Delhi High Court
Vst Industries Limited vs Rudra Ventures Private Limited & ... on 8 April, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 8th April, 2022
+ CS (COMM) 369/2021
VST INDUSTRIES LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Achuthan
Sreekumar & Mr. Rohil Bansal,
Advocates (M:9079965359)
versus
RUDRA VENTURES PRIVATE LIMITED & ORS. ..... Defendants
Through: Mr. Sandeep Mittal, Mr. Udit Mehra,
Mr. Anupam Singh, Mr. Ajeyo
Sharma & Ms. Jyotsna Jain,
Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.
This hearing has been done through hybrid mode.
2. The Plaintiff had filed the present suit seeking permanent injunction
restraining infringement of registered trademarks, copyright in packaging
and trade-dress, passing off, dilution, damages, rendition of accounts,
delivery up and other reliefs. The present suit relates to the trademark
'TOTAL' used by the Plaintiff for cigarettes.
3. The Plaintiff is stated to be a leading company in the tobacco industry
for the last 90 years and it has been manufacturing and selling cigarettes
under several trademarks such as 'TOTAL', 'CHARMS', 'CHARMINAR',
'EDITIONS', 'SPECIAL' and 'MOMENTS'. As per the plaint, the said mark
was adopted in 2015 and since then, the mark has achieved sales of more
than Rs.2,000 crores. The Plaintiff's case is that 'TOTAL' is the largest
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Signing Date:14.04.2022
01:35:18
capsule cigarette brand and is among the top five cigarette brands in the
country. The Plaintiff's marks relating to 'TOTAL' are also registered in
Class 34 since 9th October, 2015, including the packaging of the 'TOTAL'
branded cigarettes and its colour. The Plaintiff also has copyrights for
various packagings of 'TOTAL' branded cigarettes.
4. Defendant No.1 is a company called-Rudra Ventures Private Limited
run by Mr. Rajesh Tangri/Defendant No.2 and Mr. Hitesh Tangri/Defendant
No.3, which has launched cigarettes under the mark 'TOPAZ'. The
grievance of the Plaintiff is that the said products of the Defendants are
being produced in a similar trade-dress, writing style and colour
combination. The similarities are also not merely on the packaging but also
on the cigarette sticks and the foil paper used on the cigarettes.
The products of the Plaintiff and Defendants are as under:
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By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
5. The claim of the Defendants is that they have been using the mark
'TOPAZ' since 2011, which is disputed by the Plaintiff. The Defendants
have also obtained trademark registrations for their mark 'TOPAZ' and the
device mark in Class 34. The present suit was then filed by the Plaintiff, in
which, vide order dated 10th August, 2021, an ex-parte injunction was
granted in the following terms:
"22. Accordingly, till further orders, defendants, its
Directors, partners or proprietors, as the case may be,
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By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
its officers, servants and agents from manufacturing,
selling, offering for sale, supplying, advertising,
directly or indirectly dealing in any business
unauthorizedly using the plaintiff's trade mark TOTAL
or the mark TOPAZ (written in the same font and style
as that of the plaintiff) or any other mark deceptively
similar to the mark of plaintiff and permutations /
combinations thereof amounting to infringement of
plaintiff's trade mark TOTAL and also to use the
essential features of the plaintiff's packaging/ trade
dress of its brand TOTAL amounting to infringement of
the plaintiff's copyrights subsisting in the packaging/
trade dress of the plaintiff's trade mark TOTAL."
6. An application under Order XXXIX Rule 4 CPC was, thereafter, filed
by the Defendants. The matter was also referred to mediation, however the
mediation proceedings did not bear fruition. On 7th January, 2022, vide a
detailed order, the injunction was also confirmed as against the Defendants.
However, owing to the perishable nature of tobacco and cigarette sticks, the
inventory of stocks which was seized by the Local Commissioner was
directed to be released and permitted to be exported abroad. The relevant
portion of the said order dated 7th January, 2022 is set out below:
"35. In the aforesaid view of the matter, without
expressing any opinion on the merits of this case, this
Court is of the opinion that though the case of
defendants is also on strong footing, however, the ex
parte ad interim injunction granted to plaintiff vide
order dated 10.08.2021 needs no interference by this
Court. However, this Court is conscious that
defendants might also be suffering hardships, which is
unquantifiable and therefore, the prayer made by
learned senior counsel for the defendants that tobacco
is a perishable item and so the cigarette sticks seized
by the Court Commissioner vide order 10.08.2021 be
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By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
released, is allowed and it is directed that the same
shall be released only for export outside India in fresh
packaging, subject to an undertaking furnished on
affidavit by the defendants that they shall maintain
accounts in respect of the sales and make the same
available to the Court as and when directed."
7. Thereafter, a contempt petition was filed by the Plaintiff under Order
XXXIX Rule 2A CPC, which was disposed of on 1st April, 2022. Vide the
said order dated 1st April, 2022, the Court observed as under:
"5. The matter is before the Court for case
management hearing and framing of issues. After
perusing the record of the case, it appears that the
Defendants claim a total sale of Rs. 30 lakhs since the
year 2010-2011 in respect of Defendant's brand
'TOPAZ'. The Defendants have already changed the
trade dress, packaging and label of their product.
6. Let the Defendants produce the new label, trade
dress, and the packaging adopted by them on the next
date of hearing. Considering the sales of the
Defendants' product as captured in order dated 7th
January, 2022, the Defendants' counsel shall also seek
instructions as to whether the Defendants would be
willing to pay a sum of Rs.3 Lakh as litigation costs to
the Plaintiff for a final disposal of the suit, provided
the same is acceptable to the Plaintiff."
8. Both counsels have since sought instructions. Ld. counsel for the
Plaintiff submits that the word 'TOPAZ' was not objected to by the Plaintiff
since inception. The case was only relating to the label and trade-dress of the
Defendants' products. The Defendants have handed over the new label and
trade-dress which they intend to use. The same has also been shown to the
ld. counsel for the Plaintiff. The Plaintiff does not have any objection to the
new packaging which the Defendants intend to adopt. Accordingly, the new
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By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
packaging and the old packaging are taken on record. The old packaging is
attached as Annexure A to the present order. The new packaging which the
Defendants intend to adopt is attached as Annexure B.
9. Ld. Counsels for the Defendants on the basis of the instructions
received from Mr. Hitesh Tangri, submit that insofar as the old packaging is
concerned, a permanent injunction be granted in terms of paragraphs
52(i)(ii) and (iii) of the plaint. Accordingly, the suit is decreed in terms of
paragraphs 52(i)(ii) and (iii) of the plaint.
10. It is, however, made clear that the Defendants can continue to use the
mark 'TOPAZ' for cigarettes/ tobacco products, of its manufacture and sale,
so long as the packaging is either a new packaging which is attached as
Annexure B or any other packaging which is not identical or similar to the
Plaintiff's TOTAL packaging. If there is any stock of old packaging lying
with the Defendants, the Defendants shall ensure that the same is not used
and is destroyed.
11. It is also brought to the Court's notice that the Defendants hold a
registered trademark ' ' bearing registration no. 4732312
dated 4th November, 2020, which is registered in Class 34, in respect of
Tobacco, paan masala, gutka (chewing tobacco), cigarettes & smoker's
articles. Since the Defendants have now agreed to change the said logo into
the logo contained in Annexure B, it is made clear that the said registration
shall not give any right to the Defendants to use the font and the colour
combination as contained in the registration for their products. However,
insofar as the said registration may relate to the word 'TOPAZ', bearing
registration no. 4689909 dated 6th October, 2020, the Defendants' rights are
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By:DEVANSHU JOSHI
Signing Date:14.04.2022
01:35:18
protected.
12. Ld. counsels for the Defendants have made the above submissions on
the basis of the instructions received from Mr. Hitesh Tangri. It is made
clear that Mr. Tangri would be personally responsible for ensuring that the
undertakings are adhered to.
13. Additionally, the Defendants shall pay litigation costs of
Rs.3,00,000/- as agreed today, to the Plaintiff, in the name of VST Industries
Limited, by way a demand draft within one week to be handed over to ld.
counsel for the Plaintiff. Since the parties have agreed to resolve their
disputes in Court today, full Court fee is directed to be refunded to the
Plaintiff.
14. With these observations, the present suit is decreed in the above
terms. Let the decree sheet be drawn accordingly. All pending applications
are disposed of.
PRATHIBA M. SINGH
JUDGE
APRIL 8, 2022
dj/ms
TOBACCC CAUSS PRESS BUTON 10
WITCH TASTE
PAINFUL DEATH
QUIT, TODAY CLL 1800-11-2356
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TOPAZ ERMA, LuDHIANA
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01:35:18
Signing Date:14.04.2022
By:DEVANSHU JOSHI
Digitally Signed
Signature Not Verified
TOBACCO CAUSES
PAINFUL DEATH
PRESS BUTTON 10
WTCH TASTE
QuIT TODAY CALL 1800-11-2356
TN FLAVOR
TOPAZ OANOOwet
SEERHA. LUDHIANA
TOPAZ S
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FILTER CIG, LENGTH 6SMM M.R.P, R 70/
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MADE IN INDIA PKD. 10/21
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01:35:18
Signing Date:14.04.2022
By:DEVANSHU JOSHI
Digitally Signed
Signature Not Verified
