520

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