SOUMEN SEN, J. - (1.) The petitioner is one of the largest fast moving consumer goods companies in the country with its cigarette business dating back to 1910. The petitioner has acquired immense reputation in relation to its high quality cigarettes and tobacco products marketed under well-known trademarks, some of which are "FLAKE", "GOLD FLAKE", "CLASSIC", "INDIA KINGS", "INSIGNIA", "BRISTOL", "SCISSORS", "CAPSTAN", "NAVY CUT" etc. The petitioner filed the suit against the defendants, who are mostly identifiable save and except the defendant No. 13, for various wrongful dishonest acts indicated in paragraph 4 of the petition. The petitioner has disclosed the infringing marks and wrappers which are deceptively similar and/or slavish or colourable imitation of the petitioner's product; to illustrate, adoption and use of the names "FLANE" and "GOLD FLANE" and "NEXY CUT" which are identical and/or deceptively similar to the petitioner's trademarks "WILLS FLAKE", "FLAKE" and "GOLD FLAKE" and "NAVY CUT"in packaging/labels/trade dresses. Similar is the case with the other brands of which infringement has been complained.
(2.) The petitioner has stated that the petitioner adopted and started using the trademark "FLAKE" sometime in 1970s and thereafter conceived and adopted numerous variants over the years comprising the distinctive trademark "FLAKE" as the leading and identifying feature. "FLAKE" has been used in conjunction with other words and/or trademarks to create and variants inter alia, "WILLS FLAKE", "FLAKE EXCEL", "FLAKE SPECIAL FILTER", "FLAKE REFINED TASTE", "FLAKE LIBERTY", "FLAKE GOLD CREST", "FLAKE PREMIUM FILTER", "FLAKE BLUE", "FLAKE PREMIUM BLUE" etc. The petitioner states that "FLAKE" is one of the most well known and reputed brands of cigarettes manufactured and sold by the petitioner. The petitioner is a registered proprietor of "WILLS FLAKE" being trademark No. 560095. The petitioner contends that by virtue of long, continuous and extensive use, the trademark "FLAKE" has become distinctive of the petitioner's cigarettes and has come to be associated with the petitioner and none else. The petitioner has disclosed a chartered accountant's certificate certifying the total sales turn over of the petitioner's cigarette under the mark "FLAKE" for the last 26 years, to demonstrate that the mark "FLAKE" has acquired secondary meaning in connection with the business of the petitioner and is entitled to protection as a well-known trademark in accordance with Section 2(1)(zg) of the Trademarks Act. The petitioner has stated that it has adopted various trade dresses/labels/packaging in respect of cigarettes sold under the trademark "FLAKE". The petitioner has adopted a new packaging/trade dress for its "FLAKE" Special Filter variant in the year 2012 and subsequently in the year 2014 the petitioner developed another variant of "FLAKE" namely, "FLAKE" Premium. The dominant theme of such "FLAKE" trade dress is the white back ground of the pack, with the word "FLAKE" written in black within a golden coloured parallelogram with a boomerang shaped device of deep red colour and having thin black border bordering parallelogram on one side. The petitioner claims that the colour combination, get up including the distinctive boomerang device appearing on the petitioner's "FLAKE" pack are original artistic works within the meaning of the Copyright Act, 1957. The petitioner caused such artistic work to be created for the purpose of marketing and selling cigarettes under the mark "FLAKE". The petitioner has disclosed a letter from one Nidhi Harlalka to show that Nidhi is the author of the artistic work and the said original artistic work was developed on behalf of ITC Limited and author had no objection if registration is granted in favour of ITC Limited. On the basis of such communication the petitioner is using the artistic work titled "FLAKE Premium" in the manner as disclosed at page 297 of the petition. The petitioner contends that the petitioner is the exclusive owner of the copyright in the artistic work comprising the "FLAKE" labels/trade dresses including the petitioner's pack all of which are original artistic works within the meaning of Copyright Act, 1957. The trademark registration shows that the products of the petitioner have been registered in Class-34. The petitioner alleged that on or about October, 2018 the trademark attorneys of the petitioner were informed that the respondent No. 1 has applied for registration of the words "FLANE" and "GOLD FLANE" claiming use since 17th November, 2017. The said application is opposed by the petitioner. Notwithstanding such opposition, the respondent No. 1 had commenced such use of cigarette packages bearing the words "FLANE" and/or "GOLD FLANE". The petitioner has contended that recently they have received complaints from the trade channels that cigarettes were being sold under the name "FLANE" and "GOLD FLANE" bearing the packaging/label which are identical and/or deceptively similar to the get up/trade dress/label/packaging of the petitioner. The petitioner has further contended that the petitioner has different variants of "FLAKE" and "GOLD FLAKE" which may differ from variant to variant. It is alleged that the respondents have deliberately chosen to sell products which are likely to be of an inferior quality, at a lower price in order to take advantage of unwary customers.
(3.) The respondent No. 1 appears to have applied for registration of the word mark "FLANE", "GOLD FLANE" and "NEXY CUT". The said word marks were published in the trademark journal on 4th June 2018, 12th June, 2018 and 28th May, 2018 respectively. The petitioner has filed its opposition to the grant of registration of the said marks. The said respondent No. 1 has in fact also applied for registration in Class-34 and the same is pending.;