Case Title: Dharampal Satyapal Limited & Anr. v. Mr. Youssef Anis Mehio & Ors.
Recently, the Delhi High Court issued a ruling in favour of Dharampal Satyapal Limited, the company that makes the famous pan masala Rajnigandha, and it permanently halted the production, sale, and promotion of any goods bearing the trademark "RAJNI PAAN."
The Court ordered the defendants to pay Rs 3 lakhs in damages after finding that they had intentionally attempted to "trade off the significant goodwill and reputation of the plaintiffs." The Court granted an ex-parte ad interim injunction in the case in 2018.
A Single Judge Bench led by Justice Jyoti Singh granted the plaintiff's application for ex-parte summary judgement under Order XIII-A of the Code of Civil Procedure, 1908.
The Court observed, "It appears that Defendants No. 1 to 4 have no real prospect of defending the claim, having chosen to stay away from the proceedings despite service. In these circumstances, Plaintiffs are entitled to a decree under Order XIII-A CPC, as amended by the Commercial Courts, Commercial Division, and Commercial Appellate Division of High Courts Act, 2015, which empowers this Court to pass a summary judgement without recording evidence if Defendants appear to have no real prospect of defending the claims."
The plaintiff sought a permanent injunction to prevent infringement and dilution of its trademark and trade name. During market surveillance in September 2018, the company realized 'Rajnipaan' products with identical trade addresses. Further research revealed that they are widely available on e-commerce sites. The company then went to court and was granted interim relief on November 29, 2018.
According to the plaintiff, Rajnigandha, their flagship product, is sold in "a unique packaging with a distinct layout, getup, and colour scheme." It was claimed that consumers all over the world associate the trademark 'RAJNIGANDHA' exclusively with the plaintiff.
The Court ruled in the final order that a case of trademark infringement and passing off had been established. The defendants had chosen to use a deceptively similar trademark on identical products to pass them off as manufactured by the plaintiff, according to the Court.
The court also stated that the Defendants' imitation, adoption, and use of the nearly identical trademark, trade name logo, and colour scheme is done to confuse consumers and create the impression that the Defendants have a direct nexus or affiliation with the Plaintiffs.
In addition, Justice Singh stated that once a court determines that there is imitation, no further evidence is required to establish the violation of the plaintiff's rights in an infringement action.
The Court relied on the Supreme Court's decision in Kaviraj Pandit Durga Dutt Sharma v. Navratana Pharmaceutical Laboratories on this point. According to the court, the case involves the principle of 'initial interest confusion.'
Justice Singh also stated that Rajnigandha was previously declared a well-known trademark by the court and is therefore entitled to a higher level of protection. The court also stated that the challenged mark is visually and structurally similar to the plaintiff's mark.
The Court went on to say, "The present case is on a better footing because the Defendants' impugned goods are Chillum flavours, registered in Class 34, and the Plaintiffs' product is Pan Masala, also registered in Class 34. Because the trademark is nearly identical, the goods are allied and cognate, and the trade channels are identical with the same consumer base, the triple identity test is satisfied."
While the Court denied the plaintiff's request for damages due to a lack of evidence, it did rule that they were entitled to notional damages and costs.
Finally, the Court made the following decision:
"In the light of the aforesaid facts and circumstances, the suit is decreed in favour of the Plaintiffs and against Defendants No. 1 to 4 in terms of para 48(i) (a) and (c) of the prayer clause of the plaint. A decree of damages is passed for a sum of Rs. 3,00,000/-. Further, Plaintiffs would be entitled to CS(COMM) 1255/2018 Page 16 of 16 actual costs, which would include Court fees, recoverable jointly from Defendants No. 1 to 4."