Trademark Infringement: Delhi High Court Issues Permanent Injunction In Favour Of Tobacco Company Which Owns 'Marlboro' Cigarettes

Philip Morris adopted the trademark 'MARLBORO' for its cigarette packs in 1924. It started selling cigarettes bearing the said mark in India through a trading company in 2003.

It also uses other marks for its cigarette packs such as 'ROOFTOP' and 'SMOOTHFLO', which are registered marks.

Philip Morris sought a permanent injunction against defendant no.1, a shop selling cigarettes and other tobacco products and defendant no. 2, the shop's owner.

Philip Morris stated that it came across cigarette packs being sold by the shop under the name counterfeit 'MARLBORO ADVANCE COMPACT'. When it conducted an investigation, it found that the warehouse was supplying the counterfeit products to the shop.

It submitted that the counterfeit cigarette packs bore the same code, whereas, its genuine products contained a unique code on each cigarette pack.

On 13 July, 2023, the Court had granted an ex parte ad interim injunction, restraining the defendants from dealing in any products bearing Philip Morris' trademarks.

It had also appointed a Local Commissioner to visit the shop. On visiting the premises, the Local Commissioner found packs of cigarettes with trademarks 'MARLBORO' trademark.

Justice Amit Bansal proceeded ex parte with the case as the written statements were not filed within the stipulated time.

The Court noted that despite serving the defendants, they did not enter an appearance.

It observed that all the averments made in the plaint have to be admitted since no written statement was filed.

The Court stated that the suit does not merit any trial and invoked Order VIII Rule 10 CPC, which empowers the court to pronounce judgment against a party if no written statement has been filed by the party within the required time.

Comparing Philip Morris' products with the counterfeit products, the Court observed that the cigarette packs were identical in terms of colour combination and arrangement of letters, marks and figures.

Noting the defendants replicated the contents, colour scheme and packing of the 'MARLBORO' and 'ROOFTOP' trademarks, the Court said that a case of trademark and copyright infringement was made out.

It stated that the defendants took an unfair advantage of the reputation and goodwill of Philip Morris' trademarks. The defendants also deceived the consumers by suggesting an association with Philip Morris, it added.

The Court held that a case of passing-off was also made out.

The Court thus issued a permanent injunction in favour of Philip Morris, restraining the defendants from dealing in any products bearing Philip Morris' trademarks, packaging or using the labels/artistic works.

Case title: Philip Morris Brands Sarl vs.M/S Rahul Pan Shop & Ors. (CS(COMM) 462/2023 & I.A. 12451/2023)

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