The Law of passing off prevents misrepresentation to the public
in the course of use of unregistered marks. Under the law, if the
defendant does something so that the public is misled into thinking
the activity is associated with the plaintiff, and as a result the
plaintiff suffers some damage, the plaintiff can initiate action
against the defendant. The case of Reckitt and Colman vs.
Borden, (1990) RPC 341 elucidates the essential ingredients to
constitute a case for passing off, highlighting that the classical
trinity of reputation, deception and damage must be established in
order to succeed in an action of passing off.
Beiersdorf A.G vs Ajay Sukhwani 2009 (39) PTC 38 ( Del) a suit
for passing off was filed by the plaintiffs M/s Beiersdorf AG the
registered proprietors of the mark NIVEA against the defendants M/s
Nivea International, a partnership firm, engaged in the business of
educational consultancy and allied services, restraining Ajay
Sukhwani from the use of name NIVEA and also from operating a
website with the name www.niveainternational.com. The issue that came
up for deliberation before the Delhi High Court were whether M/s
Beiersdorf AG is the proprietor of the trademark Nivea and is
entitled to protection for the same, and would the use of the
trademark name as well as the website would constitute passing off.
Further, it was deliberated if Beiersdorf AG had attempted a
suppression of facts and also if the suit suffered from any delay,
latches and acquiescence.
Court owing to the inter relation of the issues clubbed them
together and answered them in detail. Beiersdorf asserted that it
was a German company, which had its presence in 150 different
countries and had been marketing its products in India since 1943.
The word NIVEA was stated to be a non-generic term coined by the
company itself and had overtime acquired distinctness. Hence owing
to the above considerations it was held by the court that they had
an undisputed right over the mark NIVEA. Ajay Sukhwani on the other
hand, heavily relied on the decision of the administrative panel of
the WIPO rejecting the complaint of the plaintiff against the
The court held that decision of the administrative panel could
not be held as ground for refusing relief to the M/s Beiersdorf AG.
Going into the provision of the ICANN regulation namely clause 4,
3.3 and WIPO rule 3 (b)(xiii) the decision of the administrative
panel allowed for an appeal to any competent jurisdiction.
Moreover, it was opined that an administrative decision could not
be held as binding which operates as res judicata, rather
it is distinct from an arbitral award or court decision,
Ajay Sukhwani contended that Nivea basically is an acronym for
the main people associated with their firm, an argument which the
court held to be too far fetched to be considered. Moreover the
name Nivea international would create confusion in the minds of the
general public regarding their association with the plaintiffs and
the defense of the parties being from different trades shall not
hold ground, hence it was held that the plaintiffs have succeeded
in establishing misrepresentation on the part of the
As to the third requirement, the Court opined the same to be one
of erosion, delusion of exclusiveness, which the plaintiff enjoys
in the mark NIVEA, hence the court held it to be an invasion of
right of M/s Beiersdorf AG by Ajay Sukhwani which caused injury to
On the question of delay and laches, reference was made to a
number of Landmark judgments which aided the court in coming to the
conclusion that delay alone would not be sufficient to deny relief,
unless it has caused prejudice to the defendants who in view of the
delay has come to nurture a belief that the plaintiff has
consciously given up his rights to claim for infringement or
passing off. Ajay Sukhwani had failed to prove acquiesce on the
part of M/s Beiersdorf AG, furthermore general public interest does
not support the defense of the defendants.
In this view, the decree of permanent injunction was passed in
favour of M/s Beiersdorf AG, Ajay Sukhwani was directed to destroy
all blank and unutilized documents bearing the offending mark
within a period of four weeks.
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