Bombay High Court: In the present case, the plaintiff-Marico Ltd. filed an interim application against Defendant 1-Zee Hygine Products (P) Ltd., seeking interim reliefs for infringement of its registered trade mark/trade dress, copyright in the artistic work, and passing off of its three products “PARACHUTE”, “PARACHUTE ADVANSED” and “PARACHUTE JASMINE/PARACHUTE ADVANSED JASMINE”. A Single Judge Bench of Sharmila U. Deshmukh, J., held that the defendant had prima facie infringed the plaintiff’s proprietary rights and thus restrained the defendants from using marks, packaging, labels, artistic works, and trade dress deceptively similar to plaintiff’s registered trade mark.
Background:
The plaintiff’s predecessor adopted the mark ‘PARACHUTE’ in 1948, which was used openly and extensively since then. The plaintiff’s edible coconut oil product was sold under the ‘PARACHUTE’ trade mark and its hair oil containing coconut oil was sold under the “PARACHUTE ADVANSED” trade mark which was adopted as formative mark since the year 2007. Further, another variant being “PARACHUTE ADVANSED GOLD” was introduced in the year 2019 with the unique distinctive artistic work retaining the essential features. The plaintiff was the registered proprietor of the device mark and it came across a trade mark application filed by the defendant for the mark “UNIQ-PURE-COCO” in the year 2010.
The trade mark application was opposed by the plaintiff and no counter statement was filed and the same was deemed to be abandoned as the plaintiff did not come across actual products of the defendant at that time and so the application did not proceed further. In 2017, the plaintiff came across another trade mark application filed by the defendant for the mark ‘COCO-PLUS’ in class 5, which was opposed by the plaintiff and in 2021, the plaintiff discovered a range of oil products being manufactured and marketed by the defendant bearing marks “COCOPLUS”, “COCO PLUS JASMINE” and “COCOPLUS AMLA”, bearing the marks/labels/packaging, and an overall trade dress that were in a blatant infringement of the plaintiff’s registered trade marks, labels, bottles, containers, and trade dress. Consequently, the plaintiff issued two cease and desist notices to the defendant which went unanswered. Ahead of filing of the suit, the plaintiff conducted search on the website of Trade Marks Registry which revealed that the defendant had fraudulently obtained registration of a device mark.
Analysis and Decision:
The Court observed that the defendant had arbitrarily adopted a colour scheme that was both unique and distinctive to the plaintiff and the contention of defendant that the same was coincidental and generic in nature was not accepted. The Court noted that the defendant had copied the plaintiff’s trade mark, labels, packaging and the over all trade dress, and even the shape of the bottles and containers which were unique to the plaintiff’s products. Thus, the Court held that the defendant’s argument regarding the use of the word ‘COCO-PLUS’ being different from the plaintiff’s brand name was immaterial, as the label mark and trade dress had clearly been copied.
Comparison of the plaintiff’s and the defendants’ products
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The Court relied on Colgate Palmolive Company v. Anchor Health and Beauty Care (P) Ltd., 2003 SCC OnLine Del 1005, wherein it was observed that if the first glance of the article without going into the minute details of the colour combination, getup or layout appearing on the container and packaging gave the impression as to deceptive or near similarities in respect of these ingredients, it was a case of confusion and amounted to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter. The Court further added that the doctrine of delay was held not to be a sufficient defence to an action for infringement, especially where the use by defendant was fraudulent, and mere failure to sue, without a positive act of encouragement, was no defence and acquiescence.
The Court opined that the defendant had deviated from its registered mark, since prima facie what was actually used by the defendant as a trade mark was not its registered device mark and it was evident from the fact that the defendant’s products were marketed under a trade mark which was different from the registered trade mark.
The Court relied on Siyaram Silk Mills Ltd. v. Shree Siyaram Fab (P) Ltd., 2012 SCC Online Bom 48, wherein it was held that the defendant who was manufacturing and marketing its product on a label different than the registered trade mark and had blatantly copied the registered trade mark of plaintiff was not entitled to seek any protection of its trade mark having been registered. The Court noted that there was no justification for marketing the products under a different trade mark which bordered close to the plaintiff’s trade mark and the position that prima facie emerged was that the defendant was not the registered proprietor of the actual trade mark which was used by him, since the proprietary right of plaintiff in the trade mark had been prima facie established from the certificate of registration.
The Court opined that in case of infringement of trade mark which was already in existence, the subsequent user had obligation to avoid unfair competition and become unjustly rich by encashing on the reputation and goodwill of the prior user.
The Court emphasised that the plaintiff had made out a prima facie case of infringement of trade mark, and the use by the defendant of the trade mark, which was so deceptively similar to that of the plaintiff’s trade mark, was likely to cause confusion in public and show association with the plaintiff’s product. The Court further opined that it was not only necessary to protect the plaintiff’s proprietary rights in the registered trade mark but also to protect the consumers. Additionally, the Court stated that in event the interim relief of infringement of trade mark and copyright was not granted, the plaintiff would suffer irreparable harm, loss and prejudice and it was open for the plaintiff to apply for interim relief in terms of passing off after leave had been obtained.
The Court granted interim relief to the plaintiff and till the pendency of the present suit, restrained the defendants from using marks, packaging, labels, artistic works, and trade dress deceptively similar to plaintiff’s registered trade mark. The Court further stayed the operation of the present order for four weeks as requested by the defendant.
[Marico Ltd. v. Zee Hygine Products (P) Ltd., 2025 SCC OnLine Bom 2541, decided on 25-6-2025]
Advocates who appeared in this case :
For the Plaintiff: Hiren Kamod i/b Nishad Nadkarni, Aasif Navodia, Khusbhoo Jhunjhunwala, Jaanvi Chopra and Rakshita Singh
For the Defendants: Harsh Desai
