Court’s decision
The Bombay High Court, Nagpur Bench, upheld the trial court’s order granting a temporary injunction restraining the defendant from using a trade-dress and label deceptively similar to the plaintiff’s registered trademark “Online Bidi.” The Court held that even though the defendant alleged non-compliance with statutory packaging rules under the Cigarettes and Tobacco Products Act, 2003, such breach did not disentitle the plaintiff from claiming trademark protection.
Justice Rohit W. Joshi observed that “the end consumer of such products, often belonging to the uneducated and poor class, identifies goods by their appearance rather than name; thus, even a broad similarity in design can mislead them.” The appeal was dismissed, affirming the trial court’s injunction protecting the plaintiff’s trademark and trade-dress.
Facts
The plaintiff, a bidi manufacturer operating since 2005, owned a registered trademark “Online Bidi” (registered on 04 January 2020 in Class 34) and a copyright in its blue-themed artistic label registered in June 2024. The plaintiff claimed that the design—known in the market as “Asmani Puda”—was distinct and had earned recognition among consumers, particularly laborers and workers.
The defendant began selling bidis under the brand “ATM Bidi No.07,” adopting a blue color scheme and label similar to the plaintiff’s. The plaintiff alleged that such similarity was calculated to mislead uneducated consumers into mistaking the defendant’s goods for its own. Consequently, the plaintiff filed a suit seeking a permanent injunction and applied for temporary restraint against the defendant pending trial.
The trial court granted an injunction restraining the defendant from using the deceptively similar mark or label. Aggrieved, the defendant appealed.
Issues
- Whether the defendant’s product label and color scheme were deceptively similar to the plaintiff’s registered trademark and trade-dress.
- Whether the plaintiff’s alleged violation of packaging rules under the Cigarettes and Tobacco Products Act, 2003, disentitled it from seeking equitable relief.
- Whether the appellate court should interfere with the trial court’s discretionary order of temporary injunction.
Petitioner’s arguments
The appellant contended that the two brands were distinct, both in name and design. While the plaintiff’s trademark was “Online Bidi” written in a blue elliptical oval, the defendant’s “ATM Bidi No.07” appeared in a rectangular hyperbola with a different visual layout. The words “Special Kadak Bidi” prominently appeared on the defendant’s label, unlike the plaintiff’s.
The appellant argued that it had altered its design since July 2024 to avoid conflict, and the plaintiff’s claim of continued similarity was unfounded. It further argued that the plaintiff’s packaging violated Rule 3(e) of the Cigarettes and Tobacco Products (Packaging and Labelling) Rules, 2008, by omitting statutory health warnings on outer cartons. As such, the plaintiff’s business was not conducted in compliance with statutory law, disentitling it to discretionary equitable relief.
It was also argued that the plaintiff’s sales data did not demonstrate turnover exclusively attributable to the “Online Bidi” blue label, weakening its claim of goodwill.
Respondent’s arguments
The respondent maintained that the blue-colored conical design on both packets created unmistakable visual similarity, deliberately intended to confuse consumers. It contended that the target market comprised poor and illiterate laborers who identify bidis by color and appearance rather than brand name.
The plaintiff argued that the health warning requirement applied to retail packaging, and that the bidi bundles sold to consumers indeed displayed the mandated warning. The alleged non-compliance regarding wholesale outer cartons was immaterial, since statutory warnings were present where the product reached consumers.
Citing Wander Ltd. v. Antox India (1990 Supp SCC 727) and ITC Ltd. v. NTC Industries Ltd. (2015 SCC OnLine Bom 4976), the respondent argued that appellate interference in discretionary injunctions is narrow, and unless the trial court’s order was perverse or ignored material evidence, it should not be disturbed.
Analysis of the law
Justice Rohit Joshi reaffirmed the principles governing appellate interference in interim injunctions, as set out in Wander Ltd. — the appellate court cannot reweigh evidence or substitute its discretion for that of the trial court unless the lower court’s decision was manifestly erroneous.
The Court noted that the plaintiff’s trademark was duly registered under the Trade Marks Act, 1999, and the blue “Asmani Puda” label enjoyed copyright protection under the Copyright Act, 1957. A visual comparison of the bidi bundles revealed the same conical blue flash prominently displayed on both the plaintiff’s and defendant’s products, making them deceptively similar in the eyes of an average consumer.
The Court emphasized that “trade-dress similarity must be assessed through the eyes of the average consumer with imperfect recollection,” and broad visual resemblance is sufficient for injunctions in cases involving products sold to semi-literate or illiterate buyers.
Precedent analysis
The Court drew heavily from established precedents:
- Wander Ltd. v. Antox India Pvt. Ltd. (1990 Supp SCC 727) – Laid down that appellate courts must not substitute their discretion in injunction matters unless the order is arbitrary or unreasonable.
- ITC Ltd. v. NTC Industries Ltd. (2015 SCC OnLine Bom 4976) – Held that deceptive similarity must be judged based on visual impression and target consumer profile.
- Hiralal Industries Ltd. v. S.M. Associates (AIR 1984 Bom 218) – Stated that minor distinguishing features are irrelevant when overall similarities are likely to confuse consumers.
The Court applied these rulings to conclude that the defendant’s use of the blue conical design could mislead consumers into believing its bidis were associated with the plaintiff’s “Online Bidi.”
Court’s reasoning
The High Court observed that the trial court had correctly compared the bidi bundles—the form actually purchased by consumers—rather than the wholesale outer packet. Both bundles displayed a blue conical flash bearing the respective brand names, with statutory warnings covering most of the surface area.
The Court reasoned that the similarity was apparent despite minor design variations. The fact that the products targeted a consumer base largely from uneducated and economically weaker sections made the risk of deception greater.
On the issue of packaging non-compliance, the Court interpreted Rule 3(e) of the 2008 Rules purposively, holding that the statutory health warning requirement must be applied to packages “intended for retail sale.” Even if the outer carton lacked the warning, the bidi bundles—the retail unit—contained it, satisfying the law’s object. The alleged breach, therefore, could not defeat the plaintiff’s claim to equitable relief.
The Court also noted that the authorities under the 2003 Act had taken no action against the plaintiff, and that Section 15 of the Act itself permits rectification by adding the missing warnings without invalidating the business.
Conclusion
The Bombay High Court dismissed the appeal, upholding the injunction granted by the trial court. It held that the defendant’s trade-dress was deceptively similar to the plaintiff’s registered design and that such similarity was sufficient to cause confusion among consumers.
Justice Joshi concluded that “orders restraining acts of infringement not only protect the proprietor of the trademark but also safeguard the interests of the public.” The alleged non-compliance with packaging rules was insufficient to set aside the injunction. The plaintiff’s registered rights were reaffirmed, and the temporary injunction was allowed to continue pending final adjudication of the trademark suit.
Implications
This judgment reinforces the principle that trademark and trade-dress protection extends beyond literate or sophisticated consumers to include the average or uneducated buyer. It underscores that overall visual impression, not minute differences, determines deceptive similarity.
The decision also clarifies that minor non-compliance with packaging regulations under the Tobacco Act does not bar a party from seeking equitable protection of its registered intellectual property rights. The ruling serves as a cautionary precedent for tobacco and consumer-goods manufacturers against imitation of color schemes and trade-dress elements that could mislead vulnerable consumers.