Delhi High Court Upholds Interim Injunction Against Cigarette Brand TOPAZ For Using 'Similar Trade Dress' As TOTAL

Justice Suresh Kumar Kait decided not to interfere with the impugned order, stating,

"the basic background colour of the packaging / cigarette box is shade of dark metallic 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."

It added,

"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. All these points were weighed in the mind of the Court when this Court had prima facie opined to grant restraint order in favour of plaintiff."

Plaintiff's submissions

The Bench was hearing an application under Order 39 Rule 4, for setting aside of the impugned injunction order against TOPAZ.

In this case, the dispute was between usage of two trade marks': plaintiff's TOTAL and defendant's TOPAZ (written in the same font and style).

The Plaintiff claimed to have adopted the brand 'TOTAL' in the year 2015 and stated to have discovered about the defendant's brand 'TOPAZ' only in mid-July 2021.

The plaintiff submitted that while they had no issue with the defendants' using the word 'TOPAZ', they raised objections regarding the infringing packaging of the defendant's product, and how the defendants were 'deliberately targeting' the plaintiff's customers.

It pointed out several examples where both the parties had identical packaging –

• identical statutory warning that covers a major portion of the package;
• 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.

Advocate Pravin Anand, representing the Plaintiff also submitted before the Court that, while it may be true that the defendant had been using the trade name 'TOPAZ' since 2011, but the trade dress/ packaging was different then, and it has been remodeled recently, making it very similar to that of 'TOTAL'.

Reliance was placed on Britannia Industries Vs. ITC Ltd. & Ors., to state that "confusion may take place into the mind of a person of average intelligence with regard to trade mark of goods he would be purchasing".

Defendant's submissions

The Defendants claimed that they have been using the mark 'TOPAZ' since 2011 whereas the plaintiff only adopted their mark in 2015.

Senior Advocate Jayant Mehta pointed out that cigarette users are very particular about the flavour, length, filter of the brand they use, which is why they do not get confused even if some brands use similar colour schemes, fonts, etc.

He submitted that certain colors such as gold, red, black, blue and their combinations are common to the industry and no entity, including but not limited to the plaintiff, can claim monopoly over the same.

Findings

The issue before the Court was whether the defendants are entitled to use the trade mark TOPAZ, with the trade dress and packaging?

The Court accepted that while granting ex-parte ad interim injunction, the Court only expresses a prima facie view, a deep and thorough investigation on merits is not done.

It noted that the Plaintiff's product has been well established in the market since the years 2014-2015. While going through various pictoral images, the Court noted that while some of the aspects of the design of 'TOPAZ' is similar to 'TOTAL', a certain percentage of the similarities are common to all cigarette brands – such as the health warning.

While comparing both the products side by side, the Judge did notice that certain aspects of packaging are identical.

It thus opined that the impugned interim order requires needs no interference by the Court.

It however directed the Court Commissioner to release the previously seized cigarette sticks of the defendants, given the perishable nature of tobacco, and allowed them to export the same outside India, in fresh packaging.

Case Title: VST Industries Ltd. v. Rudra Ventures Pvt. Ltd. & Ors.

Citation: 2022 LiveLaw (Del) 15