Settlement of Infringement Suit Upon Adoption of Distinctive New Product Packaging and Destruction of Impugned Containers

The Appellant, Loreal S.A., filed a suit and subsequent appeal alleging trademark/trade dress infringement against the Respondent's product packaging

During the pendency of the appeal, the Appellant noted that the Respondent had completely changed its product packaging from the impugned version to a new design

The Respondent confirmed its intention to use the new packaging exclusively and sought the release of old stock seized by the Local Commissioner

Both parties agreed that the change in circumstances rendered the cause of action and the litigation redundant

1. Whether the suit and appeal survive for adjudication in light of the Respondent adopting new, non-infringing packaging

2. Whether the goods in the impugned (old) packaging, previously seized by the Local Commissioner, can be released to the Respondent for repackaging

The court proceeded based on the principles of settlement and disposal of commercial disputes by consent, where the cessation of the cause of action allows for the summary disposal of proceedings

The court also applied the principle of mitigation of loss/remedial equity, allowing a party to reclaim seized infringing goods for the purpose of destroying the infringing trade dress while salvaging the underlying product for sale in lawful packaging

The Court observed that since the Respondent transitioned to a new packaging design, the Appellant’s original grievance regarding the trade dress no longer existed

By recording the Respondent’s undertaking to continue with the new packaging, the Court found that the "cause of action... does not survive anymore"

Regarding the seized inventory, the Court accepted the Respondent’s proposal—which was not opposed by the Appellant—to release the goods from the custody of the Appellant and various distributors

The Court reasoned that permitting the Respondent to destroy the empty, impugned packs and repackage the product for market sale was an appropriate method to resolve the property interests involved while ensuring the infringing marks were removed from circulation

It held that the Respondent is at liberty to collect the seized goods from vendors, distributors, and the Appellant to change the packaging and destroy the old, impugned packs

The Appellant was directed to release the goods in its custody within two weeks

The parties were further directed to present the High Court’s order before the concerned Commercial Court to formally record the disposal of the original suit