The main legal point established in the judgment is the application of Sections 29 and 30 of the Trademarks Act, 1999 in the context of trademark infringement and parallel imports.

Vipin Sanghi, J.

1. This suit, to claim permanent injunction against infringement of trademarks & passing off, delivery up, damages etc against the defendants, claiming infringement of plaintiffs’ trademarks MARLBORO and the ROOF Device (hereinafter referred to as suit trademarks), was originally filed by Philip Morris Products S.A. (hereinafter referred to as the original plaintiff no.1) and Philip Morris Services India S.A., plaintiff no.2 herein.

2. Original Plaintiff no.1, Philip Morris Products S.A., is a company duly organised and existing under the laws of Switzerland having its principal place of business in Switzerland. Plaintiff no. 2, Philip Morris Services India S.A., is an affiliate of original plaintiff no.1, having its registered office in New Delhi.

3. The plaintiffs claim that their affiliates around the world, collectively referred to as „PMI?, constitute a leading international tobacco company, with their products being sold in approximately 160 countries and at present, producing 7 of the top 20 bestselling global cigarette brands. They have 60 cigarette plants across the world and employ around eighty thousand people. Amongst the international brands of cigarettes manufactured by PMI, the bestselling brand of cigarette is MARLBORO.

4. The Plaintiffs claim that since 1924 PMI and its predecessors have been manufacturing and selling cigarettes bearing the trademark MARLBORO. In 1955, the MARLBORO Roof Design label mark (the “Roof Device”) was adopted and thereafter, a redesigned MARLBORO brand of cigarettes bearing the Roof Device was introduced in the United States in 1955. It is claimed that since 1957, the plaintiffs have been selling cigarette packs bearing the suit trademarks internationally and have expanded at a steady rate over the years. By virtue of extensive use and publicity, the MARLBORO brand of cigarettes with the ROOF Device has acquired immense global goodwill and reputation over the past decades. Further, it is claimed that MARLBORO is the top selling cigarette brand in the world; that it was ranked No. 17 in the list of “Best Global Brands” released by Interbrand in 2009, with a brand value estimated at approximately U.S. $19 billion; and also that it was included in the top 10 brands in the report on “Most valuable Global brands, 2009” issued by BrandzTop.

5. Original plaintiff no.1 claimed to be the proprietor of the trademark MARLBORO in India in class 34 under Trademark Registration no. 390938 (Registration date: 21 October 1955), at the time of filing of the present suit. Original plaintiff no.1 also claimed that it held a number of valid & subsisting registrations for trademarks which incorporated its registered trademark MARLBORO. Following are the details thereof:

No. Trademark Reg. No. Class Reg. Date

1. MARLBORO 390938 34 24th April, 1951

2. MARLBORO 390940 34 6th October, 1956

3. MARLBORO(LABEL) 375001 34 22nd April, 1981

4. MARLBORO(LABEL) 198954 34 9th November, 1960

5. MARLBORO LIGHTS 374853 34 18th April, 1981

6. It is submitted that the above trademarks were registered in favour of affiliates such as Philip Morris Incorporated and Philip Morris Products Incorporated, which were then assigned to original plaintiff no.1.

7. It is claimed that Plaintiff no.2 had entered the Indian market in 2003. The plaintiffs, citing the sales figures of their cigarettes for the Indian market for the period of 2003-2008, claim that they had rapidly gained a share in the cigarette market of the country, selling cigarettes to the tune of 120 million cigarettes in the year 2008. Therefore, by virtue of continuous and extensive use and its association with the quality products provided by PMI, including the plaintiffs, the suit trademarks command a well known reputation and goodwill in India.

8. Plaintiffs claim that apart from statutory rights, they also have also acquired common law rights in the suit trademarks. The goodwill in these trademarks is associated exclusively with the PMI, including th