VST Industries Limited v. Rudra Ventures Private Limited & Ors.

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 2022:DHC:1310 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:

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, 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:

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:

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 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 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.