The judgment emphasizes the importance of distinctiveness and reputation in establishing passing off, and highlights the limitations of claiming infringement based on the use of a part of a registered label.

Valmiki J. Mehta, J.

1. Plaintiff-Godfrey Phillips India Limited has filed the present suit seeking injunctions, damages, etc alleging infringement of plaintiff’s registered trademarks and passing off. The prayer clauses of the plaint read as under:-

“PRAYER

In view of the aforesaid facts and circumstances, it is humbly prayed to this Hon’ble Court that it may be pleased to pass:

a. A decree of permanent injunction, restraining the defendants, their partners, proprietors, employees, agents, distributors, stockiest, licensees and all others acting for and on his behalf, from:

i. manufacturing, marketing, supplying, distributing, selling, trading, promoting the impugned products under the mark/label FUN GOLD SUPER LEAF (Lable) deceptively similar to the Plaintiff’s registered trademarks including inter alia CAVANDERS GOLD LEAF and the distinctive white, green and gold packaging or any other mark which is identical to or deceptively similarly to the Plaintiff’s said registered marks, and/or from using in any manner, whatsoever, the Plaintiff’s said registered marks, which amounts to infringement of the Plaintiff’s exclusive rights in the said registered trademarks.

ii. manufacturing, marketing, supplying, distributing, selling, trading, promoting the impugned products or any product, under a packaging FUN GOLD SUPER LEAF (Label), which is an imitation of the Plaintiff’s artistic white, green and gold label, which amounts to infringement of the Plaintiff’s copyright.

iii. manufacturing, marketing, supplying, distributing, selling, trading, promoting the impugned products of any other product or service under the Plaintiff’s trademarks and distinctive trade dress, which is amounting to or can amount to Passing Off of the offending products as that of the Plaintiff’s.

b. A Decree of mandatory injunction be passed, thereby restraining the Defendant his partners, officers, employees, agents, distributors, stockiest, licensees and all other acting for and on his behalf, from removing, defacing, deleting, destroying or in any manner, whatsoever, disposing off or dealing with finished and unfinished impugned products under FUN GOLD SUPER LEAF (Label), raw materials, dyes, blocks, moulds, packaging material, boxes, brochures, pamphlets, promotional material, all of which bearing the impugned marks, packaging and trade dress and direct the Defendants to hand over the said products and material to the Plaintiff for appropriate disposal.

c. A decree for rendition of accounts of profit and /or damages, illegally earned by the Defendant; and /or

d. A Decree of punitive damages in favour of the Plaintiff.

e. An order for costs of the proceedings; and

f. And any other or further order, as this Hon’ble Court may deem fit in the interest of justice and in favour of the Plaintiff.”

2. The basic cause of action pleaded in the suit is that plaintiff is the registered owner of the trademarks in two forms. One registered trademark of the plaintiff is the trademark which is the word mark being “CAVANDERS”. Plaintiff sells cigarettes under the word mark “CAVANDERS”. Plaintiff also pleads a cause of action of being registered owner of the labels/getup of the packaging under which the cigarettes are sold by the plaintiff. Packaging of the plaintiff for selling cigarettes, besides containing the word mark “CAVANDERS”, also is in a scheme of colour combination of the shades of green and gold. The plaintiff claims that such colour scheme cannot be used by other manufacturers of cigarettes including the defendants who are said to be using the same colour scheme. Defendants are selling cigarettes under the word mark being “FUN GOLD” and which is used as a trademark. Whereas plaintiff along with its trademark “CAVANDERS” uses the expression “GOLD LEAF”, the defendants along with the trademark “FUN GOLD” uses the expression “SUPER LEAF”. Plaintiff pleads that in addition to the cause of action of infringement of its trademark by the defendants, the defendants are al