Delhi High Court Dismisses L'Oreal's Appeal in Trademark Dispute Over "CLARIWASH"

Delhi High Court upholds registration of "CLARIWASH," rejects L'Oreal's claims of deceptive similarity and procedural errors.

The Delhi High Court has dismissed an appeal by L'Oreal India Pvt Ltd challenging the registration of the trademark "CLARIWASH" held by Rajesh Kumar Taneja trading as Innovative Derma Care. The court found no merit in L'Oreal's claims of deceptive similarity to its "CLARI" formative trademarks and procedural errors in the examination report by the Registrar of Trademarks.

L'Oreal India, a subsidiary of M/s L’Oreal, is engaged in the production and sale of a wide range of beauty products, including trademarks containing the "CLARI" prefix. Rajesh Kumar Taneja, the respondent, registered the trademark "CLARIWASH" for cosmetics on April 16, 2010, claiming usage since November 16, 2009. L'Oreal contested this, claiming prior use and registration of similar trademarks by its predecessor, Cheryl’s Cosmeceuticals Private Limited (CCPL), which it acquired in 2013.

L'Oreal sought the cancellation of "CLARIWASH" based on an erroneous examination report that referenced "CHARIWASH" instead of "CLARIWASH." The Registrar of Trademarks later corrected this mistake. The Single Judge dismissed L'Oreal’s petition for cancellation, prompting the current appeal.

The court acknowledged the procedural error in the Registrar's initial search, which mistakenly examined "CHARIWASH" instead of "CLARIWASH." However, it held that such procedural errors alone were insufficient to cancel the registration of a trademark unless it was proven that the registration was substantively flawed.

The court emphasized the necessity of examining trademarks as a whole, citing the Supreme Court's decision in Corn Products Refining Co. v. Shangrila Food Products Ltd. It concluded that "CLARIWASH" and L'Oreal's "CLARI-FI" and "CLARIMOIST" did not share sufficient similarity to cause confusion. The court also noted that at the time of the respondent's application, L'Oreal's trademarks using the "CLARI" prefix were not extensively in use.

The court highlighted that respondent's usage of "CLARIWASH" since November 2009 was established, while L'Oreal’s use of similar trademarks by CCPL began later, with invoices from 2013. Thus, the respondent's claim of prior use was upheld.

The court extensively discussed the principles of trademark registration and the importance of procedural fairness. It underscored that while procedural errors should be corrected, they do not automatically invalidate a trademark's registration unless the error has a substantial impact on the decision.

The court remarked, "It is important to bear in mind that the object of the examination is to ensure compliance with the provisions of the Act. Thus, no interference with the registration of the trademark would be warranted, unless it is prima facie established that the registration of the trademark falls foul of the provisions of the Act."

The High Court's decision to uphold the registration of "CLARIWASH" underscores the judiciary's commitment to ensuring procedural correctness while also respecting established trademark rights. This judgment highlights the importance of examining trademarks in their entirety and the necessity for timely opposition to registrations. This decision is expected to have significant implications for future trademark disputes, reinforcing the principles of fair use and procedural accuracy.

Date of Decision: July 15, 2024

L'Oreal India Pvt Ltd vs. Rajesh Kumar Taneja Trading as Innovative Derma Care and Anr.