The High Court in Delhi upholds the preliminary injunction against the TOPAZ cigarette brand for using a “similar trade dress” as TOTAL
The Delhi High Court has upheld the injunction against TOPAZ, a cigarette brand, which allegedly presented its goods as those of another TOTAL cigarette brand by adopting deceptively similar packaging / trade dress.
Justice Suresh Kumar Kait decided not to interfere with the contested order, stating that
“the basic background color of the packaging / cigarette box is a dark metallic black and dark blue shade that is identical. Both boxes also contain ripped lines that run across their respective surfaces. The front and back views of the packaging are in similar font and even the placement of the letters is similar.“
“Plaintiff’s TOTAL brand cigarette sticks mentioned the words “Dual Flavor” in gold letters, and Defendants mentioned the words “Twin Flavor” on their TOPAZ cigarette, and the font, style, color and placement of matter on both sides are exactly the same. All these points were weighed in the mind of the court when that court, at first sight, came to its opinion that it was issuing an injunction in favor of the plaintiff.“
Submissions of the plaintiff
The bank heard an application under Order 39 Rule 4 to overturn the contested injunction against TOPAZ.
In the present case, the dispute concerned the use of two trademarks: TOTAL by the plaintiff and TOPAZ by the defendant (written in the same font and style).
The plaintiff claimed to have adopted the “TOTAL” brand in 2015 and stated that it did not find out about the defendant’s “TOPAZ” brand until mid-July 2021.
The plaintiff alleged that, although they had no problem with the defendants’ use of the word “TOPAZ”, they had objected to the infringing packaging of the defendant’s product and the defendant’s “deliberate targeting” of the plaintiff’s customers.
She pointed to several examples where both parties had identical packaging –
- identical legal warning that covers much of the package;
- the basic background color of the packaging / cigarette box is peculiar and the distinct hue of dark metallic black and dark blue colors is identical to that of the plaintiffs;
- both boxes contain ridge lines that run across their respective surfaces;
- identical use of font and placement of letters on the front and back of the boxes;
- Use of blue and silver color plates;
- Words mentioned as “Dual Flavors” and “Twin Flavors”;
- the gold dotted circle and gold ring that represent the brand names of both parties.
Lawyer Pravin Anand, who represents the plaintiff, also submitted before the court that the defendant had been using the trade name “TOPAZ” since 2011, but the trade presentation / packaging was different at that time and had recently been redesigned, which makes it the same as that of ‘ TOTAL ‘is very similar.
It was trusted Britannia Industries vs. ITC Ltd. & Ors., to say, that “A person of average intelligence can get confused about which trademarks they would buy“.
Opinions of the defendant
The defendants claimed to have been using the “TOPAZ” brand since 2011, while the plaintiff only took over their brand in 2015.
Senior Advocate Jayant Mehta pointed out that cigarette users are very specific about the taste, length, and filter of the brand they are using, so even if some brands use similar color schemes, fonts, etc., don’t get confused.
He argued that certain colors such as gold, red, black, blue and their combinations were common in the industry and that no company, including but not limited to the plaintiff, could claim a monopoly over them.
The question before the court was whether the defendants are entitled to use the TOPAZ brand with the commercial make-up and packaging?
The court accepted that upon granting interim injunction, the Court only states a great facie A thorough and thorough examination of the merits is not carried out.
It found that the applicant’s product has been well established in the market since 2014-2015. Upon reviewing various pictorial representations, the Court found that although some of the design aspects of “TOPAZ” are similar to those of “TOTAL”, a certain percentage of the similarities are common to all brands of cigarettes – such as the health notice.
When comparing the two products side by side, the judge found that certain aspects of the packaging are identical.
It therefore took the view that the contested interim measures did not need to be interfered by the Court of Justice.
However, it instructed the Court Commissioner to release the defendants’ previously seized cigarette cartons in view of the perishability of the tobacco and allowed them to export them in fresh packaging outside of India.
Case Title: VST Industries Ltd. against Rudra Ventures Pvt. Ltd. & Ors.
Quote: 2022 LiveLaw (Del) 15