Rajnigandha vs. Rajnipaan

Introduction

This theory of initial interest confusion relies on luring the buyer toward the product in an effort to cause confusion among the general population. Before the customer even buys the product, there is already uncertainty due to two marks that are identical to each other and operate in the same market. As it has been established that a trademark is being used illegally and as a result, the plaintiff’s product’s goodwill is being harmed due to the name of the product, the plaintiff has already met the legal need for proof of trademark infringement. Here, it can be seen that the competing product, RAJNIPAAN, does not live up to the standards.

Rajnigandha[Image Sources : Navodya Times]

The United States Court of Appeals for the Ninth Circuit used the 8-factor test in AMF, Inc. v. Sleekcraft Boats to determine whether a customer who is willing to buy a product from one website will become confused when they see the same product on another website because the search results are disorganized. The court used an 8-factor test in the case to resolve the issue of two confusingly identical marks.

  1. The strength of the mark needs to be looked upon
  2. The similarity between the two marks
  3. Evidence leading to create actual confusion
  4. Its status in the market
  5. The degree of care which is to be exercised by the purchaser
  6. The proximity of the mark
  7. Defendant’s intention to use the mark
  8. Likelihood of expansion of the expansion

The plaintiff in this lawsuit is a member of the 1929-founded Dharampal Satyapal Group, a multi-diversified conglomerate. The Dharampal Satyapal Group has established its brand since its inception in the industries of food and beverage, confectionery, hospitality, mouth fresheners, pan masala, tobacco, agro-forestry, rubber thread, and infrastructure, among others, with the plaintiff’s product being known by the name RAJNIGANDHA. When the product line was later broadened, the plaintiff obtained a trademark for flavoured pan masalas under the name “RAJNIGANDHA” in 1983. The plaintiff initially received a trademark for the mark “RAJNI” in the year 1980.

When competitors began to release their products under the moniker RAJNIPAAN, which also deals with flavoured pan masalas, problems began to arise. The plaintiff filed a lawsuit against the defendant after alleging that the product used and advertised by the defendant is misleadingly similar to another product. The Delhi High Court has granted an ex-parte ad interim injunction in favour of the Plaintiffs and against the Defendants in the current case, prohibiting anyone connected to the Defendant or their company from manufacturing, selling, offering for sale, or advertising any goods or services, including but not limited to pan masala products, confectionary, and other foods.

Issues:

  1. Whether all the defendants are liable for trademark infringement?
  2. Whether the defendant’s action amounts to passing off?
  3. Whether defendant’s action amounts to unfair competition against the plaintiff?
  4. Whether the practice of trade by the defendant amounts to trademark dilution against the plaintiff’s product?
  5. Whether there arises an Infringement of Copyright related to artistic work?

As in this instance, despite multiple legal notifications, the defendants failed to show up in court, and after hearing the plaintiff’s arguments, the court issued an ex-parte ad interim injunction in the plaintiff’s favour. The plaintiff claims that because of its distinctive packaging with a unique layout, getup, and colour scheme, its product has developed a reputation for being the most widely distributed premium flavoured pan masala in the world. According to general consensus, the majority of people all over the world associate the plaintiff with the trademark RAJNIGANDHA. The only modification made by the Defendant is the substitution of the word “GANDHA” for the word “PAAN,” and as a result, Plaintiff’s well-deserved reputation may be used to establish false market acceptance. In this case, the defendant cannot demonstrate that he made any additions that set his goods apart from those of the plaintiff.

The Plaintiffs have filed a Certificate of Registration in this regard that is valid and current, and the Court observed that they are the registered owners of the trademark RAJNIGANDHA. The Defendants who opted not to participate in the proceedings have not presented any proof to the contrary.

The Court further stated that after analysing the competing marks and the contested label or packaging, it is evident that there is a deceptive similarity between them because the packaging of the contested product was purposefully created with an identical colour scheme, font, and labels to give an overall look and feel of the Plaintiffs’ products under the RAJNIGANDHA marks. This was done to take advantage of the Plaintiffs’ considerable goodwill and reputation in their RAJNIGANDHA marks.

The goods are allied and cognate, the triple identity test is satisfied because the trademark is nearly identical, the trade channels are identical, and the consumer base is the same, and the court concluded that the defendants intentionally and maliciously adopted a deceptively similar mark and only changed “GANDHA” to “PAAN” in order to capitalise on the goodwill and reputation built by the plaintiffs.

Conclusion

The court assesses “deceptive likeness” by considering a number of factors, such as the law of initial interest confusion and the 8-factor criteria to evaluate trademarks awarded to two different products. This case serves as a classic illustration of what qualifies as such an occurrence. Additionally, in order to answer a trademark-related question, a court must generally consider the mark from the viewpoint of a reasonable person as well as the nature of the business, degree of likelihood, etc.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010