Delhi High Court - Orders
Itc Limited vs Tapisserie Lifestyle Private Limited & ... on 19 April, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:23.04.2022
05:20:01
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 667/2021
ITC LIMITED ..... Plaintiff
Through: Mr. Raj Sekhar Rao, Senior Advocate
with Ms. Suhrita Majumdar, Mr.
Debjyoti Sarkar, Mr. Afzal B Khan,
Mr. Samik Mukherjee, Mr. Manosij
Mukherjee & Mr. Sunrita Majumdar,
Advocates. (M:98102283369)
versus
TAPISSERIE LIFESTYLE PRIVATE LIMITED
& ANR. ..... Defendant
Through: Ms. Aditi Tuteja & Mr. Akhil Hasija,
Advocates for defendant No. 1
Mr. Amit Gupta & Mr. S. Dutta,
Advocates. (M:9831775798)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 19.04.2022
1. This hearing has been done through hybrid mode.
2. The case of the Plaintiff is that it is the proprietor of the trade mark 'GOLD FLAKE' which has been in use for more than a 100 years with respect to cigarettes. The trademark 'GOLD FLAKE' is stated to have been assigned to the Plaintiff in 1910 and enjoys recognition in the market. The Plaintiff's rights over the trademark 'GOLD FLAKE' have been recognized in various Courts. The Defendants are manufacturers and sellers of cigarettes under the brand name and trade dress 'HASH GOLD'. The Plaintiff's case is that the trademark and trade dress of the Defendants' CS(COMM) 667/2021 Page 1 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 products is also a red-gold colour combination in the same style, get-up and colour scheme by the Plaintiff.
3. The two packagings are set out below:
4. Interim injunction was granted in this matter, vide order dated 17th December, 2021. The operative portion of the said order is as under:
"24. After hearing, leamed Senior Counsel for plaintiff and on perusal of material placed on record, this Court finds that a prima facie case to grant ex-parte ad-interim injunction relief in favour of plaintiff against the defendants, is made out.
25. Accordingly, till further orders, defendants, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in the infringing products, more particularly identified as products bearing the impugned label /trade dress CS(COMM) 667/2021 Page 2 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 and/or impugned mark - 'HASH GOLD' and/or any other mark / name deceptively similar to the plaintiffs registered trade marks "GOLD FLAKE"
resulting in the infringement of the plaintiffs rights in the registered trademarks and further they are restrained from passing-off the impugned mark/lable/trade dress."
5. Thereafter, the Local Commission was executed and the inventory was also prepared of the stock seized, from the premises of Defendant No.1 and 2, recorded in the previous order dated 24th March, 2020, as extracted below.
6. On the last date i.e., 24th March, 2022, after considering the matter, this Court had confirmed the injunction order. Extracts of the said order read:
"7. A perusal of the rival packaging and various features in the packaging would reveal that there are several identities and similarities between the Plaintiff's GOLD FLAKE product and the Defendant's HASH GOLD product.
First, the use of the word 'GOLD' which is a prominent feature of the Plaintiff's mark. Second, the Defendants' use of a red and gold ribbon device which is almost identical to the Plaintiff.
Third, the golden packaging in which the cigarettes are sold is also identical.
Moreover, even the flavors such as: PREMIUM BLEND, MINT, etc. are being imitated by the CS(COMM) 667/2021 Page 3 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 Defendant.
8. The most important fact is that the Defendants' catalogue which has been placed on record shows that internationally the Defendants are using the word 'HASH' as a trademark for their products, in a black and red packaging, but in India they have chosen to add the word 'GOLD' to the name of the product. Thus, there can be no justification for the Defendant to use a different packaging, trade dress and colour combination in India which is so closely imitative of the Plaintiff's 'GOLD FLAKE' mark and packaging.
9. In the manufacture, sale, marketing, etc. of cigarettes - which are goods for human consumption - any possibility of confusion ought to be avoided. Moreover, cigarettes are not only sold in boxes but also in loose form and, therefore, there is a distinct possibility that a paan shop or a retail seller may simply remove a cigarette from the Defendants' 'HASH GOLD' packaging and pass it off as the Plaintiff's 'GOLD FLAKE'. Considering the documents and the affidavits placed on record at this stage as also the fact that the Local Commissioner's reports dated 6th January, 2022 and 10th January, 2022, reveal seizure of large amount of stocks both at the premises of Defendant Nos.1 & 2, this Court is not inclined to vacate the injunction.
10. The inventory seized at the premises of Defendant No.2 is as under:
" INVENTORY
1. 35 BIG BOXES OF HASH GOLD MINT.
2. 121 BIG BOXES OF HASH GOLD.
Each big box contains 69mm cigarette each big box containing an outer containing small packs of cigarette 20 in number and each big box containing 30 outer in in total 600 cigarette boxes in total.
One open carton contains 3 outers.
CS(COMM) 667/2021 Page 4 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01Total 156 boxes sealed in Rack No. 27 and Rack No. 28 Total number of cigarette packs- 93,600 each Cigarette packs contains 10 sticks."
"Inventory of the infringing material seized at the factory premises and a room located at the first floor of the factory premises.
S. No. Particulars Marks as
1. One Box of Hash Gold Bobbin A-1
2. Seven Gunny Bag Bobbins A-2
41-Gold Touch with roundel device
02-Gold Magic with roundel device
09-Hash Gold
3. Eight Hash Gold Bobbin A-3
4. Nine Boxes with Hash Gold
Mint Bobbin A-4
5. Six Boxes with Gold Magic
roundel Bobbin A-5
6. Three Boxes Gold Strike outer
Box Package A-6
7. Two Boxes Hash Gold outer Box A-7
8. 25 Boxes with Gold Magic carton A-8
(One Box 30 carton)
One carton has 20 packet x 10 sticks
9. One Box with Hash Gold
mint outer Package A-9
10. 15 half Trays with single cigarette with Roundel logo Each Trays x 4000 approx.
Time-03:57p.m. A-10
11. At a later stage, certain packs under the name "Golden Stars" were accidentally found to contain the boxes for Gold Magic with the roundel device. At this point boxes were CS(COMM) 667/2021 Page 5 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 marked as A-11 (124 boxes) and kept at the godown on the Ground floor.
The boxes contained finished goods. At the request of the counsel for the plaintiff, certain samples were handed to them. One Box 30 carton One carton has 20 packets x10 sticks.
12. Four gunny bags with single stick/loose A-12 pack + one* (With roundel device) Four gunny bags containing Gold Magic Sticks.
One gunny bag Gold Strike (With roundel device)"
11. From the Local Commissioner's report from the manufacturer/Defendant No.2's premises, it is noticed that the Defendant is manufacturing cigarettes under various other brands stated to be belonging to third parties.
12. In any event, insofar as Defendant No.1 is concerned, the use of the trademark 'HASH GOLD' or 'GOLD' would not be justified. The inventory shows that the total number of cigarette packs which have been seized is more than one lakh. The accounts also show that Defendant No.1 has effected huge sales of the said products. Under these circumstances the injunction granted vide earlier order dated 17th December, 2021, is confirmed.
13. It is made clear that the inventory which has been seized by the Local Commissioner, shall remain with the Defendant and shall not be utilized in any manner whatsoever. I.A. No.16907/2021 and I.A. No.611/2022, are disposed of in these terms."
7. Today, it is submitted by Ms. Aditi Tuteja, ld. counsel for Defendant CS(COMM) 667/2021 Page 6 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 No.1, that Defendant No.1 is willing to suffer a decree and not use the impugned colour combination or the packaging/trade dress or logo/mark 'HASH GOLD'. She submits that a decree may be granted in terms of paragraphs 81(a) to (f) of the plaint. Insofar as the seized goods are concerned, she submits that the same would be destroyed by Defendant No.1 in the presence of the Plaintiff's representative.
8. Defendant No.1 has also agreed to withdraw the trademark applications bearing no. 5096750 and 5054123 in respect of HASH GOLD and HASH SPECIAL GOLD dated 20th August, 2021 and 22nd July, 2021 respectively. In this regard, let letters to the Registrar of Trademarks be sent by Defendant No.1 within two weeks and appropriate orders shall be passed by the Registrar of Trademarks on or before 15th June, 2022, in respect of the said withdrawal.
9. Insofar as Defendant No.2 is concerned, Defendant No.2 was the manufacturer for Defendant No.1, and the seized material including Defendant No.1's products, is lying in Defendant No.2's premises. Mr. Gupta, ld. counsel for Defendant No.2, submits that since Defendant No.1 is willing to suffer a decree insofar as Defendant No.1's products lying with Defendant No.2 is concerned, the same may also be destroyed.
10. Considering the stand taken by both the Defendants, Defendant No.1 being the main Defendant and the Defendant No.2 being the manufacturer for the Defendant No.1, a decree is passed in terms of paragraphs 81(a) to
(f) of the plaint.
11. The destruction of the infringing products HASH GOLD/GOLD of Defendant No.1 lying either in the premises of Defendant No.1 or Defendant No. 2, shall take place in the presence of two representatives of CS(COMM) 667/2021 Page 7 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 the Plaintiff who shall visit the said two premises on or before 30th April, 2022 at a mutually convenient date/time after coordinating with ld. counsel for the Defendants.
12. At this stage, ld. counsel for Defendant No.1 points out that upon destruction of cigarettes, considering the tax payable on these products if they are destroyed, Defendants would be entitled to some tax refund. If that is so, the Defendants are free to approach the concerned authorities along with a copy of the present order, in which case the refund shall be given in accordance with law.
13. Mr. Raj Sekhar Rao, ld. Sr. Counsel for the Plaintiff, at this stage points out that the Local Commissioner has also seized products bearing other brandnames, from Defendant No.2's premises, such as Gold Magic, Gold Touch and Gold Strike which are also in identical colour combination and packaging to other brands.
14. Considering the fact that the present suit relates to HASH GOLD/GOLD which was primarily filed against Defendant No.1, the Plaintiff is permitted to seek its remedies in accordance with law qua Defendant No.2, for any other products that it claims to be infringing of its rights. However, for a period of four weeks, insofar as the said products of other brands - Gold Magic, Gold Touch and Gold Strike are concerned, the said products if seized by the Local Commissioner, shall not be disposed of by Defendant No.2. The same shall be subject to any orders which may be passed in any other proceedings to be instituted by the Plaintiff. Therefore, insofar as the Gold Magic, Gold Touch and Gold Strike are concerned, the Plaintiff may avail of its remedies in accordance with law.
15. The decree sheet in terms of paragraph 81(a) to (f) of the plaint be CS(COMM) 667/2021 Page 8 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:23.04.2022 05:20:01 drawn against Defendant No.1 and 2.
16. Considering that the matter has been resolved in the light of the undertaking by Defendants, in view of the judgment of the Division Bench in Nutan Batra v. M/s. Buniyaad Associates, 2019 (173) DRJ 178, 100% of the Court fee is directed to be refunded to the Plaintiff, through counsel. In addition, a sum of Rs.2,00,000/- shall be paid by Defendant No.1 to the Plaintiff, within six weeks.
17. The suit is decreed in these terms. All applications are disposed of.
18. Copy of the present order be served upon the Registrar of Trademarks at the Trademark Registry (Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan, Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: [email protected], [email protected]). The order shall also be served to the Registrar through ld. CGSC, Mr. Harish V. Shankar.
PRATHIBA M. SINGH, J.
APRIL 19, 2022 dj/ms CS(COMM) 667/2021 Page 9 of 9