Delhi High Court: In a suit filed seeking permanent injunction restraining the Defendants, their partners or proprietors, principal officers, servants, agents and distributors and all others acting on its behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with products including but not limited to tobacco products, pan masala products, confectionary and/or any other goods and/or services using the mark RAJNI PAAN, RAJNIPAAN, infringing plaintiffs’ trademarks RAJNI, RAJNIGANDHA including trade dress and any other mark deceptively similar, Jyoti Singh, J., held that defendants are guilty of infringement by dishonestly adopting nearly identical trademark and identical packaging, trade-dress, etc., and have chosen to deliberately stay away from the proceedings, despite service, for which repeated efforts had been made by the Plaintiffs.
It is the case of the Plaintiffs that they are a part of the Dharampal Satyapal Group (DS Group), which is a multi-diversified conglomerate, founded in the year 1929 and have a strong presence in high growth sectors such as Food & Beverages, Confectionary, Hospitality, Mouth Fresheners, Pan Masala, Tobacco, Agro Forestry, Rubber Thread and Infrastructure.
The Conflicting marks are as follows:
Counsel for plaintiff submitted that the RAJNIGANDHA products being Plaintiffs’ flagship product and the world’s largest selling premium flavoured pan masala are sold in a unique packaging having a distinct layout, getup and colour scheme.
An ex-parte ad interim injunction has been granted by this Court in favour of the Plaintiffs and against the Defendants vide order dated 29-11-2018. Order sheets indicate that there was no appearance on behalf of Defendants 3 and 4, despite service through several modes, including dasti.
In Dharampal Satyapal Limited v. Suneel Kumar Rajput, 2014 SCC OnLine Del 687, the Court declared the mark “Rajnigandha” as a well-known trademark, under Section 2(1)(zb) r/w Section 2(1)(zg) of the TradeMarks Act, 1999.
The Court noted that the Plaintiffs are registered proprietors of the trademark RAJNIGANDHA and have filed the Certificate of Registration in this regard which is valid and subsisting. No evidence to the contrary has been produced by the Defendants who chose to abstain from the proceedings.
The Court further noted that having analyzed the competing marks and the impugned label/packaging, it is clear that there is deceptive similarity between them as the packaging of the impugned product, has been designed in an identical colour scheme, font and labels, to give an overall look and feel of the Plaintiffs’ products under the RAJNIGANDHA marks, which has been done intentionally to trade off the significant goodwill and reputation of the Plaintiffs in their RAJNIGANDHA marks.
Thus, the Court held that Defendants have mischievously and deliberately adopted a deceptively similar mark and have only replaced ‘GANDHA’ with ‘PAAN’ with an intention to ride upon goodwill and reputation established by the Plaintiffs as the goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical and the trade channels are identical with the same consumer base.
[Dharampal Satyapal Limited v. Youssef Anis Mehio, 2022 SCC OnLine Del 3307, decided on 27-09-2022]
Advocates who appeared in this case:
Mr. Pravin Anand, Ms. Vaishali Mittal and Mr. Shivang Sharma, Advocates for plaintiff
Defendants 1 and 2 ex-parte vide order dated 19-09-2022.
Defendants 3 and 4 ex-parte vide order dated 15-07-2019.
Suit decreed qua Defendants 5 and 6 vide order dated 06-02-2019
*Arunima Bose, Editorial Assistant has put this report together.