HC: Striking similarities in Packaging Colour, font and style is violation of Trademark

 

The Delhi High Court while dealing with an intellectual property dispute has observed significiently that striking similarities in packaging colour, font and style amounts to violation of Trademark.

The single-Judge Bench of Justice Suresh Kumar Kait was dealing with an appeal to vaccate ex parte ad interim injunction granted in favour of plaintiff.

Brief Facts of the Case

The case is concerned around two cigarette brands, the plaintiff accussing defendent-appellant of using his trade mark TOTAL in their mark TOPAZ (also written in the same font and style as per the plaintiff). The plaintiff allged that the mark is deceptively similar to his mark of plaintiff and is created using permutations / combinations from his mark and thereof amounts to infringement of plaintiff’s trade mark TOTAL. It further raised objection on the use of the essential features of his product's packaging/ trade dress again amounting to infringement of the his copyrights subsisting in the packaging/ trade dress of the plaintiff’s trade mark TOTAL.

The Delhi High Court via its earlier order had barred defendants, its Directors, partners or proprietors, as the case may be, its officers, servants and agents from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the plaintiff’s trade mark TOTAL (similarity of which to the mark TOPAZ is disputed).

Arguements in the Case

Learned Counsel for the defendent-appellant had argued that they had adopted the mark TOPAZ in the year 2011 whereas the plaintiff adopted his TOTAL in 2015. He also raised objection on decade long delay on behalf of the plaintiff in filing the suit.

"There is no deceptive adoption by the defendants, who had conceived the brand TOPAZ in the year 2011 and have been continuously using it since then. However, plaintiff has approached this Court after an inordinate delay of a decade and, therefore, the present application deserves to be allowed and interim order dated 10.08.2021 needs to be vacated to save the defendants from hardships and loss of business."

He further submitted that defendants had adopted the unique and distinctive trade dress/ packaging for marketing of TOPAZ brand in the year 2011 and it has no relevance to the copyright registrations obtained by the plaintiff for its product under the mark TOTAL, as the same are distinct and dis-similar. 

He also submitted that the plaintiff does not have a word mark registration for the mark TOTAL and all registrations of the plaintiff pertain to device marks/ label marks and so, no case for infringement is made out.

Learned senior counsel mentioned provisions of Section 17 of the Trade Marks Act to submit that when a trade mark contains any matter which is common to the trade or is otherwise nondistinctive, the registration does not confer any exclusive right in the matter forming part of the whole trade mark so registered. Learned senior counsel submitted that in Para-28 of the petition, plaintiff has admitted that it has no issue on the defendants’ use of wordmark TOPAZ.

To submit that plaintiff has failed to establish case of passing of against the defendants, learned senior counsel agrued that the plaintiff cannot claim monopoly on subjects which are common in the cigerrete industry such as the image with statutory warnings, use of colour blue depicts mentol/ mint flavour, us of golden lines/ circle, colors such as gold, red, black, blue and their combinations and even font & style.

He empathetically submitted that the consumers of cigarettes are very particular about the brands they smoke and it is based upon one’s choice owing to the taste of the cigarette and other parameters such as length, filter etc. and cited SC Ruling in Godfrey Phillips India Ltd Vs. Ajay Kumar, 2008 Latest Caselaw 302 SC

Learned Counsel appearing for the palintiff however argued while submitting his counter-claims that the plaintiff has never raised any objection with regard to use of trade word “TOPAZ” and the objection is with regard to trade dress/infringing packaging of defendants’ product “TOPAZ”.

He pointed out that defendants have deliberately copied the essential features of plaintiff’s product “TOTAL” like packaging, cigarette paper and foil paper.

He put out the plaintiff's reply wherein it was showed that packaging of both the parties contain an identical statutory warning that covers a major portion of the package; the basic background colour of packaging /cigarettes box is peculiar and distinct shade of dark metallic black and dark blue colours is identical as that of plaintiffs; both the boxes contain ribbed lines which runs across their respective surfaces; identical use of font and placement of letters on the front and back side of the boxes; use of blue and silver colour panel; words mentioned as ‘Dual Flavors’ and ‘Twin Flavors’ ; the golden dotted circle and the golden ring depicting the brand name of both the parties.

He further submitted that defendants have been deliberately targeting the plaintiff’s customers and selling the infringing products, which amounts to infringement of plaintiff’s copy right subsisting in its packaging and artistic work as regards TOTAL branded products. Due to striking similarities, the consumers are getting deceived.

It was submitted that defendants have deliberately obtained registration of trade mark TOPAZ in the year 2015, however, they have not brought any document that they have been using it since the year 2011 or 2015.

It has been vehemently denied that various other parties are using the features which the plaintiff is claiming and rather submitted that defendant is a seasoned / habitual infringer and various other cigarette companies have filed cases for trademark infringement and passing off against the defendant herein. It was submitted that a contempt petition has also been preferred against the defendants for having violated the settlement and consent order. Learned counsel also submitted that even in the present case, defendants have violated the injunction order dated 10.08.2021.

He also argued that there is no delay on part of the plaintff as he obtained knowledge about the defendant's product in 2020 and his case is meritious inter-alia.

High Court Observation 

The Court at the outset observed that the primary question for adjudication is as to whether defendants are entitled to use the trade mark TOPAZ, with the trade dress and packaging.

The further Court said that at the present stage of the case, the Court isn't entitled to dwell onto the merits of the case and will merely give its verdict on the validity of the ex parte ad interim injunction order and answer as to whether the infringement and passing off so claimed by the plaintiff, is likely to cause any confusion in respect of two products of the parties TOTAL and TOPAZ being deceptively similar in the minds of public, causing loss of business and reputation to either side.

The Court at first discarded the preliminary objection raised on behalf of the defendants that there is an inordinate delay of a decade in seeking an action for infringement of a trademark or passing off by the plaintiff.

The Court cited Allied Blenders & Distillers P. Ltd. Vs. Paul P. John & Ors. in which it was held that “a plea of acquiescence or delay in bringing the action, set up as a defence, requires it to be considered whether the interest of the public would be adversely affected if the plaintiff is not granted an interim injunction on account of acquiescence or inordinate delay in bringing an action.”

The Court noted:

"Pertinently, the order dated 10.08.2021 granting ex parte ad interim injunction in favour of plaintiff specifically recorded the claims of plaintiff that the brand TOTAL was adopted by the plaintiff in the year 2015; in mid July, 2021 plaintiff came to know about defendants’ brand TOPAZ and that defendants had copied the packaging/ trade dress of plaintiff, which has caused incalculable harm and injury to the business, goodwill and reputation of plaintiff."

 While dealing with the objection of the plaintiff that defendants have infringed the trade mark of plaintiff and mala fidely copied the essential features or brand identifier of plaintiff’s product TOTAL, this Court went through the various pictorial images placed before it and noted that the plaintiff's claim was substantial that the defendants have copied the exact colour and design of TOTAL branded cigarettes sticks contain a golden dotted circle, within which a golden circle is depicted, which is placed on the cigarette paper forming part of the plaintiff’s cigarette bud and defendants have copied the same in its entirety.

With regard to the trade dress and packing, the Court noted that there are infact striking similarities.

"A look at the aforesaid clearly shows that the basic background colour of the packaging / cigarette box is shade of dark etallic black and dark blue colors, which is identical. Both the boxes also contain ribbed lines which run across their respective surfaces. The front and back view of the packaging is in similar font and even the placement of letter is similar. The plaintiff’s TOTAL product, mentions the words ‘Dual Flavors’ and that of defendant mentions ‘Twin Flavor’ in the same font and colour combination. The cigarette boxes of both parties also contain a blue and silver pennants on the sides of the lid of the box. The plaintiff’s TOTAL product has a blue ring with a halo of blue light, within which the flavor (spearmint) is mentioned and defendants have also placed the same on the side of its packaging and have mentioned the flavor (menthol). Plaintiff’s TOTAL branded cigarettes sticks have the words ‘Dual Flavor’ mentioned in golden letters and defendants have mentioned the words ‘Twin Flavor’ on their TOPAZ cigarette and font, style, colour and placement of matter of both the sides is exactly similar."

 In view of the above the Court noted without expressing any opinion on the merits of the case, that even though the case of defendants is also on strong footing, the ex parte ad interim injunction granted to plaintiff vide order dated 10.08.2021 needs no interference.

The appeal was accordingly dismissed.

 

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(With input from news agency language)

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