Dharampal Satyapal Limited Vs Youssef Anis Mehio (Delhi High Court)
Delhi High Court held that based on principle of ‘initial interest confusion’ trademark infringement proved for using ‘RAJNIPAAN’, similar to take to well-known trademark RANJIGANDHA, even though no actual sale is finally created as a result of the confusion.
Facts-
It is the case of the Plaintiffs that they are owners of copyright in the unique ‘artistic work’ under Section 2(c) of the Copyright Act, 1957 and entitled to exclusive rights under Section 14 of the said Act. It is stated that Plaintiffs have invested huge amounts of money and efforts to advertise and promote their product under the trademark ‘RAJNIGANDHA’ and its constituent trade-dress.
Plaintiffs assert that they gained knowledge of the infringing activities of the Defendants in the third week of September 2018, when during a market surveillance in and around the areas of New Delhi, they came across the impugned product RAJNIPAAN, being sold in a nearly identical trade dress . Investigations into the impugned product further revealed the wide availability of the impugned product across Delhi as well as on third party online market places such as www.flipkart.com, www.amazon.com, www.easysmoke.in and www.smokinn.com.
Conclusion-
The trademark RAJNIGANDHA has been declared as a well-known mark by this Court and is entitled to a high degree of protection. The impugned mark is visually and structurally deceptively similar to the Plaintiffs’ trademark.
This Court finds 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. In fact, the principle of ‘initial interest confusion’ is also attracted in the present case, which is posited on the assumption that ‘infringement can be based upon confusion that creates initial consumer interest, even though no actual sale is finally created as a result of the confusion. Most Courts now recognise the initial interest confusion theory as a form of likelihood of confusion which can trigger a finding of infringement.’
FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT
I.A. 15936/2022 (under Order XIII-A Rules 3 and 6(1)(a) read with Order VIII Rule 10 read with Section 151 CPC, by Plaintiffs)
1. Present application has been filed under Order XIII-A CPC, as amended by Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015.
2. This suit is filed for permanent injunction restraining infringement and dilution of trademark, trade name, passing off, infringement of copyright, unfair competition, delivery-up, rendition of accounts, damages and costs etc. The prayer clause in the present suit is as under:-
“48. It is, therefore, respectfully prayed that this Hon’ble Court may be pleased to grant the following reliefs in favour of the Plaintiffs and against the Defendants:
(i) A decree of permanent injunction restraining the Defendants, their partners or proprietors, principal officers, servants, agents and distributors and all others acting on its behalf as the case may be 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,
trademarks RAJNI,
; Plaintiffs’
RAJNIGANDHA
including trade dress and any
other mark deceptively similar thereto leading to:
a) Infringement of Plaintiffs’ trademarks RAJNI,
RAJNIGANDHA , overall
colour scheme and unique trade dress in relation to their
products;
b) Passing off of the Defendants’ products (including but not limited to pan masala products, supari, chillum etc) as emanating from the Plaintiffs;
c) Infringement of copyright vested in the original artistic works in the Plaintiffs label, packaging, overall get-up etc.
d) Dilution of Plaintiff’s well-known trademark
RAJNIGANDHA , overall
colour scheme and unique trade dress;
e) Unfair Competition vis a vis Plaintiffs’ well-known
trademarks RAJNIGANDHA ,
RAJNI overall colour scheme and unique trade dress;
(ii) An order for the delivery-up of all impugned materials of the Defendants, including the Defendants’ products, their packaging, container boxes, labels, wrappers, stickers, and stationery or any other material of the Defendants
trademark mark RAJNIPAAN ;, and a decree
for the amount so found be passed in favour of Plaintiff;
(v) An order for damages in the present proceedings;
(vi) An order for costs in the present proceeding.”
3. When the suit was filed Plaintiffs had arrayed six Defendants and vide order dated 29.11.2018, this Court granted an ex-parte ad interim injunction in favour of the Plaintiffs and against the Defendants. Relevant portion of the order is as under:-
“Consequently, till further orders, the defendants, their partners, proprietors, directors, principals, agents, servants, masters, affiliates, associates, distributors, licensees and all others acting on their behalf directly or indirectly are restrained from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in any manner with products and services including but not limited to pan masala products, confectionary and/or any other goods and/or services
using marks/trade dress RAJNI PAAN,
RAJNIPAAN, plaintiffs’ trademark RAJNIGANDHA
, including trade dress, copyright vested in RAJNIGANDHA label or any other mark deceptively similar to the plaintiffs.”
4. On receiving summons, Defendant No. 5, Mr. Lucky Gupta, proprietor of Defendant No. 6 i.e., Hookah Zone made a statement before the Court on 06.02.2019 that Defendants No. 5 and 6 did not wish to contest the proceedings and upon recording the undertaking of the counsel for Defendants No. 5 and 6, a decree in favour of the Plaintiffs and against Defendants No. 5 and 6 was passed by the Court. Relevant part of the order is as follows:-
“…Learned counsel for defendant nos.5 & 6 states that the said defendants have neither infringed the plaintiffs’ trademark nor copyright and are willing to suffer a decree in terms of prayer 48 (i) (a), (b) and (c) of the plaint.
In view of the aforesaid statement/ undertaking, learned counsel for the plaintiffs does not wish to press the present suit for any other or further relief against defendant nos.5 &6.
Consequently, the statement/undertaking given by learned counsel for defendant nos. 5 &6 is accepted by this Court and the said defendants are held bound by the same.”
5. Order sheets indicate that there was no appearance on behalf of Defendants No. 3 and 4, despite service through several modes, including dasti. Vide order dated 15.07.2019 Defendants No. 3 and 4 were proceeded ex parte and the interim injunction was confirmed qua them.
6. Thereafter, as service on Defendant No. 1, Mr. Youssef Anis Mehio, Chairman and General Manager of Defendant No. 2, Mya International/ Mya Flavours could not be effected by ordinary modes except email, Plaintiffs filed an application for substituted service, which was allowed on 21.01.2021. Despite publication, none appeared for Defendants No. 1 and 2 and they were proceeded ex-parte vide order dated 19.09.2022.
7. 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.
8. It is averred that Plaintiffs’ predecessors adopted the trademark “RAJNI” in 1980 in respect of pan masalas, supari etc. Thereafter, Plaintiffs extended their range of products and adopted the trademark “RAJNIGANDHA” in the year 1983 in respect of flavoured pan masalas. The trademarks are registered as under and the registrations are valid and subsisting:-
