The case of Marico Limited v. Pr. Mukesh Kumar & Ors. [CS(COMM) 1569/2016], decided by the Delhi High Court on August 27, 2018, before Justice Manmohan, is a pivotal ruling in Indian trademark and intellectual property law, addressing trademark infringement, passing off, and copyright issues related to trade dress and packaging. The plaintiff, Marico Limited, sought an interim injunction to restrain the defendants from using trade dress and labels for their EVEREST COCONUT OIL and EVEREST JASMINE HAIR OIL, which were allegedly deceptively similar to Marico's PARACHUTE and PARACHUTE ADVANSED JASMINE products. The court's decision to grant the injunction highlights the judiciary's role in protecting distinctive trade dress and preventing consumer confusion caused by deliberate imitation. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into the legal principles governing trade dress protection and the balance between fair competition and intellectual property rights.

Detailed Factual Background:
Marico Limited, a prominent company engaged in manufacturing and selling edible oils, hair oils, and personal care products, adopted the trademark PARACHUTE in 1948 and its blue label in 1974, registering the word mark on January 3, 1983, under Classes 3 and 29 (Registration Nos. 399592, 399593). In 1996-97, Marico introduced the PARACHUTE flag device, registered on March 20, 1997 (Nos. 737894, 737893), followed by the broken coconut device in 2004, registered on November 6, 2012 (Nos. 2423238, 2423236). Marico also registered the PARACHUTE ADVANSED JASMINE label in 2000 (Nos. 906080, 947770) and related devices in 2005 and 2011 (Nos. 1398440, 2195475, 2195474). Additionally, Marico secured copyright registration for the PARACHUTE label on August 19, 2003 (No. A-64997/2003). These registrations were valid and subsisting, with Marico's annual reports indicating a market share of 50% in 1992-93, 53% in 1999-2000, and 57% in 2003-04, establishing PARACHUTE as a market leader.

The defendants, operating under the EVEREST brand, claimed to have used the SHRI LAXMI BRAND label since 1999, featuring blue bottles, a green-bordered flag, and a coconut tree, and applied for its registration on June 20, 2001 (No. 1018670), claiming use since January 1, 1999. This application was later withdrawn. In 2006, the defendants adopted the EVEREST trademark, applying for registration on July 28, 2006 (No. 1474390), and secured copyright registration for the EVEREST COCONUT OIL label on June 1, 2009 (No. A-85790/2009). They also applied for the EVEREST EVERSTAR JASMINE Hair Oil label on September 16, 2013 (No. 2596694), which was abandoned in 2016. The defendants' website, www.everestcoconutoil.com, created on February 8, 2016, promoted their products.

Marico issued a cease-and-desist notice to the defendants on January 21, 2002, regarding the SHRI LAXMI label, which the defendants rejected on February 5, 2002. The defendants then filed a suit in Hyderabad (Suit No. 221 of 2002) for an injunction against Marico, which was dismissed in default. In 2013, Marico initiated unsuccessful criminal action against the EVEREST label due to the defendants' copyright registration. On June 17, 2016, Marico sent another cease-and-desist notice, followed by a request for sales details on November 11, 2016, both of which the defendants rebuffed. Marico alleged that the defendants' EVEREST products mimicked the PARACHUTE trade dress, including bottle shape, blue color (Pantone 285C), flag device, coconut tree, and broken coconut, causing consumer confusion and passing off.

Detailed Procedural Background:
Marico filed the suit [CS(COMM) 1569/2016] in the Delhi High Court on November 26, 2016, seeking a permanent injunction, rendition of accounts, and other reliefs for trademark infringement, passing off, and copyright infringement. Alongside, Marico filed I.A. No. 14758/2016 for an interim injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). With the parties' consent, the court heard and disposed of the interim application, reserving judgment on July 23, 2018. Marico submitted evidence including trademark and copyright registrations, annual reports, and comparative charts, while the defendants filed affidavits and website printouts. On August 27, 2018, Justice Manmohan delivered the judgment, granting the interim injunction and listing the suit for further proceedings. The court also noted a pending copyright cancellation proceeding initiated by Marico on October 26, 2016, before the Copyright Board.

Issues Involved in the Case:
The case raised the following issues for determination:Whether the defendants' use of the EVEREST COCONUT OIL and EVEREST JASMINE HAIR OIL trade dress and labels infringed Marico's registered PARACHUTE trademarks and copyrights?Whether the defendants' trade dress constituted passing off by causing confusion or misrepresenting a connection with Marico's PARACHUTE products? Whether the Delhi High Court had territorial jurisdiction to entertain the suit, given the defendants' operations in Telangana and alleged sales in Delhi?Whether Marico's suit was barred by delay, laches, or acquiescence due to its awareness of the defendants' SHRI LAXMI label since 2001?Whether the defendants were honest concurrent users of their trade dress, and whether Marico could claim exclusivity over the blue color or common trade elements?Whether the defendants' offer to modify their trade dress mitigated the allegations of infringement and passing off?

Plaintiff's submission:
The defendants deliberately copied the PARACHUTE trade dress, including bottle shape, blue color (Pantone 285C), flag device, coconut tree, broken coconut, and descriptive text, to confuse consumers. Marico provided a comparative chart highlighting identical features, such as bottle sizes, cap indentations, and nozzle design, asserting that the defendants replicated changes to PARACHUTE's trade dress over time. Marico claimed its registrations (e.g., Nos. 399592, 737894, 2423238) and market leadership (50-57% share) established distinctiveness, supported by annual reports and consumer recognition.

The plaintiff alleged infringement under Section 29 of the Trade Marks Act, 1999, as the defendants used identical elements of registered marks, and passing off due to consumer deception, citing Colgate Palmolive v. Anchor Health [2003 SCC OnLine Del 1005] for color as a trademark. Marico refuted acquiescence, noting its objections in 2002, 2013, and 2016, and argued that delay did not bar injunctions in trademark cases, per Midas Hygiene v. Sudhir Bhatia [2004 (28) PTC 121 (SC)]. On jurisdiction, Marico relied on sales through Big Bazar in Delhi and the defendants' online presence, supported by Banyan Tree v. Murali Krishna Reddy [2010 (42) PTC 361 (Del)].


Defendants' Submission: The defendants challenged the court's territorial jurisdiction, arguing that both parties operated in Telangana, with no evidence of EVEREST products sold in Delhi. They disputed Marico's claim of sales through Big Bazar and denied authorizing the IndiaMart website, asserting no cause of action arose in Delhi under Section 20(c) of the CPC. The defendants claimed honest concurrent use of the SHRI LAXMI label since 1999 and EVEREST since 2006, arguing that Marico's delay since 2001 constituted acquiescence, per Hindustan Pencils v. India Stationery [1989 SCC OnLine Del 34]. They contended that Marico's registrations were for entire labels, not individual elements, citing Godfrey Phillips v. P.T.I [2018 SCC OnLine Del 8278] and Section 17 of the Trade Marks Act, 1999. The defendants argued that blue color was common to the trade, supported by Marico v. Sarfraj Trading [2002 (25) PTC 348 (Bom)] and Britannia v. ITC [240 (2017) DLT 156], and that Marico failed to act against other infringers. They offered to modify their trade dress to settle the dispute, claiming good faith.

Detailed Discussion on Judgments and Citations:
The court analyzed several precedents to determine infringement, passing off, jurisdiction, and acquiescence. Below is a detailed discussion of each judgment, its citation, and its context: Baker v. Master Printers Union of New Jersey, 47 USPQ 69 (D.N.J. 1940) Cited in the court's introduction, this U.S. case highlighted the strategy of copying with enough similarity to confuse consumers but enough differences to evade legal scrutiny. The court used it to frame the defendants' imitation of PARACHUTE's trade dress as deliberate.

• National Bell v. Metal Goods, AIR 1971 SC 898: Cited by the court, this Supreme Court decision held that a trademark proprietor need not sue insignificant infringers who do not harm distinctiveness. The court applied it to dismiss the defendants' argument that Marico's inaction against other blue bottle users undermined its claim.
• Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., 1989 (7) PTC 14: Cited by the court, this Calcutta High Court ruling clarified that common use requires substantial evidence of third-party trade. The court used it to reject the defendants' claim of blue color being common, as no third-party sales figures were provided.
• Dr. Reddy Laboratories v. Reddy Pharmaceuticals, 2004 (29) PTC 435 (Del): Cited by the court, this Delhi High Court decision held that trademark owners need not pursue trivial infringers unless they harm business interests. The court applied it to support Marico's selective enforcement against significant threats like the defendants.
• Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005: Cited by the plaintiff, this Delhi High Court ruling recognized that color in trade dress can be a protectable trademark in passing off actions. The court used it to affirm that Marico's blue color, combined with other elements, was distinctive and protectable.
• Annamalayar Agencies v. VVS & Sons Pvt. Ltd., 2008 (38) PTC 37 (Mad): Cited by the court, this Madras High Court decision held that a blue bottle was a source identifier for PARACHUTE, and disparaging it was actionable. The court relied on it to establish the blue bottle's distinctiveness for Marico.
• Marico Industries Ltd. v. Sarfraj Trading Co., 2002 (25) PTC 348 (Bom): Cited by the defendants, this Bombay High Court ruling held that no monopoly exists over blue bottles or coconut trees. The court distinguished it, noting Marico claimed a combination of elements, not standalone features.
• Britannia Industries Ltd. v. ITC Limited, 240 (2017) DLT 156: Cited by the defendants, this Delhi High Court Division Bench decision required proof of distinctiveness for color combinations. The court found it inapplicable, as Marico's trade dress was distinctive due to market share and long use.
• Godfrey Phillips India Limited v. P.T.I Private Limited, 2018 SCC OnLine Del 8278: Cited by the defendants, this Delhi High Court ruling limited infringement claims to entire registered labels under Section 17. The court distinguished it, as Marico's individual elements were independently registered.
• Hindustan Pencils Pvt. Ltd. v. India Stationery Product Co., 1989 SCC OnLine Del 34: Cited by the defendants, this Delhi High Court decision defined acquiescence as active encouragement, not mere inaction. The court applied it to reject the defendants' acquiescence defense, as Marico consistently objected.
• Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 2004 (28) PTC 121 (SC): Cited by the plaintiff, this Supreme Court decision held that delay does not bar injunctions in trademark and copyright cases. The court used it to dismiss the defendants' laches defense, given the public interest in preventing deception.
• Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2010 (42) PTC 361 (Del): Cited by the plaintiff, this Delhi High Court decision established jurisdiction for online sales through interactive websites. The court applied its "purposeful availment" and "effects" tests to confirm jurisdiction based on the defendants' online presence.
• Saleem Bhai v. State of Maharashtra, AIR 2003 SC 759: Cited by the court, this Supreme Court decision held that plaint averments are presumed true at the interim stage. The court used it to accept Marico's claim of Big Bazar sales in Delhi.
• Kamala v. K.T. Eshwara SA, (2008) 12 SCC 661: Cited by the court, this Supreme Court decision reinforced that plaint averments are credible at the preliminary stage. The court applied it to support Marico's jurisdictional claims.
• State of Maharashtra v. Ramdas Shrinivas Nayak, (1982) 2 SCC 463: Cited by the court, this Supreme Court decision affirmed that court records are conclusive. The court used it to uphold the defendants' admission of prior Delhi sales on November 29, 2016.
• Apar (P) Ltd. v. Union of India, 1992 Suppl. (1) SCC 1: Cited by the court, this Supreme Court decision reiterated the sanctity of court records. The court applied it to reject the defendants' attempt to retract their admission.
• R.R. Oomerbhoy Private Limited v. Court Receiver, High Court, Bombay, 2003 (27) PTC 580 (Bom): Cited by the court, this Bombay High Court decision quoted Wright, Layman & Umney v. Wright [1949 (46) RPC 149], cautioning against minor modifications to evade injunctions. The court used it to dismiss the defendants' offer to tweak their trade dress.
• B.K. Engineering Co. v. UBHI Enterprises (Regd.), AIR 1985 Delhi 210: Cited by the court, this Delhi High Court Division Bench decision emphasized that trading must be honest and not unintentionally unfair. The court applied it to find the defendants' actions deceptive and unfair.

Marico Limited Vs. Pr. Mukesh Kumar & Ors.: August 27, 2018:CS(COMM) 1569/2016:High Court of Delhi:Hon'ble Judge Shri Manmohan, J.

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539