Soumen Sen, J. - (1.) In this action for passing off, the fight is between the mark "FLAKE" and "FLANE". "FLAKE", as commonly understood and defined to mean a small, flat, very thin piece of something, is claiming a superior right over "FLANE", an archaic English word which means an 'arrow'. The arrow intends to pierce the surface of a small, flat, thin piece of a tobacco leaf which has become invincible, strong, robust and rock-solid because of its long and continuous existence since 1905 in various forms and has left an indelible mark in the tobacco industry all over the country because of its goodwill and reputation acquired over a considerable period of time.
(2.) "Flane" owes its existence on 17th November, 2017, when the respondent no. 1 was incorporated. The respondent no. 1 in its affidavit justifying adoption of its mark as referred to the Shorter Oxford Dictionary meaning of "FLANE" which means an 'arrow'. The respondent submits that the word "FLANE" has a meaning. The respondent claims it is entitled to use the said English word in relation to its product and justified use of the said mark on such basis. The defendant applied to the Registrar of Trade Mark for registration of the said mark "FLANE" on 25th April, 2018. The said application is opposed by the plaintiff by filing its opposition. In the said proceeding, the respondent has contended that mark "FLANE" is distinctive, unique and was conceptualized and invented by the defendant using its own intellect.
(3.) Sworn of details, the petitioner is one of the largest cigarette manufacturers of the country. The petitioner's cigarettes bearing the trade marks 'GOLD FLAKE' and 'FLAKE' are sold all over India. The products sold under the said trademarks have an overwhelming presence in every nook and corner of the country. As a result, it is claimed that the said trademarks and the words "GOLD", "GOLD FLAKE" and "FLAKE", amongst others, are associated solely with the petitioner and none else. By extensive and continuous use of the trade marks "GOLD FLAKE" and "FLAKE" by the petitioner over the years, the said trademarks have acquired a secondary meaning and have become well-known trademarks. Cigarettes sold under the trade mark "GOLD FLAKE" are amongst the highest selling cigarettes in the country. Cigarettes under the trade mark "GOLD FLAKE" are being sold by the petitioner all over India for over a century. The petitioner has obtained numerous registrations of numerous trade marks in which "FLAKE" is a predominant, significant and essential feature. As such, the petitioner claims to have proprietary rights over such essential feature as the same is associated solely with the petitioner and no one else.;