Delhi High Court awards ₹3 lakh damages to Rajnigandha for dishonest adoption of trademark by Rajni Paan

The defendants mischievously adopted a deceptively similar mark and have only replaced ‘GANDHA’ with PAAN’ with an intention to ride upon goodwill of Rajnigandha, the Court held.
Rajnigandha Pan Masala and Rajni Pan
Rajnigandha Pan Masala and Rajni Pan

The Delhi High Court recently awarded damages of ₹3 lakh in favour of the manufacturers of Rajnigandha Pan Masala, while permanently restraining the makers of 'Rajni Paan' from manufacturing, selling, or advertising products under the said trademark. (Dharampal Satyapal Ltd & Anr v. Youssef Anis Mehio & Ors)

Justice Jyoti Singh restrained the manufacturers of 'Rajni Paan' from indulging in infringement, dilution of Rajnigandha's trademark and trade name, passing off, infringement of copyright, and unfair competition.

"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," the Court held.

Dharampal Satyapal Limited, the proprietors of Rajnigandha Pan Masala, had filed a suit seeking a permanent injunction to restrain the defendants from the manufacture, sale and advertisement of any tobacco products or any other goods and services using the marks 'Rajni', 'Rajnigandha', 'Rajni Paan', etc.

On November 29, 2018, the Court passed an interim injunction in favour of Rajnigandha. Despite service of summons to the defendants through several modes, they did not appear before the Court.

Upon careful examination of the two products, the Court observed that the imitation, adoption and use of the nearly identical trademark, trade name logo, and colour scheme by the proprietors of 'Rajni Paan' was done with the intent to cause confusion and create an impression amongst consumers that they have a direct affiliation with the plaintiffs or were licensed or endorsed by them.

"It is a settled proposition of law that if the Court finds that there is imitation, no further evidence is required to establish that Plaintiffs’ rights are violated," the Court said in this context.

Further, the Court observed that since 'Rajnigandha' was a well-known mark, as defined under Section 2(1)(zg) of the Trademarks Act, the same shall be entitled to a high degree of protection even in cases of dissimilar goods.

The Court added that the principle of ‘initial interest confusion' would also be attracted here, as the case rested on the assumption that infringement may be based upon confusion which creates initial consumer interest, even if no actual sale was made due to that confusion.

The order also stated that since no stocks were recovered or seized from the premises by the Local Commissioner appointed by the Court, the prayer for damages could not be entertained.

However, in light of the facts that the defendants were guilty of infringement, and that they have chosen to deliberately stay away from the proceedings, the Court held that the plaintiff was entitled to notional damages. Relying on Supreme Court judgments to this effect, as well as the provisions of the Commercial Courts Act, 2015, the Delhi High Court (Original Side) Rules, 2018 and the Delhi High Court Intellectual Property Division Rules, 2022, the Court awarded damages of ₹3 lakh.

Advocates Pravin Anand, Vaishali Mittal and Shivang Sharma appeared for the plaintiffs.

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Rajnigandha Order.pdf
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