The case of M/S Gufic Ltd. & Another vs. Clinique Laboratories, LLC & Another is a trademark dispute adjudicated by the High Court of Delhi. This appeal arose from an interim order issued by a Single Judge, which granted an injunction in favor of Clinique Laboratories, LLC (Respondents/Plaintiffs) against Gufic Ltd. (Appellants/Defendants), restraining the use of the trademark "SKINCLINIQ." The Division Bench, in its judgment dated July 9, 2010, overturned the Single Judge's decision, focusing on the principles of trademark infringement under Section 29 of the Trade Marks Act, 1999. This case study examines the factual and procedural background, the issues involved, the parties' submissions, judicial precedents, the court's reasoning, and the legal principles settled.
Detailed Factual Background:


The Respondents, Clinique Laboratories, LLC (Plaintiff No. 1), a U.S.-based company, are globally recognized for their cosmetic and skincare products under the trademark "CLINIQUE," registered in India since July 13, 1981, under Class 3 (cosmetics, creams, lotions, etc.). They also own a series of trademarks incorporating "CLINIQUE," such as "CLINIQUE WATER THERAPY" and "CLINIQUE SKIN SUPPLIES FOR MEN," registered since 1992, and "CLINIQUE & C DEVICE" since 1978. Clinique claimed worldwide use of "CLINIQUE" since 1968 and entry into the Indian market in 2007, asserting it as the distinguishing feature of their brand.


The Appellants, Gufic Ltd., an Indian company, are the registered proprietors of "SKINCLINIQ" and related marks, including "SKINCLINIQ STRETCH NIL," since 1998-1999 under Classes 3 and 5 (cosmetics and medicinal preparations). They market "SKINCLINIQ STRETCH NIL," an Ayurvedic herbal product for stretch mark removal, with sales evidenced since 1999. Clinique became aware of Gufic’s mark in September 2006 and initiated legal action, alleging infringement and deceptive similarity with "CLINIQUE."


The dispute centered on whether "SKINCLINIQ" infringed "CLINIQUE," given their use in overlapping product categories (cosmetics/skincare) and the alleged phonetic and structural similarity.
Detailed Procedural Background:


The Respondents filed a suit (CS(OS) 2581/2008) before the Delhi High Court, seeking a permanent injunction against the Appellants for trademark infringement and passing off, along with damages. On December 16, 2008, the Single Judge granted an ex parte interim injunction (IA No. 15425/2008 under Order 39 Rules 1 and 2, CPC), restraining Gufic from using "SKINCLINIQ" or related marks.


The Appellants responded with IA No. 217/2009 (under Order 39 Rule 4, CPC) to vacate the injunction, while the Respondents filed IA No. 2769/2009 (under Section 124(1)(ii), Trade Marks Act, 1999) to stay the suit pending rectification proceedings against Gufic’s "SKINCLINIQ" registration. On April 9, 2009, the Single Judge disposed of all applications: the injunction was made absolute, Gufic’s application was dismissed, and the suit was stayed pending rectification, subject to no interference with those proceedings.Gufic appealed (FAO(OS) 251/2009) to the Division Bench, challenging the injunction and initially the Section 124 stay, though the latter issue was later dropped during arguments. The Division Bench, comprising Justices Badar Durrez Ahmed and Veena Birbal, delivered its judgment on July 9, 2010.

 

Issues Involved in the Case:

• The primary issue before the Division Bench was whether the Respondents made out a prima facie case for an interim injunction under Section 29(1) of the Trade Marks Act, 1999, based on the alleged deceptive similarity between "CLINIQUE" and "SKINCLINIQ".
• Sub-issues included:
  • Are "CLINIQUE" and "SKINCLINIQ" deceptively similar in structure, phonetics, or idea?
  • Does the use of "SKINCLINIQ" by the Appellants render it likely to be mistaken as "CLINIQUE"?
  • The court explicitly excluded considerations under Section 124 (stay) and Sections 28(3) and 30(2)(e) (registered mark defenses), focusing solely on infringement.

Detailed Submission of Parties:

Appellants’ Submissions (Gufic Ltd.):

• Dissimilarity of Marks: "SKINCLINIQ" includes the prefix "SKIN," distinguishing it structurally and visually from "CLINIQUE".
• Product Differences: "SKINCLINIQ STRETCH NIL" is an Ayurvedic product priced at Rs. 245 for 100 ml, while "CLINIQUE" products are non-Ayurvedic cosmetics priced significantly higher (e.g., Rs. 1,200 for 15 ml).
• Trade Dress and Consumer Base: Different style, color, and packaging targeting distinct classes of consumers.
• Established Use: Used "SKINCLINIQ" since 1999 with advertisements as proof, negating mala fide intent.
• Test for Similarity: Since marks are not identical, the passing-off test requiring likelihood of confusion applies, which Gufic argued was absent.

Respondents’ Submissions (Clinique Laboratories, LLC):

• Focus on Marks Alone: Section 29(1) analysis should not consider price, trade dress, or product specifics.
• Deceptive Similarity: "SKINCLINIQ" is phonetically and structurally similar to "CLINIQUE", especially due to "CLINIQ".
• Common Idea: Both marks suggest treatment or skincare.
• Established Reputation: Clinique’s long-standing use globally and in India supports exclusivity.

Detailed Discussion on Judgments Cited by Parties:

• Ruston & Hornsby Ltd. v. Zamindara Engineering Co.
  • Compared "RUSTON" with "RUSTAM" and "RUSTAM INDIA".
  • Clinique used it to show suffixes don't remove similarity. Gufic argued "SKIN" is integral, not a suffix.
• Amritdhara Pharmacy v. Satya Deo Gupta
  • Compared "AMRITDHARA" vs. "LAXMANDHARA".
  • Clinique used holistic test, Gufic argued "SKIN" changes the impression.
• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
  • Statutory infringement vs. common law passing off.
  • Clinique emphasized close similarity, Gufic focused on broader context like trade dress.
• Corn Products Refining Co. v. Shangrila Food Products Ltd.
  • "GLUCOVITA" vs. "GLUVITA".
  • Clinique cited phonetic similarity; Gufic highlighted "SKIN" as differentiator.
• Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills
  • "LAL QUILLA" vs. "HARA QUILLA".
  • Clinique: "CLINIQUE" is essential feature. Gufic: "SKINCLINIQ" is a unified mark.
• Metropol India (P) Ltd. v. Praveen Industries India (Regd)
  • "CLEANZO" vs. "CLEANJO".
  • Clinique: phonetic similarity; Gufic: prefix "SKIN" alters the identity.
• Parle Products (P) Ltd. v. J.P. & Co., Mysore
  • Compared biscuit wrappers with similar designs.
  • Clinique cited for overall similarity; Gufic focused on packaging and pricing.

Detailed Reasoning and Analysis of Judge:

• Legal Framework: Section 29(1) infringement occurs if a mark is identical or deceptively similar to a registered mark, likely to be taken as a trademark.
• Principles Applied:
  • Marks to be compared holistically (Amritdhara, Corn Products).
  • Perspective of a consumer with average intelligence and imperfect recollection (Parle Products).
  • Similarity includes structure, phonetics, and idea (Corn Products).
• Comparison of Marks:
  • Phonetic: "CLINIQUE" vs. "SKINCLINIQ" differ due to prefix "SKIN".
  • Structural: "SKINCLINIQ" is a single, integrated word.
  • Visual: Distinct trade dress and prefix differentiate.
  • Common Idea: Both refer to skincare, but not sufficient without phonetic/structural similarity.
  • Consumer Perception: Price difference and different consumer segments eliminate confusion.
  • Single Judge’s Error: Wrongly dissected the mark instead of holistic view.
• Scope Limitation: Focused solely on injunction merits, not registration validity.

Final Decision:

• The Division Bench allowed the appeal on July 9, 2010.
• Set aside the Single Judge’s order granting the injunction.
• Dismissed Gufic’s vacation application.
• Injunction was vacated; parties to bear their own costs.

Law Settled in This Case:

• Holistic Comparison: Trademarks must be compared as a whole, not dissected.
• Consumer Perspective: Viewpoint of a consumer with average intelligence and imperfect recollection applies.
• Contextual Factors: Price, trade dress, and consumer base may inform likelihood of confusion.
• Non-Identical Marks: While infringement focuses on marks, practical differences (e.g., price, trade dress) can inform the likelihood of confusion, though not decisive alone.
• Price Difference Material: The price differential between the two products is so vast that no consumer of products of either the appellant or the respondent would confuse one for the other.

Case Title: Gufic Ltd. Vs Clinique Laboratories
Date of Order: July 9, 2010
Case No.: FAO(OS) 251/2009
Citation:2010 SCC OnLine Del 2322 :(2010) 43 PTC 788
Name of Court: High Court of Delhi at New Delhi
Name of Judges: Justice Badar Durrez Ahmed and Justice Veena Birbal

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539