Trademark Case Brief – ITC V. Philip Morris

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Citation – 2010 (42) PTC 572 (Del.)

Facts: ITC is the company that owns the mark “WELCOME GROUP”. Under the same banner ITC owns 14 hotels which include ITC Maurya (Delhi), ITC sonar (Kolkata), ITC Windsor (Bengaluru) etc. ITC also claims that the same mark has been in extensive use for its series of products “Kitchens of India”, which are ready to eat.
Philip Morris is the company that owns the mark “Marlboro”, which is an established mark in the cigarette industry. In the year of 2010, Marlboro festive pack was introduced in India.
In this case, ITC alleges that Philip Morris has by launching its product, has diluted the mark owned by ITC called as the “Welcome group”. They allege that there is a high resemblance between the two logos and the well-established ITC logo is losing its distinctiveness that it has acquired over the years. They file for an injunction at the High Court of Delhi in order to stop Marlboro from trading under such a similar mark.

Issue: 
Whether the High Court of Delhi should grant such an injunction in favour of ITC based on its claim of distinctiveness for the “Welcome group” logo?

Judgment: The Court, in this case, took into the consideration arguments raised by both the Counsels for the plaintiffs and the defendants.
The gist of the plaintiff’s contention was that ITC had acquired distinctiveness over the years in the usage of the mark ‘Welcome group” as it had been in use in ITC’s hospitality services and food products.
The gist of the defendant’s contention is that the mark “Welcome group” was one of the many composite marks, which ITC owned. Further, though ITC has been involved in the manufacturing of cigarettes, it has never used this particular mark for the purposes of trade.
The Court laid down the following criterion to be satisfied for determining Dilution:
a) Impugned mark is either similar or identical to the senior mark
b) The senior mark is a well –known mark in India
c) The usage of the impugned mark in the trade is detrimental to the distinctiveness of the senior mark.
The Court then adopted a Global outlook in determining the case at hand. They said that the distinctiveness associated with a mark is based on its impression in its entirety, taking into consideration the principal constituents. They further said that the characteristic of the “Welcome group” logo might extend to the market of luxury goods, but not to the market for cigarettes.
They concluded that the Injunction could not be granted based on the above grounds and the introduction of the “Marlboro” mark will not dilute the “Welcome group” mark.

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