Deceptive Imitation of Overall Trade Dress for Identical Products Constitutes Passing Off Despite Distinct House Marks

The Plaintiffs, prominent basmati rice exporters since 1974, launched 'Golden Sella Basmati Rice' in 2021 under the sub-brand 'Zarda King' using a distinct trade dress.

This packaging features a green and gold color scheme, gold lettering in Arabic-style font, imagery of hanging lanterns, a crescent moon, and a plate of pulao.

Plaintiff No. 1 is the assignee of the related device marks.

In July 2024, the Plaintiffs discovered Defendant No. 1 selling identical rice in a nearly identical packaging under the mark 'Double Chabi Zarda Special'.

An ex parte ad interim injunction was granted on August 1, 2024.

The Plaintiffs sought to confirm the injunction (I.A. 35064/2024), while Defendant No. 1 sought its vacation (I.A. 40114/2024), arguing that 'Zarda' is generic and their house mark 'Double Chabi' prevents confusion.

1. Whether the Defendant’s trade dress is deceptively similar to the Plaintiffs’ packaging, thereby constituting passing off.

2. Whether the use of a house mark (Double Chabi) and minor variations in packaging are sufficient to dispel the likelihood of confusion in FMCG products like rice.

3. Whether the word 'Zarda' is generic/common to trade such that it precludes a claim for passing off regarding the overall trade dress.

The court applied the "Classic Trinity" test for passing off (goodwill, misrepresentation, and damage) as established in Reckitt & Colman Products Ltd. v. Borden Inc. and Laxmikant V. Patel v. Chetanbhai Shah.

It relied on the "overall similarity" test from Parle Products (P) Ltd. v. J.P. and Co., holding that courts must focus on similarities rather than dissimilarities.

The "Initial Interest Confusion" doctrine from Under Armour Inc v. Anish Agarwal was applied.

Regarding color combinations, the court followed Colgate Palmolive Co. v. Anchor Health and Beauty Care, which protects original combinations that have acquired secondary meaning.

It applied the principle from Dabur India Ltd. v. Emami Ltd. that house marks do not necessarily cure confusion in low-involvement FMCG purchases.

The court found that the Defendant’s packaging was a "near replica" of the Plaintiffs', copying essential elements including the gold-on-green scheme, Arabic-style font, and specific celestial/architectural imagery.

Applying the "man of average intelligence and imperfect recollection" standard, the court reasoned that rice, as an FMCG product, is often purchased based on visual memory of the trade dress rather than textual scrutiny.

The court rejected the Defendant’s reliance on its house mark 'Double Chabi', noting that when a trade dress is substantially copied, the addition of a house mark can actually exacerbate the impression of a brand extension or association.

The Defendant’s argument that 'Zarda' is generic was set aside because the passing off claim rested on the ensemble of the trade dress, not just the word.

The court viewed the Defendant's minor variations (polka dots, matte finish) as "smart copying" intended to confuse the court rather than the consumer.

The court allowed I.A. 35064/2024 and dismissed I.A. 40114/2024, confirming the ex parte injunction till the disposal of the suit; Defendants are restrained from using the impugned packaging, but remain free to sell the product in a distinct, non-confusing trade dress.