The judgment establishes the prima facie application of Section 29(4) of the Trade Marks Act to prove infringement and passing off, emphasizing the importance of reputation, distinctive character, and unfair advantage in trademark disputes.

IA Nos. 2922 of 2012 (u/O XXXIX Rules 1 & 2 CPC)

1. The Plaintiff holds registration for the mark ‘Rajnigandha’, in Class 31 which relates to tobacco products. The Plaintiff’s case is that the trademark ‘Rajnigandha’ was adopted by the Plaintiff’s predecessors in the year 1983 in respect of pan masala. The Plaintiff is registered as the subsequent proprietor of this mark since 25th February 2002. The Plaintiff claims that ‘Rajnigandha’, the Plaintiff’s flagship brand, is the world’s largest selling premium flavoured pan masala and that the consumers around the world associate the mark ‘Rajnigandha’ exclusively with the Plaintiff. The export sales of the Plaintiff’s group of the companies under the trade name ‘Rajnigandha’ are set out in para 6 of the plaint. For the year 2010-11, the sales were over Rs. 2.20 crores. The Plaintiff states that it has been spending huge amounts of money in popularizing and publicizing the goods bearing its trademark ‘Rajnigandha’ by widely advertising it in newspapers, magazines, electronic media etc. The worldwide sales figures and the total marketing/communications expenditure for the cumulative businesses of the Plaintiff since 2005-06 have been set out in para 9 of the plaint. The Plaintiff states that it has applied for registration of the trade mark ‘Rajnigandha’ (device) in Class 37 for building construction, repair, installation services on 1st October 2007 and the said application is pending.

2. The Defendants admittedly applied for registration of ‘New Rajneegandha Greens’ mark under Classes 36 and 37 only on 1st March 2012, i.e. after the interim order dated 15th February 2012 and after service of summons on them on 22nd February 2012. The main business of the Defendants is real estate and building construction relatable to Class 37. A factor that is relevant to the issue at hand is that the real estate projects in which booking is offered by the Defendants are in and around the Noida area, where the Plaintiff has a principal place of business.

3. On 15th February 2012 this Court passed an interim order, the operative portion of which reads as under:

“In the meanwhile, the Defendants are restrained from using the domain names www.newrajneegandhagreens.com and www.rajneegandhagreensnoida.com. As far as the name of RAJNEEGANDHA GREENS’ is concerned, the said prayer would be considered at the time of hearing of the interim application. It is further directed that the Defendants shall maintain true accounts and the details of the booking of apartments under the name ‘NEW RAJNEEGANDHA GREENS’ and ‘RAJNEEGANDHA GREENS NOIDA’ and upon service, file the same by the next date of hearing alongwith written statement.”

4. Ms. Vaishali Mittal, learned counsel for the Plaintiff, submitted that the Defendants not only failed to fully comply with the interim injunction granted by the Court by its order dated 15th February 2012 but continued using the impugned mark extensively to promote their projects thus taking unfair advantage of the Plaintiff’s well-known mark ‘Rajnigandha’. This had caused considerable confusion in the public, diluted the reputation and goodwill enjoyed by the mark and was detrimental to the distinctive character of the Plaintiff’s mark. She accordingly urged that the Court should grant an interim injunction restraining the Defendant from infringing the mark.

5. Ms. Mittal pointed out that on clicking on the domain name www.newrajneegandhagreens.com, while a message pops up stating that the website has shut down, the viewer is directed to another website which is in fact the website of Defendant No. 2 and that on the redirected website the advertisement for booking apartments in the project ‘NEW RAJNEEGANDHA GREENS’ of Defendant No. 2 is displayed. She further states that the Defendant No. 2 has also started advertising the project under the name of ‘RAJNEEGANDHA PARK’ on its website. She points out that from the written statement it is seen that after the order date