Trademark Infringement Case Between Total vs Topaz – An Overview

Dealing with an Intellectual Property Dispute, the Delhi High Court has observed considerably that striking similarities in packing colour, style and font amount to Trademark Infringement. Scroll down to check the Trademark Infringement case between Total vs Topaz.

A Brief Facts of the Trademark Infringement Case Between Total vs Topaz

Trademark Infringement Case Between Total vs Topaz is concerned around two cigarette brand, the petitioner accusing defendant-appellant of using their Trademark TOTAL in their mark TOPAZ (also written in the similar style and font as per the petitioner). The plaintiff or petitioner alleged that the mark is dishonestly identical to the plaintiff’s mark and is created using combinations or permutations from their mark and thereof amounts to Trademark Infringement of the TOTAL brand. It also raised objection on the use of the vital features of their product’s Trade Dress or packaging, again leading to Trademark Infringement subsisting in the packaging or Trade Dress of the Trademark TOTAL of the plaintiff.

Delhi High Court, through its previous order, had barred defendants, its partners, directors, or owners, as the case may be, its offices, agents & servants from selling, advertising, manufacturing, offering for sale, indirectly/directly dealing in any business illegally using the Trademark TOTAL of the plaintiff (identical to the mark TOPAZ that is disputed).

Submissions of Plaintiff

The Bench was hearing or checking an application under Order 39 Rule 4 for setting aside the impugned injunction order against TOPAZ. In this Trademark Infringement Case Between Total vs Topaz, the plaintiff claimed to have adopted the TOTAL brand in 2015 and stated to have revealed about the defendant’s brand TOAZ only in mid-July 2021.

The plaintiff or petitioner submitted that while they had no problem with the use of the Trademark TOPAZ by the defendant, they raised objections concerning the violating packaging of the defendant’s product & how the defendants were deliberately or intentionally targeting the plaintiff’s customers. It emphasised several examples where both the parties had similar packaging:

• Similar legal warning that covers a huge area of the package;
• The basic background colour of the cigarettes box is peculiar and the unique shade of dark metallic black & blue colours is similar to that of plaintiffs;
• Similar usage of font & letters placement on the front & backside of the boxes;
• Use of blue & silver colour panel;
• Both the boxes include ribbed lines which run across their respective surfaces;
• Words mentioned as Twin Flavours and Dual Flavours;
• The golden dotted ring & circle show the brand name of both parties.

Advocate Pravin Anand, who fought the case on behalf of the plaintiff and represented them, also submitted prior to the Court that while it may be correct or true that the defendant had been using the name TOPAZ since 2011, but the packaging or Trade Dress was different then, and it has been remodelled currently, making it identical to TOTAL.

Defendant Submissions – Trademark Infringement Case Between Total vs Topaz

The defendant claimed that they have been using the TOPAZ mark since 2011, whereas the plaintiff or petitioner only adopted their mark in 2015. Senior Advocate Jayant Mehta stated that cigarette users are very exacting about the flavour, length, filter of the mark or brand they use, which is why they don’t get confused even if some brands use identical fonts, sizes, colour scheme, etc.

He submitted that some colours like red, gold, black, blue and their combinations are common to the industry, and no entity, comprising but not limited to the plaintiff/petitioner^[1], can claim monopoly over the same.

Findings

The issue or problem before the Court was whether the defendants are entitled to use the TOPAZ mark with the Trade Dress and packaging. The Court accepted that while granting ex-parte and interim injunction, the Court only expresses a prima facie; a deep and detailed investigation on merits is not done.

It noted that the product of the plaintiff has been well-established in the market since the years 2014-15. While going through different pictorial images, the Court noted that while some of the elements of the TOPAZ design is identical to TOTAL, come a percentage of the similarities are common to all cigarette brands like health warning. While comparing or including both the products side by side, the Judge did notice that some parts of the packaging were similar.

Thus, it opined that the provisional impugned order needs no interference by the Court. However, it directed the Court Commissioner to release the earlier seized cigarette sticks of the defendants, given the unpreserved nature of tobacco and allowed them to export the same outside India in fresh packaging.

Read our Article:Procedure for Drafting Notice for Trademark Infringement – An Overview