Delhi High Court passed an order in favour of Dharampal Satyapal Limited who manufacture the infamous pan masala- Rajnigandha and further stopped the production, sale and promotion of ‘RAJNI PAAN’ stating that defendants had intentionally tried to “trade off the significant goodwill and reputation of the plaintiffs”. The Court has ordered that they pay Rs 3 lakh in damages. Earlier an ex-parte ad interim injunction was awarded by the court in 2018.

The plaintiff sought a permanent injunction to prevent infringement and dilution of its trademark and trade name. During a market surveillance in September 2018, the company discovered ‘Rajnipaan’ items with comparable trade dress. Further research showed that they are widely available on e-commerce sites. The company then went to court and was awarded interim relief on November 29, 2018.

According to the complainant, Rajnigandha, their main product, is sold in “a distinctive packaging with a distinct layout, getup, and colour scheme.” It was claimed that consumers all over the world connect the name ‘RAJNIGANDHA’ exclusively with the plaintiff. The court further stated that the Defendants’ imitation, adoption, and use of the remarkably similar trademark, trade name logo, and colour scheme is done with the motive to deceive customers and give the impression that the Defendants have a direct nexus or affiliation with the Plaintiffs. In addition, Justice Singh stated that once a court determines that there is resemblance, no further evidence is required to demonstrate the violation of the plaintiff’s rights in an infringement action. 

“??This Court finds that Defendants have mischievously and deliberately adopted a deceptively similar mark and have only replaced ‘GANDHA’ with ‘PAAN’ with an intention to ride upon goodwill and reputation established by the Plaintiffs,” it said. Justice Singh also stated that Rajnigandha had previously been certified a well-known trademark by the court and is therefore entitled to a greater level of protection. The court further stated that the challenged mark is visually and structurally akin to the plaintiff’s mark. It went on to say that the current action is on a better footing because the Defendants’ impugned commodities are Chillum flavours, which are classified in Class 34, and the Plaintiffs’ product is Pan Masala, which is also registered in Class 34. Because the brand is almost identical, the items are related and cognate, and the trade routes are identical with the same consumer base, the triple identity test is satisfied.