Delhi HC issues permanent injunction against paan shop over Marlboro trademark violation

NEW DELHI: The Delhi High Court has issued a permanent injunction in favor of Philip Morris Brands Sarl, the Swiss subsidiary of Philip Morris, restraining an Indian paan shop from infringing its trademarks and copyrights associated with ‘Marlboro’ products and the ‘Rooftop’ symbol.

Justice Amit Bansal ruled that Philip Morris is the rightful owner of the registered trademarks and artistic works and found the paan shop guilty of unfairly leveraging the brand’s reputation to sell counterfeit products, misleading consumers in the process.“The defendants have taken unfair advantage of the reputation and goodwill of the plaintiff’s trademarks and have deceived unwary consumers by dishonestly adopting the plaintiff’s marks without plausible explanation,” stated the Court. The case was filed against M/s Rahul Pan Shop, which sells cigarettes and tobacco products. Philip Morris argued that it has owned the ‘Marlboro’ trademark since 1924 and began selling cigarettes bearing the mark in India in 2003.

Upon reviewing the packaging, the Court observed a striking similarity between the counterfeit products and genuine Marlboro packs, including identical color schemes, lettering, and design. The Court also noted that Philip Morris holds copyright over its cigarette labels due to long-term usage. An interim injunction had previously been granted in July 2023, with the Court highlighting the public health implications and appointing a commissioner to seize counterfeit products.

The paan shop owner failed to respond to the lawsuit or contest the interim order, leading the Court to deem the allegations admitted. Justice Bansal concluded, “The defendants have no defense to offer on merits,” and permanently barred them from selling products bearing the Marlboro and Rooftop trademarks.