India: Delhi High Court Dismisses Cavanders' Trademark Suit, Comments On Business Morality

Last Updated: 12 January 2018
Article by Lucy Rana and Tulip De

In a recent case dismissed by the Delhi High Court, tobacco manufacturer Godfrey Phillips' contention of passing off against defendant PTI Private Limited was termed an attempt at monopolization of the market. The age old question of passing off and usage of partial aspects of registered trademarks was raised again, where the proprietor was held to have been granted a complete mark, but not the rights to police those who used partial aspects of it.

Brief Background:

  • Plaintiff in this case is Godfrey Philips India Ltd., a flagship company of the Modi Enterprises and is one of India's largest cigarettes manufacturers, responsible for brands such as Four Square, Red & White and Cavanders – the latter of which is the brand embroiled in this matter.
  • The Defendant No.1 is P.T.I. (Private) Limited, another company which manufacture cigarettes by the name of "FUN GOLD" with the suffix "SUPER LEAF'.
  • The Plaintiff in question had filed for a permanent injunction in an attempt to restrain the Defendant and any in his employment from manufacturing and selling the aforementioned cigarettes, along with a rendition of accounts of profits that have been "illegally" earned by the Defendant by using a deceptively similar mark/label.
  • The Plaintiff claims to be the registered owner of the mark "CAVANDERS" in a green and gold packaging with the expression "GOLD LEAF", under whose name the Plaintiff conducts a sale of cigarettes. The Defendants on the other hand, sell a brand of cigarettes using the expression "FUN GOLD", using the expression "SUPER LEAF".
  • The main contention here becomes that the Defendants are passing off its goods as those of the Plaintiff on account of its usage of the green and gold color scheme for its packaging, which is a composite of the trademark registration "CAVANDERS" and its label, and thus is claimed by the Plaintiff to be a violation of their intellectual property.


Whether the combination of gold and green of the Plaintiff is distinctive enough to be identified with the Plaintiff's brand and thus make usage of the same by the Defendant an act of passing off.

Judgment and Analysis:

The basic contention on behalf of the Plaintiff is that it is the registered proprietor of the trademark in question in two forms, one of which is a wordmark – Cavanders- and the other being the labels/getup of the packaging under which the cigarettes are sold by the Plaintiff. Thus the claim is that such color scheme as has been registered as a part of the label, cannot be used by any other manufacturer of cigarettes including the Defendants who are said to be using the same color scheme. In addition to the cause of action of infringement of the said trademark, the Plaintiff contends that the Defendants are also passing off by way of their usage of the identical green and gold color scheme.

As per our records of the Registry, list of some Registrations of the Plaintiff for the mark "CAVANDERS"

(Compiled by our internal Research Team)

The Court rejected the claim for infringement of the trademark "Cavanders" as it said that the Defendant, who was conducting a trade of cigarettes under the name of "FUN GOLD" accompanied by the suffix "SUPER LEAF" was utilizing a brand/name which was neither identical nor deceptively similar to "CAVANDERS" which is the mark registered under class 34 by the Plaintiff. The Court also took into account Plaintiff's admission that the suit in question was neither for infringement of the trademark labels as a whole, nor for copying of the registered trademark labels of the Plaintiff.

Comparison: Defendant's "FUN GOLD" v Plaintiff's "CAVANDERS"

Rejecting the contention of infringement, the Court moved to deliberate upon whether the Plaintiff is entitled to claim infringement on account of usage by the Defendant of parts of its registered label. It is pertinent to reproduce the provision under Section 17 of the Trade Marks Act, 1999 which reads as under;

17. Effect of registration of parts of a mark.—

When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

  1. Contains any part—

    1. which is not the subject of a separate application by the proprietor for registration as a trade mark; or
    2. which is not separately registered by the proprietor as a trade mark; or
  2. contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

On a plain reading of the above section, the Court held that the Plaintiff could not plead infringement with respect to only parts of the registered mark. With regards to the question of passing off, the court held that the combination of gold and green must be held to be distinctive enough that it would be associated only with the trade and goods of the Plaintiff and no other. In this line of thought, the court relied upon the case of Laxmikant V. Patel v. Chetanbhai Shah & Anr. (2003) 3 SCC 65 and further on Oertli v Bowmian (1957 RPC 388) which enumerated upon the requirements to invoke the law on the aspect of distinctiveness. It further emphasized on the fact that unlike the issue of infringement of a trademark, there may be several factors that show that the responsible customer would not be deceived while purchasing goods by thinking that the Defendant's goods are those of the Plaintiff's. Thereby, relying on the aforementioned precedents, the court came to the conclusion that there was no possibility of deception to customers and thus no consequent losses that may be inflicted upon the Plaintiff as a result. Furthermore, since there was no tangential or otherwise connection that may cause the Defendant's cigarettes "FUN GOLD" to be linked with that of the Plaintiff's which is "CAVANDERS" due to a lack of similarity between the two, mere existence of similar color schemes of gold and green would not result in a passing off action.

This case has done a considerable job in enumerating gain the difference between a distinctive mark and the extent to which it can exercise its rights. As has been held in several cases before, one of the being Three-N-Products Private Limited Vs. Emami Limited A.P.O. No. 248 of 2008 in C.S. No. 204 of 2007, the registration of a mark thereof does not convey any exclusive right over the holder, as it is evident by a bare reading of Section 17(2), where the proprietorship of a composite mark does not grant the holder exclusive access over every part or any part of said mark. The judicial principle behind Section 17 allows the exclusive use of the mark as a whole and if a holder desires statutory protection over specific parts of the composite mark, they must specifically register the same while ensuring that it does not contain common terms or non-distinctive characteristics as may be rejected by the Registrar.

Interestingly enough, the matter of infringement stems from unauthorized usage of parts of a trademark that the Plaintiff claims to be a representative of their brand and thus their trade identity. While denying that business conglomerates have often been pegged to use infringement lawsuits to create monopolistic situations, as has been enumerated by the judge in our case at hand, it also begs the question; does anyone have the right to utilize aspects of a registered trademark as long as it is only a part of the proprietor's mark? In an ideal situation, a company that aims to establish itself by virtue of a distinctive brand image and packaging, needs to file for defensive filings of all forms of their mark, in addition to registering parts of their mark that might be distinctive, like in this instance, the combination of gold and green for cigarette packaging.

While the Court deliberated upon the possibility of consumer confusion/deception, it came to the conclusion that the reasonable buyer would not be swayed mere packaging color. In this context, the Court draws attention to the difference in pictorial warnings against smoking that have been printed on both boxes. However, it is possible that the court overlooked the possibility that an unwary consumer would not actually notice the grotesque health warnings – something that most cigarette purchasers try to ignore – is not possible. On the other hand, he is more likely to be swayed by the common element of "GOLD" and "LEAF" that exists in the branding of both products. As a result, while it is necessary to address the concerns of all parties especially in cases where there may be possibilities of cartelization and other detriments to market force, it is also important to extend some kind of protection to those who have put considerable effort into building a brand – only to have it picked apart and used piece by piece.

For further information please contact at S.S Rana & Co. email: or call at (+91- 11 4012 3000). Our website can be accessed at

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Lucy Rana
In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions