Slavish imitation of trade dress and layout constitutes passing off despite use of prominent house marks.

In brief

The question

1. Whether the Appellant’s trade dress for 'Cool King Thanda Tael' is deceptively similar to the Respondent’s 'Navratna Oil' so as to constitute passing off.

The court held

The court answered the issues in the affirmative, holding that the Appellant's trade dress was deceptively similar and likely to cause confusion.

It also directed

The High Court dismissed the appeal and upheld the Single Judge's order, confirming the interim injunction against the Appellant.

It held that the Respondent had established a prima facie case, the balance of convenience favoured the prior user, and irreparable injury would result from the dilution of its brand identity.

The court concluded that there was no perversity or arbitrariness in the Single Judge's exercise of discretion.

01Facts

The Respondent (Emami) launched "Navratna Oil," a therapeutic cooling red oil, in 1989.

p. 6

It holds various registrations for trademarks, designs, and copyrights related to its distinctive red trade dress, which features images of ice blocks, hibiscus flowers, and herbs along with the tagline "Thanda Thanda Cool Cool".

pp. 6-8

In 2023, the Appellant (Dabur) launched "Cool King Thanda Tael" with a similar red trade dress, including similar floral/ice motifs and the order of descriptive Hindi words—'Raahat', 'Aaraam', and 'Tarotaazgi'.

pp. 11-14

The Respondent filed a suit alleging passing off.

The Single Judge granted an interlocutory injunction on 31.01.2026, restraining the Appellant from using the impugned trade dress.

p. 2

The Appellant challenged this, arguing the elements were common to the trade and that its "Dabur" house mark dispelled confusion.

pp. 16-20

02Issues

i.1. Whether the Appellant’s trade dress for 'Cool King Thanda Tael' is deceptively similar to the Respondent’s 'Navratna Oil' so as to constitute passing off.

p. 12 / para 15.1

ii.2. Whether the prominent display of a well-known house mark ("Dabur") negates the likelihood of confusion arising from similar trade dress.

p. 20 / para 25

iii.3. Whether individual elements of a trade dress that are common to the trade (red colour, herbs, ice) can collectively acquire a secondary meaning deserving of protection.

p. 15 / para 15.8

03Law Applied

The court applied the "Triple Test" for passing off (Goodwill, Misrepresentation, and Damage) as established in Reckitt & Colman Products Ltd. v. Borden Inc. and upheld in S. Syed Mohindeen v. P. Sulochana Bai.

p. 49

It relied on Wander Ltd. v. Antox India P. Ltd. regarding the limited scope of appellate interference in discretionary interlocutory orders.

p. 52

The "Anti-Dissection Rule" from Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. was used to emphasize that trade dress must be viewed as a whole rather than in isolation.

p. 47

The court referred to Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra regarding the requirements for interim injunctions and the acquisition of secondary meaning for descriptive elements.

p. 50

Provisions in the judgment · 3

Designs Act, 2000 ---

Trade Marks Act, 1999 ---

04Reasoning

The court observed that while individual components like the color red or hibiscus flowers might be generic, their specific combination and arrangement on the Respondent’s packaging had acquired a secondary meaning through continuous use since 1989.

pp. 15-16, 44

Comparing the products, the court found the imitation of the Respondent's layout—including the yellow triangular "New" banner and the specific sequence of the words 'Raahat', 'Aaraam', and 'Tarotaazgi'—to be a "calculated commercial strategy" rather than a coincidence.

p. 30, 46

The court rejected the "House Mark" defense, noting that for low-cost goods with impulsive purchasing patterns, a consumer of average intelligence and imperfect recollection would likely be confused by the overall get-up regardless of the corporate brand name.

pp. 48-49

It found the Respondent's substantial sales turnover (approx. ₹4,927 Crores) sufficient prima facie evidence of goodwill.

p. 37

05Holding

The court answered the issues in the affirmative, holding that the Appellant's trade dress was deceptively similar and likely to cause confusion.

p. 45, 57

The High Court dismissed the appeal and upheld the Single Judge's order, confirming the interim injunction against the Appellant.

p. 57

It held that the Respondent had established a prima facie case, the balance of convenience favoured the prior user, and irreparable injury would result from the dilution of its brand identity.

pp. 51-52

The court concluded that there was no perversity or arbitrariness in the Single Judge's exercise of discretion.

p. 56

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