Delhi HC Issues Permanent Injunction Against Paan Shop For Counterfeiting 'Marlboro' & 'Rooftop' Trademarks

The injunction restrains the shop from using the ‘Marlboro’ brand and the ‘Rooftop’ symbol in its operations, effectively barring the sale of counterfeit products that mislead consumers into believing they are associated with Philip Morris.

The legal action was taken against Pan Shop, which deals in cigarettes and other tobacco products. Philip Morris stated that it has been using the ‘Marlboro’ trademark since 1924 and began selling Marlboro cigarettes in India in 2003.

A Bench of Justice Amit Bansal confirmed that Philip Morris is the registered owner of the trademarks ‘Marlboro’ and ‘Rooftop’. It also stated that the paan shop had been exploiting the reputation and goodwill of Philip Morris' trademarks and artistic works to deceive consumers by selling counterfeit products. The Court said, “The defendants no.1 and 2 have taken unfair advantage of the reputation and goodwill of the plaintiff’s trademarks/artistic works and have also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered marks without any plausible explanation,”

Advocate Manish Biala appeared for the Petitioner.

Upon comparing the packaging of the two parties’ products, the Court observed that the design, color scheme, and arrangement of letters, marks, and figures on the counterfeit cigarette packs were nearly identical to those used by Philip Morris.

Additionally, the Court recognized that, owing to the long and continuous use of the 'Marlboro' trademark, Philip Morris had also acquired a copyright over the labels used on its cigarette packs. The Court further noted that an interim injunction had already been granted in favor of Philip Morris in July 2023. At the time, the Court acknowledged the public health aspect of the case and appointed a local commissioner to seize the counterfeit products from the paan shop.

The shop owner did not respond to the Court's proceedings or file any defense against the allegations of trademark infringement and counterfeiting. As a result, the Court deemed the allegations to be admitted due to the shop’s failure to contest the suit. Justice Bansal concluded that the defendants had no defense to present and, therefore, permanently restrained them from selling any products bearing the ‘Marlboro’ and ‘Rooftop’ trademarks.

Cause Title: Philip Morris Brands Sarl v. M/S Rahul Pan Shop & Ors., [2024:DHC:9310]

Appearance:

Petitioner: Advocates Manish Biala and Devesh Ratan