'Rajnigandha Well Known Trademark, Entitled To Higher Degree Of Protection': Delhi High Court Blocks Sale of Rajni Paan

The Delhi High Court recently passed a decree in favour of Dharampal Satyapal Limited - the manufacturers of the iconic pan masala Rajnigandha and permanently halted the production, sale or promotion of any product under the trademark 'RAJNI PAAN',

Holding that the defendants had intentionally attempted to "trade off the significant goodwill and reputation of the plaintiffs", the Court directed them to pay Rs 3 lakhs in damages. In 2018, the Court had granted an ex-parte ad interim injunction in the case.

A Single Judge Bench of Justice Jyoti Singh, allowing an application filed by the plaintiff for ­ex-parte summary judgement under Order XIII-A of the Code of Civil Procedure, 1908, said:

"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 Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, which empowers this Court to pass a summary judgment, without recording evidence, if it appears that Defendants have no real prospect of defending the claims."

The plaintiff had filed the suit for permanent injunction restraining infringement and dilution of its trademark and trade name. In September 2018, the company during a market surveillance had come across 'Rajnipaan' products - it also had identical trade dress. Further investigations revealed their wide availability on e-commerce sites. The company then approached the court and was granted interim relief on 29.11.2018.

The plaintiff averred that Rajnigandha, which is their flagship product, is sold in "a unique packaging having a distinct layout, getup and colour scheme". Consumers around the world associate the trademark 'RAJNIGANDHA' exclusively with the plaintiff, it was asserted.

In the final order, the Court held that a case of infringement of trademark and passing off has been made out. The defendants had dishonestly chosen to adopt a deceptively similar trademark in respect of identical products in order to pass them off as manufactured by the plaintiff, the Court concluded.

It observed:

"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, as rightly contended by the Plaintiffs, has been done intentionally to trade off the significant goodwill and reputation of the Plaintiffs in their RAJNIGANDHA marks. It is obvious that there is a dishonest adoption by the Defendants and Plaintiffs have made out a case of infringement and passing off".

The court further said the imitation, adoption and use of the nearly identical trademark, trade name logo and colour scheme by the Defendants is with the intent to cause confusion and create an impression amongst consumers that the Defendants have a direct nexus or affiliation with the Plaintiffs.

Justice Singh further noted that once a court finds that there is imitation, no further evidence is required to establish the violation of the plaintiff's rights in an action for infringement.

On this point, the Court relied on the decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navratana Pharmaceutical Laboratories. The principle of 'initial interest confusion' is also attracted in the case, said the court.

"​​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," it said.

Justice Singh also said Rajnigandha has been previously declared as a well-known trademark by the court and is entitled to a higher degree of protection. The impugned mark is visually and structurally deceptively similar to the plaintiff's mark, the court added.

"Given that the trademark RAJNIGANDHA is a "well-known" mark as defined under Section 2(1)(zg) of the Act and entitled to a high degree of protection, even in cases of dissimilar goods the owner of the mark is required to be shielded," said the court.

It further said, "Present case stands on a better footing, as the impugned goods of the Defendants are Chillum flavours, registered in Class 34 and the product of the Plaintiffs is Pan Masala, also registered in Class 34. The goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical, goods are allied and cognate and the trade channels are identical with same consumer base."

The Court, while declining the relief sought by the plaintiff to award damages on account of the lack of evidence, held that they were entitled to notional damages and costs. The Court observed –

"However, in view of the fact that Defendant Nos. 1, 2, 3 and 4 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, this Court is of the view that Plaintiffs are entitled to notional damages…Plaintiffs are also entitled to costs."

Finally, the Court issued the following order:

"In the light of the aforesaid facts and circumstances, 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. 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 fee, recoverable jointly from Defendants No. 1 to 4."

Title: Dharampal Satyapal Limited & Anr. v. Mr. Youssef Anis Mehio & Ors. 

Citation: 2022 LiveLaw (Del) 947

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