A tremendous increase in the sale and consumption of tobacco in the form of pan masala as an industry can be seen in recent times. A recent development in the domain of Intellectual Property Laws in the aforesaid industry was discussed by the Hon’ble Delhi High Court in the case of Dharampal Satyapal Limited and Anr v. Youssef Anis Mehio and Ors.[1] 

The Dharampal Satyapal Group, a multi-diversified conglomerate, was founded by the plaintiff in 1929. They registered the trademark “RAJNI” by 1980 and “RAJNIGANDHA” in 1983, for flavour-infused pan masalas. In the present case, the opposite party introduced flavoured pan masalas using the mark “RAJNIPAAN” as its trademark, compelling the plaintiff to file a suit for infringement against the defendant contending that the mark of the defendants are misleading and are intended to cause confusion in the minds of the general public.

The plaintiff further contended that the product of the plaintiff has created immense goodwill in the market, and is the most popular and premium flavour pan masala in the world, with such distinctict features that helps the public to associate the plaintiff with the trademark “RAJNIGANDHA”. In fact, the petitioner’s trademark had previously been recognized in the case of Dharampal Satyapal Limited v. Suneel Kumar Rajput[2] where it was held that the mark “RAJNIGANDHA” is categorized as a well-known trademark, under Section 2(1)(zb) read with Section 2(1)(zg) of the Trade Marks Act, 1999. On comparing the two, it is clear that the trade names, logos, colour schemes and packaging share a deceptive similarity which has the power to establish a false market acceptance and consequently damage the original brands goodwill and image. On that account, the court issued an ex-parte ad interim injunction in favour of the plaintiff.

Doctrine of initial interest confusion

This doctrine is predicated on attracting consumers towards the products in an effort to confuse the general public and hence creating uncertainty due to two marks being identical to each other in the same market. Once it is shown that there is an unlawful use of a trademark and due to that the goodwill of the plaintiff product is suffering, the test to satisfy the infringement has been fulfilled.

Factor test

In AMF, Inc. v. Sleekcraft Boats,[3] the United States Court of Appeals for the Ninth Circuit relied on the 8-factor test to know whether the consumer who is willing to purchase a product from a particular website, will get confused if he/she sees a similar product on a different website. These eight factors are:

  1. the strength of the mark needs to be looked upon;
  2. the similarity between the two marks;
  • evidence leading to create actual confusion;
  1. its status in the market;
  2. the degree of care which is to be exercised by the purchaser;
  3. the proximity of the mark;
  • defendant’s intention to use the mark and;
  • likelihood of expansion of the expansion.

This test was also used by the Hon’ble court to decide the present case.


The court analysed the competing marks, labels and packaging and stated that there is deceptive similarity between the two marks as the packaging of the disputed product purposely carried an identical colour scheme, labels and fonts, in order to benefit from the Plaintiffs goodwill and reputation.

The court further held that the triple identity test was satisfied, since the trademarks are nearly identical, the trade channels are indistinguishable, and the consumer base is also the same, and hence, concluded that the defendants had adopted a deceptively similar mark with malicious intentions and simply changed “GANDHA” to “PAAN” so as to exploit the goodwill and reputation of the plaintiffs products.

The Court granted an ex-parte ad interim injunction in favour of the Plaintiffs and, prohibited the Defendants or anyone connected to the Defendants, or their company from manufacturing, selling, offering for sale, or advertising any goods or services, including but not limited to pan masala products, confectionary, and other foods.


This case serves as a classic illustration of what “deceptive similarity” is and how the court assesses such instances by considering a number of factors, such as the theory of first interest confusion and 8-factor tests to evaluate trademarks of two different products. Additionally, in order to answer a trademark-related question, a court must generally consider the mark from the viewpoint of a reasonable person as well as the nature of the business, degree of likelihood, etc., and shall assess the marks in entirety.

[1] 2022 SCC OnLine Del 3307

[2] 2013 SCC OnLine Del 3473

[3] 599 F.2d 341 (9th Cir. 1979)

Author – Shyamli Shukla


Co- Author –  Arsheiya Munjal