The Delhi High Court on January 31 restrained Dabur India Limited from selling its cooling oil product Cool King Thanda Tael in a trade dress found to be deceptively similar to that of Emami Limited’s well-known Navratna Ayurvedic Oil [Emami Vs Dabur India].
By a judgment delivered on January 31, Justice Tejas Karia held that Dabur’s packaging amounted to passing off and was a deliberate imitation of the distinctive trade dress associated with Emami’s Navratna oil, which has been in continuous use since 1989.
Emami approached the Court seeking an interim injunction against Dabur’s product, alleging that the trade dress of Cool King Thanda Tael copied the essential visual elements of Navratna Ayurvedic Oil.
These included the red colour scheme, transparent bottle of similar shape, flip-top cap, depiction of hibiscus flowers, ice cubes and ayurvedic herbs, as well as the overall layout and colour combination of red, white, yellow and gold.
An ex parte injunction had initially been granted in August 2023. However, a Division Bench later set it aside on the ground that Dabur had not been given an opportunity to file its reply. The matter was thereafter reheard on merits, confined to the issue of passing off.
Emami argued that Navratna oil is the market leader in the cooling oil segment with a market share of around 66% and the product’s trade dress had acquired a strong secondary meaning through over three decades of uninterrupted use, extensive advertising and substantial sales.
The company contended that Dabur’s adoption of a near-identical trade dress was dishonest and intended to ride on the goodwill associated with Navratna. It was argued that the similarities were so striking that confusion among consumers of average intelligence and imperfect recollection was inevitable.
Dabur opposed the injunction, contending that the colour red, use of cooling imagery such as ice and herbs, and descriptive words like “thanda” and “cool” were common to trade and functional in nature. It also argued that the prominent display of the “DABUR” house mark was sufficient to distinguish its product.
The company further claimed prior use of red-coloured oils through products such as Dabur Lal Tail and Dabur HimSagar, and submitted that Emami had failed to establish goodwill specifically in the claimed trade dress.
However, the Court rejected Dabur's contention,
It held that Dabur's trade dress was deceptively similar to Emami's.
"The essential features of the Plaintiff’s Trade Dress such as colour of the packaging, colour of the cap, colour of the liquid, shape of the bottle and the use of combination of red, white, yellow and gold with the essential features of ice cubes, hibiscus flowers, ayurvedic herbs are copied in the Impugned Trade Dress along with the use of the words ‘Raahat’, ‘Aaraam’ and ‘Tarotaazgi’ in the same order," the Court said.
While observing that Emami could not claim monopoly over individual elements such as the colour red or the use of herbs, the Court held that the distinctive combination, arrangement and presentation of these elements acquired secondary meaning in favour of Navratna oil and merited protection.
Hence, it concluded that Emami had prima facie established goodwill, misrepresentation and likelihood of damage and therefore, restrained Dabur from selling Cool King Thanda Tael in the trade dress deceptively similar to Emami.
Emami Limited was represented by Senior Advocate Abhimanyu Bhandari with advocates Roohe Hina Dua, Harshit Khanduja and Vinayak Thakur.
Dabur India Limited was represented by Senior Advocates Sandeep Sethi and Anirudh Bakhru and advocates Kripa Pandit, Christopher Thomas and Pranjali Arya.
[Read Judgment]