$~5 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of Decision: 6^th March, 2025 + C.O. (COMM.IPD-TM) 128/2021 VST INDUSTRIES LIMITED .....Petitioner Through: Mr. Hemant Daswani, Ms. Saumya Bajpai and Ms. Pranjal, Advocates Mob: 9810556744 Email:

delhi@daswanianddaswani.com versus ASD TOBACCO PRIVATE LIMITED & ANR. .....Respondents Through: Ms. Radhika Bishwajit Dubey, CGSC with Ms. Gurleen Kaur and Mr. Kritarth Upadhyay, Advocates for R-

2 M: 9810982927 Email: radhika.arora21@gmail.com CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA MINI PUSHKARNA, J (ORAL)

1. The present petition has been filed under Section 57 of the Trade Marks Act, 1999 (“Trade Marks Act”) seeking rectification of the Trade Mark Register by removal of the mark, i.e. “CHUMS” (“impugned mark”) registered in favour of respondent no. 1, bearing registration no. 3960579 in Class 34, with date of application being 30^th September, 2018, on account of being phonetically, visually and deceptively similar to the petitioner‟s mark. 2. Perusal of the order sheets clearly show that despite various efforts of service undertaken by the petitioner, no one has appeared on behalf of respondent no. 1. Accordingly, this Court has proceeded with matter.

Signature Not Verified C.O. (COMM.IPD-TM) 128/2021 Page 1 of 9 Digitally Signed

3. Factual matrix, as captured in the petition, is as follows:

3.1. The petitioner in the present case was incorporated on 10^th November, 1930 under the Hyderabad companies Act, number IV of 1320 Fasli, now governed under the Indian Companies Act, 2013 (“Companies Act”)

3.2. The petitioner is also a listed company in the Bombay Stock Exchange (“BSE”) and National Stock Exchange (“NSE”) of India and is engaged in manufacturing and distributing cigarettes under the brand names, TOTAL, CHARMS, GOLD, MOMENTS, EDITIONS etc. The petitioner is also involved in sale and export of unmanufactured tobacco and is the third largest cigarette manufacturing company in India.

3.3. The petitioner‟s endeavour to manufacture and supply high quality cigarettes at affordable cost, along with the usage of premium blend of tobacco leaves and imported ingredients, has bestowed petitioner with some prestigious awards during years 2008 to 2012.

3.4. In the year 1982, the mark “CHARMS” was coined and adopted by the petitioner in relation to cigarettes (“goods”) falling under Class 34.

3.5. The petitioner‟s mark i.e., “CHARMS” became an instant hit due to its superior quality and is very well accepted in the market, wherein, smokers have appreciated the quality products at affordable price, ultimately resulting in sale of Rs. 4,344.01 crores from financial year 2002-2003 to financial year 2018-2019.

3.6. One of the variants of goods sold by the petitioner under the mark i.e. “CHARMS” carry a unique artwork/getup/label which inter alia comprises of below mentioned intrinsic features:

(i) The division of the side and front panel carton in two distinct colours (gold and red); Signature Not Verified C.O. (COMM.IPD-TM) 128/2021 Page 2 of 9 Digitally Signed (ii) The separation of both the colours by a stylish „woosh‟;

(iii) Writing of the brand “CHARMS” in a distinctive font in gold colour wherein alphabets „C‟ and „S‟ are slightly bigger than the rest of the alphabets;

(iv) The background red colour has micro gold red checks.

3.7. The plaintiff came in the knowledge of the impugned mark in May, 2019, while browsing through the records of Registrar of Trade Marks and that the respondent no. 1 has obtained the impugned mark i.e., “CHUMS” under trademark number 3960579 claiming the user since 20^th August, 2018.

3.8. Hence, the present petition came to be filed.

4. Learned counsel appearing for the petitioner submits that the petitioner has been using its mark, i.e., “CHARMS” since the year 1982, and has gained immense goodwill, not only till date, but the goodwill of the petitioner was established even before the respondent no. 1 had launched its goods into the market.

5. He, thus, submits that the impugned