Court’s decision
The Bombay High Court granted comprehensive interim injunctive relief restraining the Respondents from infringing registered trademarks, copyright, and trade dress associated with the Petitioner’s hair oil products. The Court restrained the Respondents from manufacturing, marketing, selling, advertising, or dealing in hair oil products bearing deceptively similar marks, logos, labels, packaging, bottles, or containers that imitate the essential and leading features of the Petitioner’s registered composite device marks.
The Court held that statutory protection flows from valid trademark registrations and subsisting copyright in original artwork. Once deceptive similarity is established, no further proof of actual confusion is required. The Court also granted leave under Clause XIV of the Letters Patent to combine causes of action for infringement and passing off, holding that artificial splitting of causes of action arising from the same transaction is undesirable. Delay was rejected as a defence, as infringement gives rise to a recurring cause of action. The balance of convenience and irreparable harm decisively favoured the Petitioner.
Facts
The Petitioner is a long-standing manufacturer and marketer of hair oil products sold under well-known composite trademarks, distinctive trade dress, and original artistic works. Over decades, the Petitioner has consistently used unique colour schemes, stylised lettering, model imagery, and bottle shapes, revising packaging only incrementally while retaining essential features. These products enjoy extensive goodwill, nationwide recognition, and substantial sales and advertising expenditure.
The Respondents were found to be manufacturing and marketing competing hair oil products under marks and packaging that closely resembled the Petitioner’s composite trademarks and trade dress. Despite earlier cease-and-desist notices and assurances of modification, the Respondents continued to place infringing products in the market, prompting the present proceedings. The Petitioner asserted infringement of registered trademarks, copyright in original artwork, and passing off due to deceptive similarity likely to mislead consumers.
Issues
The primary issues before the Court were whether the Respondents’ use of similar marks, labels, packaging, and trade dress amounted to infringement of registered trademarks and copyright, and whether such use constituted passing off. The Court also examined objections relating to territorial jurisdiction, limitation, delay, disclaimers in trademark registrations, alleged generic nature of certain words, and whether composite marks can be dissected to deny protection to their essential features.
Petitioner’s Arguments
The Petitioner contended that it is the registered proprietor of multiple composite device trademarks and the owner of copyright in original artistic works used on labels and packaging. The essential and leading features of these marks, including distinctive stylisation, colour combinations, and layout, have acquired strong source-identifying significance. The Respondents’ products, when viewed as a whole, copied these essential features, creating deceptive similarity.
It was argued that disclaimers in some registrations do not dilute statutory protection, as consumers are unaware of disclaimers and assess marks by overall impression. The Petitioner emphasised that delay is no defence to infringement, particularly where infringing activity is continuous. The balance of convenience and irreparable harm favoured protection of established goodwill against dishonest imitation.
Respondent’s Arguments
The Respondents objected to territorial jurisdiction and contended that the relief was delayed, undermining urgency. They argued that certain words used in the competing marks are descriptive, generic, and common to trade, and therefore incapable of exclusive appropriation. Reliance was placed on disclaimers in trademark registrations to argue absence of exclusivity over specific elements.
The Respondents further contended that their house mark was sufficient to distinguish their products, that the overall packaging differed in material respects, and that there was no likelihood of confusion. They also asserted prior use and honest adoption, arguing that composite marks must be dissected and common elements ignored while assessing infringement.
Analysis of the law
The Court reaffirmed that trademark infringement analysis requires a holistic comparison of marks as wholes, applying the anti-dissection rule. The test is whether the overall impression conveyed by the rival marks is deceptively similar and likely to confuse an average consumer with imperfect recollection. Minor differences do not negate infringement if essential features are appropriated.
For copyright infringement, substantial reproduction of original artistic work suffices; exact replication is unnecessary. In passing off, the classic trinity of goodwill, misrepresentation, and likelihood of damage applies. The Court emphasised that statutory registrations are prima facie evidence of validity, and until invalidated, entitle the proprietor to exclusive rights and injunctive relief.
Precedent Analysis
The Court relied on a consistent line of authority holding that marks are remembered by general impression rather than photographic detail. Precedents establish that disclaimers do not travel into the marketplace and cannot be invoked to defeat infringement where overall similarity persists. Courts must focus on common and essential features rather than minute differences, especially for fast-moving consumer goods purchased off the shelf.
The Court also reiterated that delay is not a defence in trademark infringement, that intent to deceive is not mandatory, and that likelihood of confusion suffices. Composite marks with distinctive elements are protectable as wholes, and common or descriptive words do not automatically deprive a mark of protection if distinctiveness is established through use and registration.
Court’s Reasoning
Applying these principles, the Court conducted a detailed visual comparison of the rival products. It found striking similarities in bottle shape, colour schemes, placement of elements, stylised lettering, depiction of models, and overall layout. The Respondents’ house mark appeared in relatively insignificant font, while the allegedly infringing elements were given prominence, reinforcing deceptive similarity.
The Court held that an average consumer purchasing hair oil is unlikely to engage in granular comparison and would rely on general impression. The Respondents failed to justify adoption of such closely resembling trade dress. Disclaimers did not negate infringement, and the defence of generic use failed due to lack of evidence of extensive common usage. The Petitioner established prima facie case, balance of convenience, and irreparable harm.
Conclusion
The Bombay High Court conclusively held that the Respondents’ marks and trade dress were deceptively similar to the Petitioner’s registered composite trademarks and original artwork. The Court granted interim injunction restraining infringement, copyright violation, and passing off, while permitting joinder of causes of action. The decision reinforces robust protection for established brands against imitation that exploits consumer confusion and goodwill.
Implications
This judgment strengthens trademark enforcement in India, particularly for consumer goods where trade dress and overall visual impression are critical. It clarifies that disclaimers cannot be weaponised to legitimise imitation and that composite marks enjoy protection as wholes. The ruling also underscores that courts will intervene swiftly to restrain deceptive similarity, even at the interim stage, to preserve market integrity and consumer trust.
