RAJNIGANDHA v RAJNIPAAN: A classic case of deceptive similarity

INTRODUCTION

Pan Masala as an industry is seeing an immense surge recently in terms of trade and consumption. The data regarding its consumption shows significant numbers where the market has crossed a value of INR 41,821 Crore in 2021 and this data will continue to surge in the coming time.  IMARC Group expects the market of Pan Masala to reach INR 53,081.5 Crore by 2027.[1] A recent development in the domain of IP involving the market of Pan Masala was beautifully discussed by the Hon’ble Delhi High Court in the case of Dharampal Satyapal Limited and Anr v. Youssef Anis Mehio and Ors[2]. This blog also covers the aspect of the Initial Interest Confusion (IIC) Doctrine and The Eight Factor Test based on which the court concluded the present case.

FACTS

In the present case, the Plaintiff is a part of the Dharampal Satyapal Group which is a multi-diversified conglomerate, that was set up in 1929. Since its inception, the Dharampal Satyapal Group has developed its branding in the sector of Food & Beverages, Confectionary, Hospitality, Mouth Fresheners, Pan Masala, Tobacco, Agro-Forestry, Rubber Thread, and Infrastructure, etc. where the product name of the plaintiff is RAJNIGANDHA. The plaintiff initially received a trademark for the mark “RAJNI” in the year 1980 and later the product range was expanded and the plaintiff got a trademark for flavoured pan masalas “RAJNIGANDHA” in the year 1983.

The issue started to arise when rival products started to launch their product under the name, RAJNIPAAN which is also dealing with flavoured pan masalas. The plaintiff alleged that there exists a deceptive similarity in the product used and marketed by the defendant and thus, that led them to initiate the suit against the Defendant. In the present case the Delhi High Court has granted an ex-parte ad interim injunction in favour of the Plaintiffs and against the Defendants where any person who is associated with Defendant or their company may be directly or indirectly barred from any sort of manufacturing, selling, offering for sale, advertising whether it may be directly or indirectly dealing in any manner with products and services including but not limited to pan masala products, confectionary and any other goods and services using marks/trade dress RAJNI PAAN, plaintiffs’ trademark.

ISSUES

1. Whether all the defendants are liable for trademark infringement?

2. Whether the defendant’s action amounts to passing off?

3. Whether defendant’s action amounts to unfair competition against the plaintiff?

4. Whether the practice of trade by the defendant amounts to trademark dilution against the plaintiff’s product?

5. Whether there arises an Infringement of Copyright related to artistic work?

PLAINTIFF’S CONTENTION

As in this case, the defendants did not appear in court despite several legal notices, subsequent to which the court passed an ex-parte ad interim injunction in favour of the plaintiff after hearing the arguments asserted by the plaintiff. The contention of the plaintiff is as follows:

The plaintiff asserts that its product has built its reputation for being recognized as the world’s largest-sold premium flavoured pan masala which has unique packaging having a distinct layout, getup, and colour scheme. In popular opinion, the majority of people around the nook and corner of the world recognize the trademark RAJNIGANDHA with that of the plaintiff.

The petitioner trademark has been recognized in the case of Dharampal Satyapal Limited v. Suneel Kumar Rajput[3] where the court held that the mark “Rajnigandha” is categorized as a well-known trademark, under Section 2(1)(zb) read with Section 2(1)(zg) of the Trade Marks Act, 1999. The product of both Plaintiff i.e., Pan Masala, and Defendant i.e., Chillum flavour is registered in Class 34. The Court in this case has relied upon the case of Tata Sons Ltd. v. Manoj Dodia,[4] where the court held that TATA is classified as a well-known trademark and used by the defendant on the product being sold under the trademark name A-ONE TATA will result in infringement under Section 29(4) of the Trademarks Act, 1999 as it leads to unfair advantage upon TATA which has built its reputation and popularity.

To substantiate its claim plaintiff has projected a few points to highlight its trademark and product packaging so as to understand its protection under trade dress.

1. The product RAJNIGANDHA comes in a Dark Royal Blue colour which is kept as the base colour used in the packaging

2. There is a world map that is placed across the face and back of the pouch.

3. The way in which RAJNIGANDHA is written in red and additionally kept in the artistic device with a ghost outline

4. Even RAJNIGANDHA Flavoured Pan Masala written in white colour in an oblong device

5. The makers have kept the tagline at the bottom of the front face which read “Superb in Freshness and Taste”

6. There is also a small device with RG written at the bottom of the pouch.

Looking at the two products the court can conclude that there exists a deceptive similarity between the two products, logo, colour scheme, and trade name. Also, the packaging of the impugned product is designed in such a way that it shows a resemblance with the product of the plaintiff and thus same can tarnish the goodwill and reputation. It is quite evident that there exists a dishonest practice adopted by the defendant which made the case for infringement and passing off. In the case of Kaviraj Pandit Durga Dutt Sharma v. Navratana Pharmaceutical Laboratories[5]   the court has held that if the court finds that there exists an imitation, then there is no requirement to establish that the Plaintiff’s right is getting violated.

It is contended by the plaintiff that they came to know about the activities of the Defendant in the 3^rd week of September 2018, when the product was sold around the area of Delhi in identical trade dresses and it was easily available for the user on different online market sources/websites like www.flipkart.com, www.amazon.com, www.easysmoke.in, and www.smokinn.com. As per Section 28 of the Trademark Act, the plaintiff rests with the exclusive right to use the trademark in relation to goods in respect of which it is registered as getting relief for trademark infringement.

Now in the present case the court went on the determine the issues pertaining to the Copyright claim as colour used in RAJNIGANDHA qualifies artistic character.In this case, the Plaintiff is the owner of the copyright which rest in their unique ‘artistic work’ under Section 2(c) of the Copyright Act, 1957, and they are entitled to exclusive rights given under Section 14 of the said Act. The other important factor which is to be looked at is that a large sum of money is invested in advertising and promoting their goods under the trademark ‘RAJNIGANDHA’ and its constituent trade dress. The total finance for the year 2017-18 for ‘RAJNIGANDHA’ stands over INR 2757,72,35,867.68/- and another expenditure which was done comes at around INR 32,62,65,949.00/- on different platforms.

The only change which is done by Defendant is that they have replaced the word ‘GANDHA’ with ‘PAAN’ and this can result in riding upon Plaintiff’s hard-earned reputation to set up deceptive popularity in the market. In this case, there is nothing by which Defendant can show he added anything sufficient enough to distinguish his goods from those of the plaintiff.

THE DOCTRINE OF INITIAL INTEREST CONFUSION

This doctrine is based on drawing the consumer towards the product so that it may result in confusion for the public in general. The confusion starts to arise before the consumer purchases the product as he/she is confused with two marks that are similar to each other and are dealing in the same market. The test to satisfy the infringement has already been fulfilled by the plaintiff as it has been shown that there is an unlawful use of a trademark and thus the goodwill of the plaintiff product is suffering because of the name of the product. Here, , it can be determined that the rival product RAJNIPAAN is not meeting the merits.[6]

8 FACTOR TEST

In AMF, Inc. v. Sleekcraft Boats,[7] the United States Court of Appeals for the Ninth Circuit relied on the 8-factor test to know whether the consumer who is willing to purchase a product from a particular website will get confused when he/she see the similar product on a different website because of the search results being jumbled up. The court in the said case took the help of an 8-factor test to deal with this confusion between two deceptively similar marks

1. The strength of the mark needs to be looked upon
2. The similarity between the two marks
3. Evidence leading to create actual confusion
4. Its status in the market
5. The degree of care which is to be exercised by the purchaser
6. The proximity of the mark
7. Defendant’s intention to use the mark
8. Likelihood of expansion of the expansion

HOLDING

In this case, court held Defendant Nos. 1, 2, 3, and 4 are held liable for infringement by dishonestly adopting nearly identical trademarks and identical packaging, trade-dress, etc., and even the fact they decided to stay away from the proceeding of the court, even after the plaintiff displayed all reasonable efforts in good faith to call them for the court proceedings. Thus, also allowing Plaintiff to receive notional damage

CONCLUSION

This case serves as a classic example of what constitutes “deceptive similarity” and how the court determines such instance by looking at various aspects including the doctrine of initial interest confusion and 8-factor tests to assess trademarks assigned to 2 different products  Also, in general, to determine the question regarding trademark court must always look at the mark from the perspective of a reasonable person and the nature of his/her business, degree of likeliness, etc.

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[1] Pan Masala Market in India: Industry Trends, Share, Size, Growth, Opportunity, and Forecast 2022-2027,  https://www.imarcgroup.com/prefeasibility-report-pan-masala-processing-plant

[2] Dharampal Satyapal Limited and Anr v. Youssef Anis Mehio and Ors, 2022 SCC OnLine Del 3307

[3] Dharampal Satyapal Limited v. Suneel Kumar Rajput 2013 SCC OnLine Del 3473

[4] Tata Sons Ltd. v. Manoj Dodia 2011 SCC OnLine Del 1520

[5] Kaviraj Pandit Durga Dutt Sharma v. Navratana Pharmaceutical Laboratories AIR 1965 SC 980

[6] Hijacking Of Identity: Initial Interest Confusion, https://www.mondaq.com/india/trademark/407394/hijacking-of-identity-initial-interest-confusion

[7] AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)