Deceptively Similar Trade Dress Amounts to Passing Off: Delhi High Court Restrains Dabur

Introduction

In a significant ruling on intellectual property rights in the fast-moving consumer goods sector, the Delhi High Court has restrained Dabur India Limited from selling its cooling oil product, Cool King Thanda Tael, in a trade dress deemed deceptively similar to Emami Limited's iconic Navratna Ayurvedic Oil. Delivered on January 31, 2026, by Hon'ble Mr. Justice Tejas Karia in CS(COMM) 532/2023, the decision underscores the protection of distinctive packaging combinations under the common law doctrine of passing off. Emami, the market leader with a 66% share in the cooling oil segment, successfully argued that Dabur's packaging imitated key visual elements of Navratna, potentially misleading consumers. This interim injunction, following an ex parte order in August 2023 that was temporarily set aside, highlights the court's emphasis on preventing consumer confusion in competitive markets like ayurvedic oils.

The case, confined to passing off claims during the rehearing, illustrates how established brands can safeguard their goodwill against deliberate imitations. With Navratna in continuous use since 1989 and backed by decades of advertising and sales exceeding ₹7,000 crores cumulatively, the judgment reinforces that while individual elements like red coloring may be common, their unique ensemble merits protection.

Case Background

Emami Limited, a flagship company of the Emami Group established in 1974, has long been a pioneer in ayurvedic medicines and personal care products in India. Its Navratna Ayurvedic Oil, launched in January 1989 with the catchy phrase "Thanda Thanda Cool Cool," has become synonymous with therapeutic cooling oils, offering relief from headaches, fatigue, and stress. The product boasts a market share of approximately 66% in the cooling oil segment as of 2022, supported by extensive nationwide advertising across print, television, and digital media. Emami's trade dress for Navratna includes a distinctive red color scheme, a transparent bottle with a specific V-shaped design, a flip-top cap, depictions of hibiscus flowers, ice cubes, ayurvedic herbs, and a color palette of red, white, yellow, and gold. This get-up has evolved minimally over 30+ years, fostering strong brand recognition.

Dabur India Limited, another major player in the ayurvedic and herbal products market, launched its Cool King Thanda Tael in June 2023. Emami discovered the product shortly after and filed suit in the Delhi High Court, alleging that Dabur's packaging slavishly copied Navratna's essential features to capitalize on its goodwill. The dispute centers on trade dress imitation under passing off, not registered trademarks, though Emami holds multiple registrations for Navratna marks, bottle designs under the Designs Act, 2000, and copyrights for labels.

The legal proceedings began with an ex parte injunction on August 9, 2023, barring Dabur from using the impugned trade dress. However, a Division Bench set this aside on August 21, 2023, citing procedural fairness—Dabur had not filed its reply. The matter was reheard on merits, limited to passing off, as recorded on February 29, 2024. Emami sought an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, arguing misrepresentation and likely damage to its reputation.

The core legal questions are: Does Dabur's trade dress create a likelihood of confusion among average consumers? Has Emami established prima facie goodwill in its distinctive packaging combination? And does the overall impression of similarity outweigh dissimilarities, such as Dabur's house mark?

This timeline reflects the competitive dynamics of the ayurvedic oil market, where packaging serves as a key differentiator for consumer loyalty amid similar product functionalities.

Arguments Presented

Emami's case rested on the classical trinity of passing off: goodwill, misrepresentation, and damage. The plaintiff emphasized Navratna's unparalleled market dominance, with sales turnover surging from ₹14.77 lakhs in 1990-91 to ₹58,562.25 lakhs in 2021-22, totaling over ₹7,270 crores. Advertising expenditures reinforced this, building secondary meaning in the trade dress since 1989. Emami argued that individual elements like red coloring or ice depictions are not monopolized, but their unique combination—transparent V-shaped bottle, flip-top cap, hibiscus, ice cubes, herbs, and the sequence of words like "Raahat, Aaraam, Tarotaazgi" on sachets—creates an ensemble exclusively associated with Navratna.

The plaintiff highlighted visual and structural similarities: both products feature red liquid in identical 270 ml bottles, with near-identical layouts of floral and cooling imagery. Emami dismissed Dabur's house mark as insufficient to dispel confusion, noting that at the point of sale, consumers rely on overall get-up. It accused Dabur of dishonest adoption without bona fide rationale, pointing to TV ads that benchmarked Cool King against Navratna bottles, implying an intent to free-ride. Emami relied on precedents like Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142) for focusing on similarities in packaging effects, and Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004 SCC OnLine SC 106) for presuming dishonesty in unexplained imitations.

Dabur countered that Emami failed the trinity test, particularly goodwill specific to the claimed trade dress. It argued that sales figures covered all Navratna variants, not just the red packaging allegedly used since 2017, citing Soothe Healthcare Pvt. Ltd. v. Dabur India Ltd. (289 (2022) DLT 225) for requiring product-specific evidence. The defendant portrayed its elements—red color, ice, herbs, and words like "Thanda" or "Cool"—as functional and common to the trade, not distinctive. Red, it claimed, stems from ingredients and is used in its prior products like Dabur Lal Tail (since 1973) and Dabur Himsagar (2001), with registrations predating Emami's claims.

Dabur stressed dissimilarities in outer packaging: its crown device over "Cool King," a central chill tube with crystals, and prominent "DABUR" logo versus Navratna's yogi image and vine artwork. It invoked Zydus Wellness Products Ltd. v. Cipla Health Ltd. (2023:DHC:4344) to argue that mere red usage isn't imitative. Delay and acquiescence were raised, noting Emami's 2007 annual report acknowledging Dabur's Super Thanda Oil as a competitor without objection. Dabur also questioned Emami's inconsistent user claims in trademark filings and lack of registration for the exact trade dress.

In rejoinder, Emami clarified that goodwill derives from the ensemble's long use, not isolated elements, and rebutted prior use claims: Lal Tail is for infant massage, not cooling oils, and Himsagar's evidence was sparse. It highlighted Dabur's own application for its trade dress registration, estopping claims of genericness per Automatic Electric Ltd. v. R.K. Dhawan (1999 PTC 81 (Del)).

Legal Analysis

Justice Tejas Karia's reasoning centered on a holistic assessment of trade dress under passing off principles, drawing from the Supreme Court's trinity test in Reckitt & Colman Products Ltd. v. Borden Inc. (though not directly cited, implied via referenced cases). The court evaluated whether the impugned trade dress misrepresented goods as Emami's, causing likely damage. It affirmed Emami's prima facie goodwill through uninterrupted use since 1989, evidenced by escalating sales and market leadership, distinguishing it from broader brand figures as sufficient for the red get-up's secondary meaning.

The judge rejected Dabur's dissection approach, emphasizing overall impression on consumers with "imperfect recollection," per Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC 73). Similarities in bottle shape, cap type, liquid color, 270 ml size, and imagery (hibiscus, ice, herbs) with the word sequence were deemed non-coincidental, indicating deliberate imitation without explanation—a hallmark of dishonesty under Midas Hygiene (supra). The court clarified that while red or descriptive terms are common, their "distinctive combination, arrangement, and presentation" acquires protectability, echoing Heinz Italia v. Dabur India Ltd. ((2007) 6 SCC 1).

Precedents like Dabur Ltd. v. Shree Baidyanath (193 (2012) DLT 558) were pivotal: no valid reason for copying essential features warranted injunction. Corn Products (supra) guided focus on packaging's "overall effect," while Hindustan Pencils Pvt. Ltd. v. India Stationery Products (1989 SCC OnLine Del 34) presumed intent from unexplained similarity. Dabur's house mark was dismissed as non-curative, as passing off assesses point-of-sale confusion.

The court debunked third-party use defenses, noting Emami need not sue minor infringers ( Pankaj Goel v. Dabur India (2008 (38) PTC 49)), and found Dabur's prior products irrelevant—Lal Tail not in cooling segment, Himsagar under different dress. Functional arguments failed, as the ensemble transcended functionality. This analysis distinguishes passing off from trademark infringement, prioritizing misrepresentation over exact replication.

Key Observations

The judgment extracts pivotal reasoning to underscore the protection of composite trade dresses:

• "The overall comparison of the Defendant's Product with the Plaintiff's Product shows that there is an attempt to imitate the essential features of the Plaintiff's Trade Dress by the Impugned Trade Dress. The Impugned Trade Dress is deceptively similar to the Plaintiff's Trade Dress as the essential features... 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."

• "It is settled law that to determine the passing off, the focus must be on the similarities rather than dissimilarities. The overall appearance at first impression is crucial to identify the passing off. The meticulous side-by-side dissection is not necessary and the trade dress has to be judged as a whole."

• "The Plaintiff cannot claim monopoly on red colour, herbs, hibiscus flower if they are considered individually. However, the distinctive combination, arrangement and presentation resulting in ensemble, which has been in use for a considerable long period has acquired secondary meaning in favour of the Plaintiff’s Product."

• "The Defendant has not offered any explanation or bonafide reason for adopting the Impugned Trade Dress having identical features to that of the Plaintiff's Trade Dress."

• "A holistic view of the Impugned Trade Dress appears to be deceptively similar to the Plaintiff's Trade Dress... It is sufficient if there is an overall similarity in the idea or impression assessed from the perspective of a consumer of average intelligence having imperfect recollection."

These observations, drawn verbatim, emphasize the court's holistic scrutiny and presumption of deception.

Court's Decision

The Delhi High Court granted Emami's interim injunction, restraining Dabur from selling Cool King Thanda Tael in the impugned trade dress or any deceptively similar variant to Navratna's. The operative order states: "The Defendant is restrained from selling the Defendant’s Product, i.e., ‘Cool King Thanda Tael’ using the Trade Dress... or any other deceptively similar Trade Dress to the Plaintiff's Trade Dress."

This decision has immediate practical effects: Dabur must redesign packaging, potentially incurring costs and delaying market presence, while Emami's dominance is bolstered. Broader implications include heightened scrutiny of trade dress in FMCG, especially ayurvedic products where visual cues drive impulse buys. It signals that courts will protect secondary meaning in ensembles, even sans registration, deterring copycats in saturated markets. Future cases may cite this for weighing holistic impressions over isolated elements, influencing packaging strategies industry-wide. For legal practitioners, it reaffirms the trinity test's application to non-traditional marks, urging evidence of specific goodwill and consumer surveys where possible. In a market projected to grow, this ruling promotes fair competition by safeguarding brand investments in distinctive get-ups.