Delhi High Court restrains paan shop from selling fake Marlboro cigarettes

The Delhi High Court recently passed a permanent injunction in favour of the Swiss subsidiary of Philip Morris, restraining an Indian paan shop from infringing the trademark and copyright of ‘Marlboro’ products and the ‘Rooftop’ symbol [Philip Morris Brands Sarl v. M/S Rahul Pan Shop & Ors.]..Justice Amit Bansal held that Philip Morris is the registered owner of the trademarks ‘Marlboro’ and ‘Rooftop’ and that the paan shop is taking unfair advantage of the brand to sell fake products and deceive consumers.“The defendants no.1 and 2 have taken unfair advantage of the reputation and goodwill of the plaintiff’s trademarks/artistic works and have also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered marks without any plausible explanation,” the Court held..The suit was filed against M/s Rahul Pan Shop, which sells cigarettes and other tobacco products. Philip Morris claimed that it adopted the trademark ‘Marlboro’ in 1924 and started selling cigarettes bearing the said mark in India from the year 2003..Upon a comparison being drawn on the packaging of each party's product, the Court noted that the cigarette packs were identical in terms of colour combination and arrangement of letters, marks and figures. The Court also held that due to its long and continuous use, Philip Morris has also acquired a copyright over the labels used in its cigarettes and cigarette packs. .It observed that an interim injunction had already been passed in favour of Philip Morris back in July 2023. At the time of passing the interim injunction, the Court had noted that "an element of public health is involved" and appointed a local commissioner to seize the counterfeit cigarettes..The paan shop owner did not enter appearance before Court or file a reply to refute the allegations made by Philip Morris. Consequently, the Court held that all the allegations were deemed to be admitted by the paan shop."Since the defendants no.1 and 2 have failed to take any requisite steps to contest the present suit, despite having suffered an ad interim injunction order, it is evident that they have no defence to put forth on merits," the Court held, proceeding to permanently restrain the paan shop from dealing in any product bearing the 'Marlboro’ and ‘Rooftop' marks..Advocates Manish Biala and Devesh Ratan appeared for Philip Morris..[Read order]