Delhi High Court
Sopariwala Exports & Ors. vs Ashraf V on 9 October, 2023
$~12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 259/2021
SOPARIWALA EXPORTS & ORS. ..... Plaintiffs
Through: Ms. Jaya Negi and Mr.
Yudhajeet Sinha, Advs.
versus
ASHRAF V ..... Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
JUDGMENT (ORAL)
% 09.10.2023
CS(COMM) 259/2021
1. Plaintiff 1, Sopariwala Exports claims to trace its routes to a
small shop set up in Bombay, which sold tobacco, in 1927. It is stated
that Plaintiff 1 has been using the trademark AFZAL for tobacco
products since 1977. On 16 August 2010, the right to use the
trademark AFZAL as well as other trademarks of Plaintiff 1 was
assigned to Plaintiff 2 for a period of ten years with effect from 15
September 2006. On 30 March 2015, the said license was extended
by a further trademark license agreement, for an indefinite term.
2. Plaintiff 1 has also granted non-exclusive licenses to Plaintiffs 3
and 4 for use of the trademark AFZAL and other associated
trademarks on 6 November 2020 and 20 March 2013, respectively.
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
3. The plaintiffs are primarily engaged in export of tobacco under
the trademark AFZAL. However, the plaint asserts that tobacco under
the trademark AFZAL is also sold in India by Plaintiff 4 Soex India
Pvt. Ltd.
4. Plaintiffs also claim to have been recognised by the
Government of India as a STAR EXPORT HOUSE. The plaint also
sets out various encomiums and awards that the plaintiffs have earned
over a period of time. It is asserted that, by dint of their experience,
reach and reputation, the plaintiffs' trademarks have become source
identifiers of the plaintiffs. The plaintiffs also operate a website
www.sopariwala.com.
5. Plaintiff 1 is the registered proprietor of the following
trademarks:
S. Trade Mark Application Class & Goods Date of
No. No. Application
1. AFZAL DE. OF 445798 34 20/11/1985
HUKKA' Tobacco
2. AFZAL (Word 463742 34 27/11/1986
Mark) Bidis, cigarettes,
Zarda, Zafrani Patti,
Match Boxes,
Quiwam, Tobacco
Products and Smokers
Articles all being
Goods.
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
3. 2310475 34 04/04/2003
Tobacco Molasses;
Tobacco Substitutes,
namely, Flavoured
Molasses; Tobacco
Substitutes, namely,
Herbal Molasses;
Molasses for use in
Smoking through
Hookah; Tobacco,
Raw or Manufactured;
Chewing Tobacco;
Qiwam, Bidies,
Cigarettes, Cigars;
Gudakhu, Gutkha,
Zarda, Khaini;
Smokers' Articles,
Match Boxes; Snuff,
Zafrani Patti.
4. AFZAL (Label) 1230032 34 02/09/2003
Tobacco, Tobacco
Products/ Tobacco
Preparations, Bidies,
Cigarettes, Gutkha,
Gudakhu, Zarda,
Hukka, Zafrani Patti,
Smokers Articles,
Match Boxes.
5. AFZAL (Label) 1530553 34 02/09/2003
Tobacco, Tobacco
Products/ Tobacco
Preparations, Bidies,
Cigarettes, Gutkha,
Gudakhu, Zarda,
Hukka, Zafrani Patti,
Smokers Articles,
Match Boxes.
6. 2310495 34 04/04/2012
Tobacco Molasses;
Tobacco Substitutes,
namely, Flavoured
Molasses; Tobacco
Substitutes, namely,
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
Herbal Molasses;
Molasses for use in
Smoking through
Hookah; Tobacco,
Raw or Manufactured;
Chewing Tobacco;
Qiwam, Bidies,
Cigarettes, Cigars;
Gudakhu, Gutkha,
Zarda, Khaini;
Smokers' Articles,
Match Boxes; Snuff,
Zafrani Patti.
7. AFZAL (Device) 2677784 34 13/02/2014
Tobacco, Raw or
Manufactured Form or
Tobacco, Chewing
Tobacco, Tobacco
Leaves; Tobacco
Products, Tobacco
Preparations, Bidies,
Cigarettes,
Pandharpuri Tobacco;
Hukka Tobacco;
Qiwam, Gudakhu,
Gutkha, Zarda,
Khaini; Snuff,
Zafrani, patti,
Smokers Articles,
Matches.
8. AFZAL (Word 3400637 34 28/10/2016
Mark) Tobacco and Tobacco
Products; Gutkha
9. AFZAL (Word 3954055 34 24/09/2018
Mark) Tobacco, raw or
manufactured form of
tobacco; chewing
tobacco, tobacco
leaves; tobacco
products; tobacco
preparations; bidies
cigarettes; molasses;
hukka tobacco; qiwam
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
gudakhu; gutkha,
zarda, khaini; snuff,
zafranin, patti,
smokers articles,
matches.
6. To vouchsafe its reach and reputation, the plaintiffs have placed
on record the earnings from sale of products bearing the AFZAL
formative trademarks. In the years 2018-19 and 2019-20, the earnings
have been to the tune of ₹ 200 crores and ₹ 164.34 crores,
respectively.
7. Plaintiff 1 is also the holder of a copyright registration dated 28
August 2018 for the following label:
8. The defendant is also manufacturing and selling tobacco and
tobacco related products from Kerala under the mark .
Though the defendant has applied for registration of the said mark, it
has not succeeded in obtaining registration till now.
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
9. The plaintiffs submit that the trade dress of the defendant is
imitative of the trade dress of the plaintiffs in which Plaintiff 1 holds
copyright registration. This is demonstrated, in para 47 of the plaint,
thus:
Plaintiff's mark Defendant's mark
10. In these circumstances, the plaint alleges that the defendant has
infringed the plaintiffs' registered trademarks as well as its copyright
registration and is also, by using a deceptively similar trademark and a
deceptively trade dress, seeking to pass off its product as the product
of the plaintiffs. Inasmuch as the product is chewing tobacco, it is
submitted that additional vigilance is required to be exercised in order
to ensure that such attempts at infringement do not go unchecked.
11. Despite issuance of summons on repeated occasions, the
defendant has not either chosen to enter appearance or to file any
written statement. The right of the defendant to file written statement
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
was struck off on 5 September 2022 and he was proceeded ex parte on
4 November 2022.
12. The fact that the defendant has not chosen to traverse the
present petition indicates that he has really nothing to afford by way of
response. The allegations in the plaint have to be treated as admitted
on the principle of non-traverse.
13. Even otherwise, at a bare glance, it is clear that the defendant is
indeed guilty both of infringement as well as passing off. The
defendant is using the mark . Seen as independent
wordmark AFSALs and AFZAL are phonetically nearly identical.
The following test, enunciated by Lord Justice Parker in In re.
Pianotist Co. Ltd1 is now treated, even in this country, as the
authoritative determining test to assess phonetic similarity between
marks:
"You must take the two words. You must judge of them, both by
their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact,
you must consider all the surrounding circumstances; and you must
further consider what is likely to happen if each of those trade
mark is used in a normal way as a trade mark for the goods of the
respective owners of the marks. If, considering all those
circumstances, you come to the conclusion that there will be a
confusion--that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but that there will be a
confusion in the mind of the public which will lead to confusion in
the goods--then you may refuse the registration, or rather you
must refuse the registration in that case."
(1906) 23 RPC 774
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
The rival marks in the present case are used for chewing tobacco.
Chewing tobacco, is a product, panders less to the cognoscenti and
more to the laity. Consumers of chewing tobacco cannot be treated as
so discerning as to note the difference between the mark of
the plaintiffs and the mark of the defendant, as to be able
to distinguish one from the other. It has to be remembered that the
aspect of confusing or deceptive similarity has to be viewed from the
perception of the consumer of average intelligence and imperfect
recollection. The very stipulation of the recollection of such a
consumer being imperfect factors into itself the absence of any over-
familiarity, by such a consumer, between the two marks. The
consumer must be one who chances across the plaintiffs' mark at one
point of time and the defendant's mark later, and not one who has an
opportunity to see the marks side by side. If such a consumer, on
seeing the defendant's mark, wonders as to whether he has seen the
mark, or an associated mark, earlier the requirement of likelihood of
confusion, for the purposes of infringement under Section 29(2)(b)2 of
the Trade Marks Act, 1999 stands satisfied.3
2 (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of -
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
Refer Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd.;(2015) 221 DLT
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
14. Equally settled is the principle enunciated by Lindley, LJ in
Slazenger & Sons v. Feltham & Co.4:
One must exercise one's common sense, and, if you are driven to
the conclusion that what is intended to be done is to deceive if
possible, I do not think it is stretching the imagination very much
to credit the man with occasional success or possible success. Why
should we be astute to say that he cannot succeed in doing that
which he is straining every nerve to do?"
When one chooses to deceive, therefore, he weaves, to borrow from
Scott, a tangled web, from which escape is, at the very least, difficult.
15. The visual similarity between the rival marks in the present
case, coupled with the phonetic similarity between "Afzal" and
"Afsals", especially when viewed from the perspective of a consumer
of chewing tobacco, clearly discloses the intent of the defendant to
adopt the mark which is, phonetically as well as visually, as alike to
the plaintiffs' mark as possible. In such a case, the Court would
legitimately presume the likelihood of confusion. A transparent
attempt of the defendant to pass off his product as that of the
plaintiffs' would also, in such cases, stand exposed.
16. Tobacco is, as it is, deleterious to health. Spurious chewing
tobacco cannot be allowed to freely circulate in the market. In my
opinion, an imitator, being one who chooses to ride, not on his own,
but on another's, reputation, may also legitimately be presumed not to
be particularly circumspect with respect to quality of his product.
4 (1889) 6 RPC 531
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
Consumption of imitation or spurious chewing tobacco can result in
serious and often irreparable adverse consequences on the health of
the consumer. In such cases, additional vigilance, on the part of the
Court, would be justified.
17. As the defendant has not chosen to enter appearance or file a
written statement, and in view of the aforesaid observations, I am of
the opinion that the suit can be decreed under Order VIII Rule 10 of
the Code of Civil Procedure, 1908 (CPC).
18. Accordingly, the suit stands decreed in the following terms:
(i) There shall be a decree of permanent injunction
restraining defendant as well as all others acting on its behalf
from using the trademark "AFSALs", either as a word mark or
in the form of device mark , or any other mark which
is deceptively similar to any of the plaintiffs' registered
trademarks.
(ii) The defendant shall also stand restrained from using the
impugned trade dress , which is deceptively similar
to the trade dress of the plaintiffs' product. The
defendant shall also be restrained from adopting any trade dress
which is deceptively similar and which would, therefore,
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
infringe the copyright held by the plaintiffs in the aforesaid
trade dress.
19. Ms. Jaya Negi, learned Counsel for the plaintiffs does not press
any of the other prayers in the suit.
20. Let a decree sheet be drawn up accordingly.
C.HARI SHANKAR, J
OCTOBER 9, 2023
ar
Signature Not Verified
Digitally Signed
By:HARIOM
Signing Date:10.10.2023
17:15:57
