UPAKARMA AYURVEDA PRIVATE LIMITED vs RASAYANUM ENTERPRISES

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 21st February, 2024
Pronounced on : 22nd March, 2024

+ CS(COMM) 834/2023, I.A. 23080/2023, I.A. 24629/2023, I.A. 24630/2023 & I.A. 876/2024
UPAKARMA AYURVEDA PRIVATE LIMITED ….. Plaintiff
Through: Mr. Darpan Wadhwa, Sr. Advocate along with Mr. Hemant Daswani, Ms. Saumya Bajpai, Ms. Pranjal, Mr. Amer Vaid, Ms. Neelakshi Bhaduria, Ms. Divita Vyas and Mr. Kunal Prakash, Advocates.
versus
RASAYANUM ENTERPRISES ….. Defendant
Through: Mr. Anil Goel, Mr. Aditya Goel and Mr. Pranjal Sharma, Advocates.
CORAM:
HON’BLE MR. JUSTICE ANISH DAYAL

JUDGMENT
ANISH DAYAL, J.
I.A. 23080/2023 (under Order XXXIX Rules 1 & 2, CPC) & I.A. 876/2024 (under Order XXXIX Rule 2A, CPC) and I.A. 24629/2023 (under Order XXXIX Rule 4, CPC)
1. Present applications are a part of the suit filed by plaintiff praying for relief of permanent injunction restraining defendant from infringement and passing off of plaintiff’s trademark ‘UPAKARMA AYURVEDA PURE SHILAJIT’ bearing registration no. 4422492 dated 14th August, 2023, w.e.f. 28th January, 2020 in Class 5 – herbal medicines, supplements, cosmetics, etc. and copyright in the art work, and other attendant reliefs.
2. Grievance of plaintiff was against the use of defendant’s mark ‘RASAYANAM PURE SHILAJIT’ for an identical product.
3. By order dated 21st November, 2023 (‘injunction order’), an ex-parte ad interim injunction was granted in favour of plaintiff and against defendant, including appointment of a Local Commissioner. Relevant paragraphs of the said order are as under:
“7. A prima facie case of infringement, by the defendant, of the device mark registered in the plaintiffs favour vide Registration No. 4422492 dated 14 August 2023, w.e.f. 28 January 2020, stands made out, as the similarities between the defendant’s label and the plaintiff s registered device mark with both being on identical beige background with letters in gold, similar placement of the name of the product and the word “Shilajit” and, most prominently a similar usage of mountain peaks above the brand name, are so stark that there is every possibility of the uninitiated consumer believing, at the very least, existence of an association between the two marks. That by itself would suffice to constitute “infringement” within the meaning of Section 29(2)(b) of the Trade Marks Act.
…

13. The facts stated hereinabove disclose a prima facie case of infringement, by the defendant, of the label of the plaintiff, which stands registered in its favour as a device mark under the Trade Marks Act.
14. As the product in question is an Ayurvedic preparation and is intended for oral consumption, the standard for infringement would be correspondingly lower, applying the principles enunciated by the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, especially as both the marks are used for the same product. The Court has, therefore, to ensure that there is no possibility whatsoever of customers confusion as a result of the use, by the defendant, of a mark which is deceptively similar to the registered trade mark of the plaintiff.
15. The facts, stated hereinabove, also disclose a prima facie case of infringement and passing off in favour of the plaintiff and against the defendant. An overwhelming element of public interest being thus involved, the considerations of balance of convenience and irreparable injury would also justify grant of ex parte ad interim relief.
…

18. For the aforesaid reasons, till the next date of hearing, the defendant, as well as all others acting on its behalf, shall stand restrained from manufacturing or marketing any product using the impugned label extracted in para 2 (supra) or any other label which is deceptively similar to the device mark registered in the plaintiffs favour vide Registration No. 4422492 dated 14 August 2023, w.e.f. 28 January, 2020.”

4. Subsequently, an application under Order XXXIX Rule 4 of Code of Civil Procedure, 1908 (‘CPC’) was filed by defendant, as well as under Order XXXIX Rule 2A, CPC by plaintiff alleging violation of the injunction order by defendant.
5. Pleadings were complete and counsel for both parties placed their submissions. All three applications have been considered in a consolidated manner as under.

Submissions on behalf of plaintiff
6. Mr. Darpan Wadhwa, Senior Counsel for plaintiff inter alia made the following submissions:
6.1 Deceptive similarity: Plaintiff’s grievance was on deceptive similarity of the device mark used by defendant. In that, it led to adoption of a similar trade dress and artistic work as that of the plaintiff’s, for identical products i.e. Shilajit (a herbal medicinal product);
6.2 No issue with defendant’s word mark: Plaintiff did not object to defendant’s usage of its word mark in its own trade name/trademark ‘RASAYANAM’; the grievance raised was limited to defendant’s use of a similar trade dress;
6.3 Statutory provisions: As a foundational basis, reference was made to Section 2(m) of the Trade Marks Act, 1999 (‘TM Act’) [definition of a mark which included inter alia a device, brand, label, packaging and a combination of colours]; Section 2(q) of the TM Act [packaging including inter alia case, box, covering, wrapper, cap, and lid]; Section 2(zb) of the TM Act [definition of trademark which is a mark capable of distinguishing goods and services of one person from the other including shape of goods, packaging, and combination of colours];
6.4 Infringement: Plaintiff made a plea of infringement under Section 29(2)(b) of TM Act [similarity to plaintiff’s registered trademark and identical goods];
6.5 Passing off: A plea of passing off of plaintiff’s product as that of the defendant of their goods as that of plaintiff’s was made on the ground of the deceptively similar packaging on with respect to aspects of similarity and likelihood confusion;
6.6 Copyright infringement: The unique artwork/get-up/label having unique colour combination is stated to be an artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 (‘Copyright Act’) and thus, a plea of infringement of copyright was made under Section 51, Copyright Act;
6.7 User/Presence in the market: Plaintiff’s invoices (earliest being of 30th May, 2018 and the latest being of 29th November, 2022) filed as part of the suit were referred to prove that the product “Shilajit” was sold by plaintiff through all these years. This coincided with the plaintiff’s user claimed since 01st April, 2018;
6.8 Sales Turnover: The Chartered Accountant’s certificate certifying annual sales turnover of the product Upkarma Ayurvedva Pure Shilajit for the Financial Year 2017-18 till 2021-22 amounting to Rs. 19,53,48,344.13/- was referred to substantiate the plea of extensive use, balance of convenience, and irreversible prejudice.
7. For the purposes of the application under Order XXXIX Rule 2A, CPCs, counsel for plaintiff pointed out availability of the infringing product on a Google search inter alia on www.fetchnbuy.in and www.ebay.com.
8. During the proceedings, counsel for defendant stated that a completely different packaging has been introduced for the 10gm product and several changes have been made in their 20gm product. Pictorial representation of both is extracted as under:

9. Senior Counsel for plaintiff also pointed out to listings on various sites inter alia Amazon, JioMart, and www.rasayanam.in (defendant’s website), demonstrating availability of defendant’s products inter alia in 20 gm new packaging which, it was contended, was deceptively similar to the original packaging injuncted by this Court vide order dated 21st November, 2023.
10. Printout of a Google search for ‘upakarma shilajit’ was handed over showing that the results, pursuant to such search, elicit a sponsored link for defendant’s product, and also titles the defendant’s product as ‘UPAKARMA SHILAJIT’ ‘Rasayanam Pure Shilajit.’
11. Screenshot of such a Google search result is extracted as under:

12. To substantiate their arguments, Senior Counsel for plaintiff placed reliance on the following decisions:
12.1 Shree Nath Heritage Liquor Pvt. Ltd. v. M/s Allied Blender & Distillers Pvt. Ltd., 2015:DHC:5236-DB, wherein factors to determine likelihood of confusion in trademark infringement and passing off have been elucidated;
12.2 Metis Learning Solutions v. Flipkart India Pvt. Ltd., 2022:DHC:3092, a decision by a Single Judge of this Court held that broad and essential features are to be considered and not side by side comparison.
12.3 Manju Singal Proprietor Singla Food v. Deepak Kumar, Deepak Manocha, Sara Sales and Anr., 2023:DHC:6445, which held that overall effect of competing packaging would have to be seen and not minor/trivial variations;
12.4 Allied Blenders v. Hermes Distillery Pvt. Ltd., 2024:DHC:288, a decision by a Single Judge of this Court which traverses law relating to parameters for determining likelihood of confusion between two labels (as also applicable to trade dresses);
12.5 SSG Pharma (P) Ltd. v. Paras Pan Products Pvt. Ltd. and Anr., 2023:DHC:6430, elucidating upon substantial imitations of petitioner’s label;
12.6 Tayabbhai M. Bagasarwalla & Anr. v. Hind Rubber Industries Pvt. Ltd., (1997) 3 SCC 443, on the issue that plaintiff cannot be disentitled to interlocutory order even if question of jurisdiction has been raised.

Submissions on behalf of defendant
13. Counsel for defendant, in response, pointed out to his written statement and submitted inter alia as under:
13.1 New packaging adopted by defendant: Without prejudice to their rights and contentions, they had changed their packaging to what is represented in para 8 above. Not only was a new brown colour adopted for the packaging of the 10gm product, but the font used for ‘PURE SHILAJIT’ was changed and the illustration of mountains with a farmer had been added at the bottom;
13.2 Trademark registration in favour of defendant: During the pendency of the suit, registration for the trademark was granted on 13th January, 2020 w.e.f. 31st July, 2020 in favour of the defendant;
13.3 Trademark application precedes institution of suit: It was emphasised that said application was made prior to filing of the suit and, in fact, had been advertised on 07th August, 2023, while the suit had been filed on 08th November, 2023;
13.4 Rights conferred by registration: The trademark ‘RASAYANAM’ is now registered in favour of defendant; the basic grievance related to usage of mountain peak by defendant could not be sustained and they would have benefit of Section 28 of the TM Act giving exclusive right to the defendant; no rectification petition against the same has been filed;
13.5 Dissimilarities in packaging: The registered trademark of defendant formed 30% of the packaging and the rest of the trade dress was substantially different. Various dissimilarities between plaintiff’s packaging and defendant’s original impugned packaging are represented in the following pictures and tabulated as under:

13.6 Dissimilar brand names: It was contended that there is no phonetic similarity in the brand names of parties; same was also admitted by plaintiff themselves. This forms a distinctive difference between the two products;
13.7 No monopoly over colour: Plaintiff could not claim any monopoly in the colour combination of beige and gold since they did not have any registration for the same, as also the colour adopted by defendant for its packaging in the 20gm product was light green colour as is evident from the table above;
13.8 Ratings: Ratings on the internet for the plaintiff’s product was only ‘4’ as opposed to that of the defendant which was stated to be ‘4.2’ and it is evident that defendant has been in the market for quite some time.
13.9 Artwork common in such products: Display of mountain peaks was also evident in various other Shilajit products and more than 80% of the products were either beige, gold, or black in colour. Packaging used by other parties for this product are extracted as under:

The golden font has been extensively used to symbolise ‘Shilajit Gold’ which is the highest quality of Shilajit and is evident from packaging used by other brands; same are extracted as under:

13.10 No consistency in colour usage: Other products manufactured by plaintiff do not use mountain peaks as part of their artwork and thus, it cannot be said that the forms a part of essential features of their packaging:

In fact, the mountain peaks have been used by defendant in all its products, as is evident from the pictures below:

13.11 Promotional expenses incurred on defendant’s product were filed and cited as Rs. 2,76,84,743/-.
13.12 Reliance was placed on decisions in Modern Food Industries (India) Ltd and Another v. Sachida Anand Dass and Another, (1995) Supp 94 SCC 465, and State of Jammu And Kashmir v. Mohd Yaqoob Khan and Others, (1992) 4 SCC 167, to contend that in ex-parte ad interim injunction orders, finding of contempt was pre-mature.
13.13 In any event, there was violation of requirement of pre-litigation mediation and serving of advance notice when plaintiffs sought interlocutory interim relief from this Court.

Rejoinder arguments on behalf of plaintiff
14. Senior Counsel for plaintiff in rejoinder stated that defendant had not filed any document to support their written statement and documents were filed only along with their application; no invoices were filed and the sales turnover of the specific product was not on record.
15. Balance of convenience was, therefore, in favour of plaintiff considering that defendant introduced a new 10 gm packaging in dark brown colour; nothing prevented defendant from changing the packaging of their 20gm product, and their insistence to continue with the beige colour combination was evidence enough of dishonest adoption of plaintiff’s trade dress and to ensure deceptive similarity.
16. Pointing out to various products of defendant as extracted in para 13.10 above, it was contended that different colours have been utilised by defendant themselves for various products and there was no reason why they could not change their packaging to a different colour, in which case, plaintiff would not have any grievance since it would ensure distinctiveness and preclude deceptive similarity.
17. It was pointed out that registration of defendant’s trademark has no colour associated with it and they were capable of introducing any colour combination; but have chosen to adopt a colour combination deceptively similar to that of plaintiff in order to ride on the goodwill of the plaintiff.

Analysis
18. Heard submissions of counsel for parties and perused documents placed on record; this Court is of the opinion that interim injunction granted in favour of plaintiff need not be displaced inter alia keeping in mind the following factual matrix:
18.1 Basis of plaintiff’s claim is its registered device mark and their grievance was against defendant’s usage of the mark as part of the trade dress .
18.2 Ex-parte ad interim injunction granted on 21st November, 2023 focused on the deceptively similar beige background with letters in gold, similar placement of the name of the product and word ‘PURE SHILAJIT’ and, most prominently, a similar use/placing of mountain peaks around the brand name.
18.3 Subsequent to the injunction order, defendant adopted a different packaging for their 20gm product being , as also introduced a new packaging in 10 gm being . Same has been recorded in order of this Court dated 02nd February, 2024. While the matter was being argued in present applications, discussion arose whether defendant was planning to change the colour of the 20gm product as well to the 10gm dark brown packaging. However, counsel for defendant as well as CEO of defendant company, who appeared through video conferencing, stated that they have already made several changes to their packaging which are reflected in their reply to plaintiff’s application under Order XXXIX Rule 2A, CPC as also their written statement in the present suit. Said changes are as follows:
18.3.1 20gm packaging: Lexin Font has been used instead of erstwhile Amarnath Font for ‘PURE SHILAJIT’ in dark brown colour instead of erstwhile golden colour. Furthermore, prominent illustration of mountains with a farmer at the bottom has been used which was earlier golden border. Pictorial depiction of the same is as follows:

18.3.2 10gm packaging: Completely brown packaging. Pictorial representation of the same is as under:

18.4 Since there was insistence on changing the 20gm packaging from the colour that was used by defendant prior to the injunction being granted, more artwork of a farmer was added to the product as noted above in paragraph 18.3.1.
18.5 Yet another significant development took place during pendency of the present proceedings, in that, defendant got registration in the device mark ‘RASAYANAM’ represented as having registration no. 4591737 in class 5 on a ‘proposed to be used’ basis.
19. A few pertinent points arise from the developments as noted above:
19.1 In light of registration of defendant’s trademark/device containing mountain peak, the plaintiff, if so desired, would have to apply for rectification to displace the same. However, intention in respect of the same was not submitted by Senior Counsel for plaintiff. Therefore, use of defendant’s registered mark as noted above cannot be faulted, displaced, or injuncted.
19.2 Fonts on the trade dress having been changed from what was present in (‘old 20gm product) to that of (‘new 20gm product’) shows distinctive change providing some dissimilarity, even though the component will continue to remain as ‘PURE SHILAJIT’.
19.3 Artwork of the farmer at the bottom of the packaging in the new 20gm product introduces a distinctive new aspect which differentiates defendant’s trade dress from that of the plaintiff’s. What is left for consideration, as per the injunction order, are two issues – first the placement of the name of the product and the words ‘PURE SHILAJIT’; and second identical beige background.
20. In relation to the use of beige background, the following relevant points are culled out from the submissions of the parties:
20.1 Defendant claims that plaintiff used light beige/skin colour (Colour Code: ‘Hex FCE7CC’ ) for the background and defendant used light green colour, dark shade (Colour Code: ‘Hex F0E8B7’ ). While this may seem to be technically different from the colour palette point of view, it cannot be denied that the colour shades are similar and, on a casual glance, cause confusion.
20.2 The fact that defendant has introduced a new packaging for their 10gm product in a distinctive dark brown packaging, which plaintiff does not have any quarrel with, there is no reason why uniform beige/greenish packaging continues to be used by defendant for their 20gm product. It is the uniform beige packaging together with similar placements which seems to be effectively causing the problem and bringing it within the realm of deceptive similarity and consumers’ confusion. Introducing a different colour by defendant for their 20gm packaging or combination of colours could steer them clear of deceptive similarity.
21. Pictures other products of defendant have been placed on record and are extracted above in para 13.10. It can be clearly seen that in all these products, rather than a monochromatic background, a combination of two colours is used on labels, in fact uniformly so. Therefore, insistence on using the beige background or something similar thereto brings the defendant in close proximity with what could be deceptively similar and therefore suffer the heat of the injunction.
22. The background colour makes a difference for the purposes of a consumer who sees these products stacked up front or sideways on a super market/ shop shelf and therefore a consumer of average intelligence and imperfect or hazy recollection might be deceived into picking up one product from the other and would fall within the realm of passing off, plaintiff’s product having been adopted prior to that of the defendant.
23. Senior Counsel for plaintiff pointed out that almost all other products available in the market of different brands for Shilajit were not beige in beige colour but of various other colours, mostly black, since the product itself is a black substance, there is therefore, no commercial or market-prudent reason to adopt a specific colour which is so close to the beige background used by plaintiff.
24. On the aspect of deceptively similar packaging and the insistence on use of a particular colour, reliance is placed on the observations of this Court in Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd, 2012:DHC:3887, where it is stated as under:
“43. It is also pertinent to mention that the subject matter of the colour combination, get-up and layout are not only covered in the subject matter of copyright but also covered under the common law remedy i.e. law of passing off. Even in the New Trade Mark Act 1999 the definition of the mark is given in Section 2(m) which says that “Mark” include a device, brand, style, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. As per the definition and as per the judgments mentioned above it is clear that the colour scheme, get up, layout and combination of colours is covered under the action for passing of also.
46. The defendant’s counsel has merely tried to justify the stand of the defendant on all individual features rather overall combination of colours and layout. The defendant main stress was to challenged the rights claimed by the plaintiff. No justification was given by the defendant as how to hit upon the new packaging which his similar to the packaging of the plaintiff. It appears to the Court that in case, both packaging used by the parties are compared in meaningful manner, it can easily come to the conclusion that one is designed by placing the another. From the placing used by the defendant, it is obvious that all essential features are deceptively similar to the packaging of the plaintiff. The letters used in the packaging are in the same colour. Side penal and arrangements and placement of pictorial device of fire are almost similar. One fails to understand, when the defendant had so many packagings which were being used by the earlier in the course of its business which includes black colour packaging, why the defendant has adopted and used the packaging similar to that of the plaintiff. The said conduct of the defendant cannot be called as a bonafide as the defendant is in the same trade and the defendant must be aware about the packaging of the plaintiff at the time of its adoption.”
(emphasis added)
25. Also a recent decision of 15th January, 2024, in CS(COMM) 274/2021 titled as Allied Blenders @ Distillers Private Limited v. Hermes Distillery Private Limited, 2024:DHC:288, following observations were noted while disposing of an application under Order XXXIX Rule 1 & 2, CPC.
“37. In Parle Products v. J.P. & Co. Mysore (1972 INSC 31), the Plaintiff, Parle, used a wrapper for their ‘Gluco F Biscuit’ that featured a farmyard scene with a girl carrying a pail of water, surrounded by cows and hens against the backdrop of a farmhouse. The Defendant, on the other hand, sold ‘Glucose Biscuits’ with a wrapper showing a girl holding hay on her head and carrying a sickle and bundle of food, with cows and hens around her in front of a building. After observing that an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes, the Supreme Court held that, in an infringement action, it was enough to demonstrate ‘overall similarity’ that could mislead a person accustomed to one product to accept the other if offered. The Court found that the packets were similar in size, color scheme, and design. The essential elements of both wrappers included a girl with one arm raised, carrying something in the other, and surrounded by farm animals near a house. This similarity was deemed sufficient for a case of infringement, noting that the marks should not be compared side by side but considered based on their overall impression.
…
39. The test for comparing the above labels, as laid down in several judgments of the Supreme Court such as in Parle (supra) and S.M. Dyechem Ltd. (supra) is not one of identity but of similarity. Further, following the decision of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd (AIR 1960 SC 142), the plank of similarity is to be tested from that of a consumer with average intelligence, imperfect recollection or a hazy recollection.
41. Even the said label is not similar to that of the Plaintiff. The above two labels are distinguishable from the impugned labels, which have a combination of various features of the Plaintiff’s whisky label. If the Plaintiff’s products and the Defendant’s products are stacked together, it is possible for any consumer to presume that the Defendant’s product also emanates from the Plaintiff’s bouquet of products.
42. Confusion need not be between products but could also be one of affiliations, sponsorship or connection as well. A consumer might presume that the Defendant’s product is a differently priced product, emanating from the Plaintiff. Moreover, the Court has to put itself in a realistic position to see the manner in which bottles are stacked in bar counters. These venues are typically not brightly lit and are usually dimly lit. In such a setting, if a consumer orders the Plaintiff’s product and the bartender serves the Defendant’s product, owing to the broad similarity of the labels, the consumer may not even be able to tell that the product served is that of the Defendant’s and not of the Plaintiff’s. This likelihood of confusion is further heightened by the distance at which customers typically view bottles in a bar. This is not to say that a connoisseur of such products may not be able to discern the difference after tasting them! But the test is not of the standard of a connoisseur but that of an ordinary consumer or lay-person. Even the purchase at liquor outlets would include by consumers who could be from varying strata of society and may not be able to discern fully the distinguishing features. Confusion as to affiliation or sponsorship is a clear possibility.”
(emphasis added)
26. Furthermore, it is interesting to note how the Trade Mark Act, 1999 defines “mark” as opposed to the Trade and Merchandise Marks Act, 1958. Provisions are extracted as under:
1958 ACT
1999 ACT
Section 2(j) – “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof;
Section 2(m) – “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
A comparison of the above reveals that ‘combination of colours’, which did not exist in the definition under the former Act, finds mention in the definition under the latter Act. It perhaps encapsulates intent of the legislature to recognise the role colours/colour combinations play in trademarks regime. Subsequently, Indian Courts have gone onto deliberating upon specifics of this role in relation to trademarks, trade dresses, and infringement and passing off thereof.
27. With regard to the use of trade dress and colour combination, reference is made to the decision of a Single Judge of this Court in Colgate Palmolive Company & Anr. v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005. Plaintiff sought an ad interim injunction against use of trade dress and colour combination of 1/3rd red and 2/3rd white on the container of its product viz. tooth powder by defendant therein who had allegedly adopted a similar trade dress, particularly the colour combination of red and white. Therefore, the allegation of passing off was made. The trade names were distinctly different being ‘Colgate’ and ‘Anchor’. Part of the evidence which was placed were comparative charts of various products of plaintiff and that of defendant as well as a few others in the trade like Pepsodent and Dabur for the purposes of comparative study. It was noted that none of the other rivals of trade had adopted the same colour scheme, combination, or getup and the shape of the container. Defendant resisted the injunction on the ground that plaintiff could not monopolise the shape, packaging, or colour combination. One of defendant’s contentions in that matter was that the trade name of the product is prominently mentioned on the container and, being different, the colour combination, getup, and colour scheme have no relevance and cannot be a ground for injunction, as difference in trade name is sufficient to distinguish the goods. Plaintiff had relied upon Indian decisions in Camlin Pvt. Ltd. v. National Pencil Industries, 1989 IPLR 215 and Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi, AIR 1979 Delhi 114.
28. The Court, however, in Colgate Palmolive (supra) observed as under:
“53. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging, etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words 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 gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts 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.
…
55. May be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, getup, layout and size of container is sort of trade dress which involves overall image of the product’s features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.”
(emphasis added)
29. The Court, therefore, held that “significance of trade dress and colour combination is so immense that in some cases even single colour has to be taken to be a trademark to be protected from passing off action”. More importantly, the Court noted that a second comer in the market is expected to give its product a name and dress which is not confusing to the public and acquires a reputation on its own merit. Para 65 of the Colgate Palmolive (supra) in this regard reads as follows:
“65. Even in changing competitive commercial complexion of Indian economy, the second comer is also required by giving his product a name and dress descriptive and fanciful in its own right and selling it on its own merit not by confusing the public into mistakenly purchasing his product for his competitor’s and the second comer must create a reputation of its own and not trade on the goodwill of another product already established at considerable cost and risks.”
(emphasis added)
30. As noted above, even though there is a minor shade difference between the colours adopted by plaintiff and defendant, while there is a distinct difference between the trade names (now registered trademark) and artistic work (in the new 20gm packaging), the overall impression on seeing the products is that the background colour used by defendant in its 20gm product is deceptively similar. This is not to say that plaintiff has a monopoly over that particular colour, but it becomes an important factor since, visually, it is the first feature while seeing an identical product albeit with different trade names. The colour combination and getup is rightly part of what is known as a “trade dress” and two similar colour dresses even with some differences are bound to cause confusion.
31. This Court endorses the view taken in Colgate Palmolive (supra), in that a seller of the same product in the market is expected to ride on their own reputation and create their own distinctiveness. When the discussion is in the spectrum of deceptively similarity and confusion, the assessment leans in favour of plaintiff who was the first comer in the market. Any business person expecting to create their own uniqueness and distinctive identity ought to, as a rule, adopt a trade dress which would be uniquely identified with them and not saunter, amble, or meander in the quagmire of deceptive similarity with a former product. Conduct of the defendant, in this case, to first introduce a new packaging in a different dark brown colour for a newly minted 10gm product but reluctance to do the same for the 20gm product propels us to believe that it seems to be keen to generate a deceptive similarity or at least be adventurous about it. This potentially traps them into a vortex of passing off. The decision in Colgate Palmolive (supra) has been reliably followed and cited by this Court inter alia in Moroccan Oil Israel Limited & Anr. v. Modicare Limited, 2022:DHC:4949; Vinita Gupta v. Amit Arora, 2022:DHC:4060; and FDC Limited v. Mr Anuj Pareek & Ors., 2016:DHC:7245.

Conclusion
32. On most of the distinctions incorporated in defendant’s trade dress, the defendant has definitely steered clear of various facets for which an injunction was granted by this Court on 21st November, 2033. The only prickly residue is of the background colour. In the context of above discussion, the background colour assumes importance because of exactly the same product, the almost certain possibility of it being stacked side by side, the hazy and unwary consumer, and the otherwise almost similar getup and trade dress (even though now distinct on some accounts). The injunction, therefore, granted on 21st November, 2023 ought to subsist in favour of plaintiff, however, with the qualification that defendant’s new trade dress adopted for the 10gm product in the dark brown colour does not amount to passing off. As regards the 20gm product, despite the new getup and the protection of registration for its device mark, use of the beige background colour would still amount to passing off. It will be up to the defendant to possibly alter its packaging, keeping in mind the observations of this Court regarding the colour of the packaging, in order to finally climb out of the constraints of the injunction. However, they choose to insist on using the same trade dress; thus, regarding the 20gm product or any other packaging they wish to institute, the injunction would still subsist.
33. As regards the application under Order XXXIX Rule 2A, CPC, considering that defendant has made reasonable attempts to change their packaging, in that the new 10 gm dark brown packaging has been introduced, as well as the fairly new packaging of the 20gm product with the new artistic work, and with the now registered device mark of the defendant, it is quite clear that a new set of packaging has been introduced. The argument of violation was with relation to the old injuncted 20gm packaging on various e-commerce platforms. However, it was pointed out by counsel for defendant that they had taken off listings of the old 20gm product from all e-commerce platforms and the fact that it was from any Google search was merely because of the algorithm picking up the legacy product. Having changed their packaging completely, defendant has attempted to not violate orders of this Court and go back to the old infringing packaging.
34. Furthermore, usage of different colour combinations, as noted in paragraph 13.10 (in that, primarily two colours used for background as opposed to monochrome beige as is impugned by the plaintiff herein) for defendant’s various products under the same brand ‘RASAYANAM’ nudges this Court further to pass directions as enumerated in the conclusion hereinbelow.
35. To summarise the conclusions of this Court:
35.1 Defendant’s new 10gm packaging ‘’ is not violative of the injunction order granted by this Court on 21st November, 2023;
35.2 Defendant’s new packaging of the 20gm product which introduced important elements of differentiations continues to be deceptively similar to that of the plaintiff’s product only regarding the colour combination;
35.3 No directions are being passed in application under Order XXXIX Rule 2A, CPC giving the defendant two months’ grace period in order to adopt a new distinctive trade dress for their 20gm product in light of the observations made above. I.A. 876/2024 is disposed of in these terms.
35.4 Injunction order of 21st November, 2023 would still subsist and is made absolute till the pendency of this suit. In view thereof, I.A. 23080/2023 stands allowed and disposed of. I.A. 24629/2023 stands dismissed and disposed of in these terms.
35.5 Plaintiff would be at liberty to approach this Court in the event the new packaging of defendant’s product, if so adopted, still continues to be deceptively similar, which will invite fresh assessment from this Court.
36. Judgement be uploaded on the website of this Court.

ANISH DAYAL
JUDGE

MARCH 22, 2024/RK/sc

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