Trademark Protection Extends Beyond Names to Cumulative Trade Dress: Delhi HC

The Delhi High Court has shielded a dominant market leader from the 'slavish imitation' of its visual identity, ruling that even if individual components like colors or imagery are common to trade, their specific arrangement creates a protected 'ensemble' that rivals cannot replicate. This decision reinforces the 'trinity test' of passing off, prohibiting competitors from free-riding on established goodwill through engineered resemblance in packaging and trade dress.

In a detailed analysis of commercial aesthetics and consumer perception, Justice Tejas Karia adjudicated on an application for interim injunction involving the protection of a well-known therapeutic cooling oil's trade dress. The Court was tasked with determining whether a subsequent entrant's packaging, despite bearing a distinct house mark, constituted misrepresentation and passing off.

The Primacy of Holistic Visual Impression

The Court, in its reasoning, observed: "The passing off is based on similarities of get-up of packaging used by the defendant that amounts to misrepresentation damaging the plaintiff. The plaintiff must prove that the get-up used by the plaintiff is distinctive and the defendants get-up is similar enough to deceive, notwithstanding any other differences between the two sets of goods. The plaintiff must make out that the defendants goods are calculated to be mistaken for the plaintiffs goods, and both the goods unquestionably resemble each other and the features that resemble with each other are not common to the trade."

Applying the principles established in Heinz Italia and Anr v Dabur India Ltd. and Cadila Healthcare Limited v. Cadila Pharmaceutical Limited, the Court noted that similarities must be prioritized over dissimilarities. The Bench emphasized that the assessment must be made from the vantage point of a consumer of average intelligence and imperfect recollection, rather than through a meticulous side-by-side dissection.

Protection of the 'Ensemble' and Secondary Meaning

Addressing the defense that elements like the color red, hibiscus flowers, and menthol leaves are generic, the Court clarified that while a party cannot claim monopoly over such elements in isolation, the 'distinctive combination, arrangement, and presentation' over decades can acquire a secondary meaning. The Court relied on the logic in Procter & Gamble Manufacturing and Ors. v. Anchor Health & Beauty Care to highlight that when a defendant adopts a deceptively similar trade dress for no apparent reason, the law assumes the adoption was dishonest.

The Court has following directions:

"...the Defendant is restrained from selling the Defendants Product, i.e., Cool King Thanda Tael using the Trade Dress, or any other deceptively similar Trade Dress to the Plaintiffs Trade Dress..."

Key Takeaways:

Curbing Tactical Imitation

Competitors cannot evade liability for passing off by simply affixing their own 'House Mark' if the overall packaging ensemble remains deceptively similar to a market leader.

Secondary Meaning in Trade Dress

Common elements such as specific flowers, herbal imagery, and color palettes can gain proprietary status when combined in a unique, long-standing arrangement that consumers associate with a specific source.

Adoption of Defensive Registrations

Applying for registration of a trade dress estops a party from later arguing that those very same features are generic or common to trade, as per the doctrine in Automatic Electric Ltd. v. R.K. Dhawan.

Establishing Irreparable Goodwill

Evidence of sustained advertising expenditure and a dominant market share (e.g., 66%) provides a formidable foundation for proving goodwill in interim injunction applications.

Ratio Decidendi:

In an action for passing off, the judicial focus remains on the 'overall impression' and 'dominant similarities' of the get-up rather than a part-by-part dissection. A distinctive combination of common elements that has acquired secondary meaning through extensive and uninterrupted use constitutes a protected trade dress. The presence of a prominent house mark does not necessarily dispel the likelihood of confusion if the surrounding visual grammar is designed to mimic a competitor’s established identity.

Background:

The dispute began when the Plaintiff, a market leader in the cooling oil segment with its 'Navaratna Oil' launched in 1989, discovered that the Defendant had launched 'Cool King Thanda Tael' in 2023. The Plaintiff alleged that the Defendant’s product was a 'slavish imitation' of its red-colored packaging, transparent bottle shape, and specific iconographic placements of hibiscus flowers and ice blocks.

The Plaintiff invoked the Code of Civil Procedure, 1908 under Order XXXIX Rules 1 and 2 to seek a restraint. The Defendant argued that the color red was functional, that elements were common to trade, and that its well-known brand 'Dabur' prevented any confusion. However, the Court observed that the Defendant offered no bona fide rationale for abandoning its prior packaging styles in favor of an appearance that mirrored the Plaintiff’s. Citing Corn Products Refining Co v Shangrila Food Products Ltd and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories ( "AIR 1965 SC 980": 1964 CaseBase(SC) 45), the Court held that the Plaintiff had established a prima facie case of passing off, leading to the grant of an interim injunction.

Case Details:
Case No.: CS(COMM) 532/2023
Case Title: Emami Limited V. Dabur India Limited
Appearances:
For the Petitioner(s): Mr. Abhimanyu Bhandari, Senior Advocate with Ms. Roohe Hina Dua, Mr. Harshit Khanduja & Mr. Vinayak Thakur, Advocates.
For the Respondent(s): Mr. Sandeep Sethi & Mr. Anirudh Bakhru, Senior Advocates with Ms. Kripa Pandit, Mr. Christopher Thomas & Ms. Pranjali Arya, Advocates.

Source: 2026 CaseBase(DEL) 948