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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 8^th April, 2022

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CS (COMM) 369/2021

VST INDUSTRIES LIMITED

..... Plaintiff

Through:

Mr. Pravin Anand, Mr. Achuthan

Sreekumar & Mr. Rohil Bansal,

Advocates (M:9079965359)

versus

RUDRA VENTURES PRIVATE LIMITED & ORS. ..... Defendants

Through:

Mr. Sandeep Mittal, Mr. Udit Mehra,

Mr. Anupam Singh, Mr. Ajeyo

Sharma

&

Ms.

Jyotsna

Jain,

Advocates.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J.(Oral)

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/001310

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 9^th 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:

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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 10^th August, 2021, an ex-parte injunction was

granted in the following terms:

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NEUTRAL CITATION NO: 2022/DHC/001310

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 7^th 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 7^th January, 2022 is set out below:

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NEUTRAL CITATION NO: 2022/DHC/001310

available to the Court as and when directed.”

7. Thereafter, a contempt petition was filed by the Plaintiff under Order

XXXIX Rule 2A CPC, which was disposed of on 1^st April, 2022. Vide the

said order dated 1^st April, 2022, the Court observed as under:

Defendants’ product as captured in order dated 7^th

the same is acceptable to the Plaintiff.”

8. Both counsels have since sought instructions. Ld. co