Delhi Commercial Court Cracks Down on Counterfeit ‘BONGCHIE’ and ‘PERFECT ROLL’ Branding

Delhi Commercial Court Cracks Down on Counterfeit ‘BONGCHIE’ and ‘PERFECT ROLL’ Branding

Introduction

The Delhi Commercial Court has permanently restrained a Faridabad-based smoking paper manufacturer from using the trademarks “BONGCHIE” and “PERFECT ROLL,” holding that recovery of counterfeit goods from his premises clearly established trademark infringement and passing off. The decision underscores the strict approach adopted by commercial courts in cases involving counterfeit goods and misuse of registered trademarks.

Factual Background

Bongchie India Private Limited, a Delhi-based company engaged in the manufacture and sale of pre-rolled cones, rolling papers and smoking accessories, is the registered proprietor of the trademarks “BONGCHIE” and “PERFECT ROLL.” The company claimed to have built substantial goodwill and market recognition through continuous use of these marks.

In December 2023, Bongchie India discovered smoking paper products in the market bearing identical marks and packaging, which it alleged were counterfeit. This led the company to initiate legal proceedings alleging trademark infringement and passing off.

Procedural Background

Bongchie India filed a commercial suit before the Commercial Court at Tis Hazari. During the proceedings, the Court appointed a local commissioner to conduct inspections at two premises in Faridabad. At the premises of Ish Nagpal, substantial quantities of smoking paper, packaging material and allied goods bearing the “BONGCHIE” and “PERFECT ROLL” marks were recovered.

Nagpal was impleaded as a defendant along with another Faridabad-based manufacturer, Chandra Kumari. The matter proceeded to final adjudication after the inspection reports were placed on record.

Issues

1. Whether the recovery of goods bearing the “BONGCHIE” and “PERFECT ROLL” marks from the defendant’s premises amounted to trademark infringement and passing off.

2. Whether the defendants had established any lawful justification for possession of the impugned goods.

3. Whether the plaintiff was entitled to permanent injunction, damages or other reliefs.

Contentions of the Parties

The plaintiff argued that it held valid trademark registrations and that the recovered goods were counterfeit products intended to ride on its goodwill. It relied on the inspection report and the absence of any supporting documents to establish unlawful possession.

Ish Nagpal contended that the goods recovered from his premises were genuine Bongchie products retained for research and development purposes. However, he failed to produce invoices, bills or any documentary proof to substantiate lawful purchase or possession.

Chandra Kumari disputed the allegations, contending that the material recovered from her premises did not resemble Bongchie’s trade dress and could not mislead consumers.

Reasoning and Analysis

The Court held that once possession of infringing material was established, the burden shifted to the defendant to explain its lawful origin. In the case of Ish Nagpal, the Court found the explanation of “research and development” to be wholly unsupported by evidence.

It was observed that the defendant had failed to place on record any invoices or documents to show that the goods were purchased from the plaintiff or its authorised sellers. In such circumstances, the Court drew an adverse inference, holding that the only reasonable conclusion was that the defendant was indulging in or intended to indulge in the sale of counterfeit goods.

The Court noted that the possession of large quantities of packaging and smoking paper bearing identical trademarks could not be explained as incidental or accidental. It concluded that the conduct clearly amounted to infringement and passing off, aimed at exploiting the plaintiff’s goodwill for commercial gain.

With respect to Chandra Kumari, however, the Court found inconsistencies in the inspection report and observed that the material recovered from her premises did not sufficiently resemble the plaintiff’s trade dress. On this basis, the Court declined to grant relief against her.

Decision

The Delhi Commercial Court permanently restrained Ish Nagpal and all persons acting on his behalf from using the trademarks “BONGCHIE” and “PERFECT ROLL” or any deceptively similar variants on smoking paper products. The suit was partly decreed in favour of Bongchie India Private Limited. However, the Court declined to award damages or order rendition of accounts, holding that the plaintiff had failed to quantify its actual loss.

In this case the plaintiff was represented by Mr. Govind Rish, Advocate. Meanwhile the defendant was represented by Mr. Kunal Khanna and Ms. Sonia Dhariwal, Advocates.