Beauty may be ‘heavenly’ but not justifies use of ‘Miss Heaven’
Two cosmetic firms are at loggerheads over trademark rights in ‘Heaven’ for use in relation to cosmetics. Gurnam Singh (Gurnam) has filed a suit before the Delhi High Court to safeguard its rights in the registered mark Blue Heaven and restrain G.I. Cosmetics (GIS) from using the mark ‘Miss Heaven’ in relation to nail polish, lipstick and allied products. The High Court at the admission stage granted an ex-parte injunction in favour of Gurnam and GIS has sought to set aside the injunction which is subject of this post.
Gurnam in support of its case has averred that they are the registered proprietor of the mark ‘Blue Heaven’ and using the same since 1972 in relation to cosmetics. GIS on the other hand entered the market in the year 2016 and while their primary mark is ‘Valenfine’ they have created promotional materials in the form of ‘danglers’ that emphasise the word “Miss Heaven”.
GIS, aggrieved by the ex-parte injunction order has made the following arguments for setting aside the injunction:
- Gurnam does not have separate registration for the word ‘Heaven’ as such and thus, cannot claim exclusivity.
- There are several registered and pending ‘Heaven’ marks on the Register. As beauty is considered to be heavenly and there are several marks on the Register, the word ‘Heaven’ is common to the trade.
- They are willing to change the ‘danglers’ to write the trade mark ‘VALENFINE’ and the words ‘MISS HEAVEN’ in same font.
The court after considering the pleadings, arguments and case laws held:
- The argument regarding a beautiful face being considered as heavenly or on seventh heaven is negated as usually ‘heaven’ is not attributable to cosmetics unlike to a place, weather, etc.
- A quick glance at the danglers used by GIS makes the deceptive similarities between the marks clear. Taking into account the similarities, customers are unlikely to distinguish the difference in the word preceding the word ‘Heaven’, i.e., ‘Blue’ in Gurnam’s mark and ‘Miss’ in the mark of GIS.
- The word “Heaven’ being common to the trade is an argument that is not likely to succeed. A perusal of the list reveals the registrations to be of ‘HEAVEN’S GARDEN’, ‘HEAVEN SCENT’, ‘HEAVENS GARDEN BORO ACTIVE’, ‘HEAVENS CARE’, ‘HEAVENS DOOR’, ‘HEAVENLY’, ‘HEAVEN FRESH BACK TO NATURE’ etc., which are distinct from Gurnam’s mark on account of prefix or suffix to the word ‘Heaven’. Moreover, without evidence on the use of the aforesaid marks and their volume in the market it cannot be said that ‘Heaven’ is common to the trade.
- GIS has not disclaimed the word HEAVEN in the mark BLUE HEAVEN and it appears most distinctive part of the mark that the customers are likely to remember. On the whole GIS’s act reeks of an attempt to create confusion in the market.
In view of the above the Court confirmed the injunction restraining GIS from using the mark ‘Miss Heaven’ or any other mark deceptively similar to Gurnam’s mark ‘Blue Heaven’ till the final decision.