Sanjiv Khanna JUDGMENT
Sanjiv Khanna, J.
1. M/s. Beiersdorf AG, the plaintiff is the registered proprietor of the mark NIVEA under Class 3, toiletries, under the Trade Marks Act, 1958 (hereinafter referred to as the Act, for short). Defendant no.-2 M/s. Nivea International is a partnership firm and Mr. Ajay Sukhwani, defendant no. 1 is one of its partners. It is engaged in the business of educational consultancy and allied services. The plaintiff has filed the present suit for passing off and restraining the defendants from using mark/word NIVEA as a trademark/trade name or as a part of trading style and also from operating a website with the domain name www. niveainternational. com.
2. On the basis of the pleadings and documents filed by the parties, the following issues were framed on 8th November, 2005:
(i) Whether the plaintiff is the proprietor of the trademark NIVEA and is entitled to protect the said trademark in respect of different goods/services
(ii) Whether the trademark NIVEA is a well known trademark of the plaintiff
(iii) Whether by use by the defendant of the trademark/tradename NIVEA as well as the website over the internet bearing the name www.niveainternational.com the defendant is passing of its business/services as and those of the plaintiff
(iv) Whether the plaintiff has come to this Court with clean hands and has suppressed any material facts from this Court
(v) Whether the suit suffers from delay, latches and acquiescence
(vi) Relief.
3. Parties have filed affidavits by way of evidence of Mr. Sudhir D. Ahuja, PW- 1 for the plaintiff and Mr. Ajay Sukhwani, DW-1 for the defendants. Parties have not cross examined the witness produced by the other side, on the ground that facts are admitted. By an ex parte order of injunction dated 1st June, 2001, the defendants have been restrained from using the mark NIVEA as a part of their trading name or style and the website www.niveainternational.com or the domain name niveainternational. The said order continues to be in operation. It is stated by the defendants that they did not press for vacation of stay or variation of the injunction order as the trial in the suit was expedited. ISSUE NOS. 1 TO 4
4. Issue nos. 1 to 4 are interconnected, inter related and are therefore being dealt with together. The plaintiff came into existence in 1890 and is incorporated under the laws of Germany. The plaintiff coined and adopted the mark NIVEA, which was registered as a mark in Germany on 23rd June, 1905. In 1911, the plaintiff started first commercial use of the mark NIVEA and by 1991, NIVEA cream was available in 150 countries. The plaintiff started marketing its products in India in 1943. The plaintiff had made an application for registration of mark NIVEA in India in Clause 3 on 12th April, 1943. The registration was granted and has continued since then. The mark Nivea has been continuously, extensively and uninterruptedly used by the plaintiff in India and worldwide.
5. It cannot be doubted and to be fair to the learned Counsel for the defendants they did not contest that the mark NIVEA is a well known and a respected trademark.
6. The defendants defence in addition to delay and laches........