India: Delhi High Court Dismisses Cavanders' Trademark Suit, Comments On Business Morality

Last Updated: 12 January 2018
Article by Lucy Rana and Tulip De
Most Read Contributor in India, September 2018

In a recent case dismissed by the Delhi High Court, tobacco manufacturer Godfrey Phillips' contention of passing off against defendant PTI Private Limited was termed an attempt at monopolization of the market. The age old question of passing off and usage of partial aspects of registered trademarks was raised again, where the proprietor was held to have been granted a complete mark, but not the rights to police those who used partial aspects of it.

Brief Background:

  • Plaintiff in this case is Godfrey Philips India Ltd., a flagship company of the Modi Enterprises and is one of India's largest cigarettes manufacturers, responsible for brands such as Four Square, Red & White and Cavanders – the latter of which is the brand embroiled in this matter.
  • The Defendant No.1 is P.T.I. (Private) Limited, another company which manufacture cigarettes by the name of "FUN GOLD" with the suffix "SUPER LEAF'.
  • The Plaintiff in question had filed for a permanent injunction in an attempt to restrain the Defendant and any in his employment from manufacturing and selling the aforementioned cigarettes, along with a rendition of accounts of profits that have been "illegally" earned by the Defendant by using a deceptively similar mark/label.
  • The Plaintiff claims to be the registered owner of the mark "CAVANDERS" in a green and gold packaging with the expression "GOLD LEAF", under whose name the Plaintiff conducts a sale of cigarettes. The Defendants on the other hand, sell a brand of cigarettes using the expression "FUN GOLD", using the expression "SUPER LEAF".
  • The main contention here becomes that the Defendants are passing off its goods as those of the Plaintiff on account of its usage of the green and gold color scheme for its packaging, which is a composite of the trademark registration "CAVANDERS" and its label, and thus is claimed by the Plaintiff to be a violation of their intellectual property.

Issue:

Whether the combination of gold and green of the Plaintiff is distinctive enough to be identified with the Plaintiff's brand and thus make usage of the same by the Defendant an act of passing off.

Judgment and Analysis:

The basic contention on behalf of the Plaintiff is that it is the registered proprietor of the trademark in question in two forms, one of which is a wordmark – Cavanders- and the other being the labels/getup of the packaging under which the cigarettes are sold by the Plaintiff. Thus the claim is that such color scheme as has been registered as a part of the label, cannot be used by any other manufacturer of cigarettes including the Defendants who are said to be using the same color scheme. In addition to the cause of action of infringement of the said trademark, the Plaintiff contends that the Defendants are also passing off by way of their usage of the identical green and gold color scheme.

As per our records of the Registry, list of some Registrations of the Plaintiff for the mark "CAVANDERS"


(Compiled by our internal Research Team)

The Court rejected the claim for infringement of the trademark "Cavanders" as it said that the Defendant, who was conducting a trade of cigarettes under the name of "FUN GOLD" accompanied by the suffix "SUPER LEAF" was utilizing a brand/name which was neither identical nor deceptively similar to "CAVANDERS" which is the mark registered under class 34 by the Plaintiff. The Court also took into account Plaintiff's admission that the suit in question was neither for infringement of the trademark labels as a whole, nor for copying of the registered trademark labels of the Plaintiff.

Comparison: Defendant's "FUN GOLD" v Plaintiff's "CAVANDERS"


Rejecting the contention of infringement, the Court moved to deliberate upon whether the Plaintiff is entitled to claim infringement on account of usage by the Defendant of parts of its registered label. It is pertinent to reproduce the provision under Section 17 of the Trade Marks Act, 1999 which reads as under;

17. Effect of registration of parts of a mark.—

When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

  1. Contains any part—

    1. which is not the subject of a separate application by the proprietor for registration as a trade mark; or
    2. which is not separately registered by the proprietor as a trade mark; or
  2. contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

On a plain reading of the above section, the Court held that the Plaintiff could not plead infringement with respect to only parts of the registered mark. With regards to the question of passing off, the court held that the combination of gold and green must be held to be distinctive enough that it would be associated only with the trade and goods of the Plaintiff and no other. In this line of thought, the court relied upon the case of Laxmikant V. Patel v. Chetanbhai Shah & Anr. (2003) 3 SCC 65 and further on Oertli v Bowmian (1957 RPC 388) which enumerated upon the requirements to invoke the law on the aspect of distinctiveness. It further emphasized on the fact that unlike the issue of infringement of a trademark, there may be several factors that show that the responsible customer would not be deceived while purchasing goods by thinking that the Defendant's goods are those of the Plaintiff's. Thereby, relying on the aforementioned precedents, the court came to the conclusion that there was no possibility of deception to customers and thus no consequent losses that may be inflicted upon the Plaintiff as a result. Furthermore, since there was no tangential or otherwise connection that may cause the Defendant's cigarettes "FUN GOLD" to be linked with that of the Plaintiff's which is "CAVANDERS" due to a lack of similarity between the two, mere existence of similar color schemes of gold and green would not result in a passing off action.

This case has done a considerable job in enumerating gain the difference between a distinctive mark and the extent to which it can exercise its rights. As has been held in several cases before, one of the being Three-N-Products Private Limited Vs. Emami Limited A.P.O. No. 248 of 2008 in C.S. No. 204 of 2007, the registration of a mark thereof does not convey any exclusive right over the holder, as it is evident by a bare reading of Section 17(2), where the proprietorship of a composite mark does not grant the holder exclusive access over every part or any part of said mark. The judicial principle behind Section 17 allows the exclusive use of the mark as a whole and if a holder desires statutory protection over specific parts of the composite mark, they must specifically register the same while ensuring that it does not contain common terms or non-distinctive characteristics as may be rejected by the Registrar.

Interestingly enough, the matter of infringement stems from unauthorized usage of parts of a trademark that the Plaintiff claims to be a representative of their brand and thus their trade identity. While denying that business conglomerates have often been pegged to use infringement lawsuits to create monopolistic situations, as has been enumerated by the judge in our case at hand, it also begs the question; does anyone have the right to utilize aspects of a registered trademark as long as it is only a part of the proprietor's mark? In an ideal situation, a company that aims to establish itself by virtue of a distinctive brand image and packaging, needs to file for defensive filings of all forms of their mark, in addition to registering parts of their mark that might be distinctive, like in this instance, the combination of gold and green for cigarette packaging.

While the Court deliberated upon the possibility of consumer confusion/deception, it came to the conclusion that the reasonable buyer would not be swayed mere packaging color. In this context, the Court draws attention to the difference in pictorial warnings against smoking that have been printed on both boxes. However, it is possible that the court overlooked the possibility that an unwary consumer would not actually notice the grotesque health warnings – something that most cigarette purchasers try to ignore – is not possible. On the other hand, he is more likely to be swayed by the common element of "GOLD" and "LEAF" that exists in the branding of both products. As a result, while it is necessary to address the concerns of all parties especially in cases where there may be possibilities of cartelization and other detriments to market force, it is also important to extend some kind of protection to those who have put considerable effort into building a brand – only to have it picked apart and used piece by piece.

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Lucy Rana
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions