BRIEF SYNOPSIS:
The Bombay HC in the case of Marico Ltd v. Zee Hygine Products Pvt Ltd[1] granted interim injunction in favor of the Plaintiff by restraining the defendant from using packaging, labels, and containers deceptively similar to Marico’s well-known “Parachute,” “Parachute Advanced,” and “Parachute Jasmine” products. The Plaintiff is an Indian multinational Consumer goods Company providing exceptional consumer products and services across several countries for the past several decades. The Plaintiff’s coconut oil bottles has been a part of every single household since the 90s. The defendant had dishonestly adopted the arbitrary and unique trade dress and packaging of the plaintiff for the product coconut hair oil. This article delves into the contentions raised by both the parties, the decision of Hon’ble Court and an analytical view of the order.
PLAINTIFF’S ARGUMENTS:
- Plaintiff’s Business:
Plaintiff’s predecessor adopted the arbitrary mark ‘PARACHUTE’ for coconut oil in the year 1948 and it has been used openly and extensively since then. The containers of the Plaintiff have a distinctive shade of blue with a distinctive flag device, a distinctive device of drop of coconut oil along with the device of a broken coconut. The Plaintiff also had adopted various variants containing these features and the flag device contained in the Plaintiff has been registered and recognised as a well-known mark in 2024. The Plaintiff’s hair oil containing coconut oil is sold under the marks ‘PARACHUTE ADVANSED’ and ‘PARACHUTE ADVANSED GOLD’. The Plaintiff also launched another product under the brand ‘PARACHUTE JASMINE’ and ‘PARACHUTE ADVANSED JASMINE’ which are the products in contention in the present case.
- Points of Contentions
- The Plaintiff has been vigilant in protecting its exclusive right over the mark.
The Plaintiff has opposed two trade mark applications filed by the defendant in the year 2010 and 2017 respectively and the former has been abandoned and the later is pending adjudication. In February 2021, when the Plaintiff at first came across the defendant’s products in the market bearing the name COCOPLUS, COCO PLUS JASMINE, COCOPLUS AMLA, a cease desist notice was issued. Subsequently, in April, a second cease and desist notice was issued. Later in September 2024, as the Plaintiff once again came across the defendant’s products, the present suit was filed. The plaintiff also stated that their inactivity pursuant to issuance of notice was due to the persisting effects of pandemic due to which the defendant’s presence in the market could not be clearly ascertained for taking further action.
- The brand name is immaterial as the label and trade dress have been copied.
The Plaintiff alleged that the defendants have copied the arbitrary colour scheme, distinctive packaging and the trade dress including the shape of bottles of the plaintiff. It was contended that the defence under Sec 28(3) could not be taken by the defendant as the adoption of the impugned mark is contrary to Sec 11 of the Act. Further, the invoices filed by the Defendant does not show any prior use and is immaterial as the present instance is a case of misappropriation of the huge goodwill accrued in favor of the Plaintiff.
- Delay cannot be raised in infringement action:
It was submitted that the delay is no ground to be raised in a suit for infringement and also the defendant has not proved any acquiescence on the part of plaintiff.
DEFENDANT’S ARGUMENTS:
The defendant’s contentions were predominantly on the ground that the defendant has honestly adopted the mark (registered) and is using the same since 2005. The defendant claimed that the trademark and trade dress are common to trade, and the device of broken coconut is not available in every bottle hence, there can be no claim of copying. The defendant also pressed that the Plaintiff’s inaction since the year 2021 militates against the grant of interim relief.
COMPARISON OF THE PRODUCTS:
DECISION:
The court noted that the Defendant is not the registered proprietor of the actual trademark that is being used by them as the Defendant has deviated from its registered mark and instead uses as part of its mark, the device of two broken coconuts with oil oozing out which is deceptively similar to that of the Plaintiff’s trademark. The court held that the defendant’s mark resembles with the plaintiff’s as it contains the distinctive blue colour, shape of the bottle and the artistic features in the bottle. It was also stated that defendant has slavishly copied the trade dress of the plaintiff and the conduct amounts to dishonest attempt. The court rejected the defendant’s argument that the plaintiff is seeking monopoly of a descriptive product and upheld the likelihood of confusion that is to be caused during the course of trade. It added that protecting Marico’s trademarks was not only about safeguarding its commercial interest but also protecting consumers from confusion. The Court granted interim relief restraining Zee Hygiene from manufacturing, selling, marketing, advertising, or offering for sale any product using marks, labels, bottles, containers, or packaging that are deceptively similar to Marico’s registered trademarks “Parachute,” “Parachute Advanced,” and “Parachute Jasmine.
ANALYSIS:
The order of the Court sets forth the importance of granting protection to well-known trade dress notwithstanding the trademark being registered and different. It emphasizes that the visual appearance, get up, layout including the essential features present in a label/packaging are essential for brand identity and aid consumers in associating with the trade name more easily. The court also noted that the color, shape, and packaging of a product play a crucial role in consumer recall, especially in the CPG sector. Nowadays, the copying of trade dress of a brand is not just limited to small retailors or fly-by-night operators, it extends to even large manufacturers which leads to unfair competition in the market. Thus, such interim orders are major relief for the proprietors where a significant amount of business gets affected due to infiltration of the market with third-party counterfeit/deceptively similar labels. The most landmark case for Trade dress is Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd.[1] The test for determining the deceptive similarity for ascertaining trade dress has been laid down in this case. The court observed that: “Conscious imitation or substantial imitation of colour combination or get up or layout of container again bares the design of the defendant in causing confusion in the minds of customers. The court is not required to find out whether there is confusion or deceptiveness. The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.” Though, the present order is an interim order, it sets right the path of protecting brand labels and reaffirms strong enforcement against dishonest adopters. Thus, every trade dress adopted by a brand should be arbitrary, intellectually driven and contain distinguishing elements to differentiate from existing brands in the market and gain protection in the future during the course of trade.
[1] IA [L] No. 33099 of 2024 in Commercial IP Suit [L] No. 32952 of 2024
[2] 2003(27)PTC478(Del)
Authored By: Ms. S Yeseswini
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