Distinctiveness is crucial in passing off actions, and evidence is essential in establishing distinctiveness.

JUDGMENT

Rajiv Shakdher, J. - I.A. No. 6865/2020

Preface: -

1. The plaintiffs before me are seeking an injunction against the defendant from manufacturing, importing, marketing, advertising, promoting, selling and/or using plaintiff no. 1/RB Health (US) LLC''s registered design i.e. design no. 271671, falling in class 28-02, in relation to a soap bar [hereafter referred to as the "subject design registration"].

1.1. There is the usual extrapolation of this prayer, which is, that an injunction is sought against the defendant in making use of any other design that combines RB Health (US) LLC''s registered design in connection with the aforementioned activities.

1.2. Besides this, the plaintiffs also seek an injunction against the use of their tagline "be 100 % sure" and/or qua the trade dress/packaging as also the colour of the soap bar manufactured and/or sold by the defendant.

1.3. Along with the aforementioned reliefs, consequential reliefs for surrendering offending material, such as advertising leaflets, labels, pamphlets, etcetera and stock bearing the subject design registration, whether packed or unpacked, are also sought.

1.4. Before I proceed further, I may indicate that plaintiff no. 1/RB Health (US) LLC would, hereafter, be referred to as "RB (US)". Likewise, plaintiff no. 2/Reckitt Benckiser (India) Pvt. Ltd. would be referred to as "RB (India)" while the defendant/Dabur India Limited would be referred to as "Dabur". Collectively, though, wherever the context requires, RB (US) and RB (India) will be referred to as plaintiffs.

2. These interim reliefs are sought in aid of the suit, in which, a panoply of final reliefs are sought such as permanent injunction, rendition of accounts, damages, as also the relief for delivering up the offending goods.

2.1. However, what is at the heart of the matter, at least at this stage, are two aspects.

i. First, as to whether or not Dabur has raised a credible challenge to the validity of the RB (US)''s registered design?

ii. Second, as to whether Dabur, in using the offending trade dress, which includes the taglines, the colour of the packaging, the colour of the soap bar etcetera, has attempted to pass off the goods manufactured by it as those originating from the plaintiffs'' stables, so to speak?

Background facts: -

3. Before I deal with the legal nitty-gritties, the following broad facts need to be noticed.

i. RB (US) and RB (India) claim to be part of a multi-national going by the name Reckiit Benckiser PLC. It is averred that as a group they are into manufacture and sale of health and hygiene products which are sold under well-known brands such as "Dettol", "Harpic", "Lizol". While RB (US) is a company registered under the laws of State of Delaware, USA and, as indicated above, is the owner of the subject design registration, the authority to use the same, it is stated, has been vested in RB (India).

ii. It is claimed that RB (India) is also inter alia in the business of manufacturing health care, home care and hygiene products. It is also averred that RB (India), amongst other products, manufactures Dettol soap bar.

iii. Although, there is a reference to several registered designs, there are two sets of registrations which are relevant for the purpose of this case. The first set of registrations, which are relevant, are the design registrations for soap bar bearing numbers 229435 and 229436 falling in class 28-02. These registrations, it is claimed, were obtained by the plaintiffs'' group company on 21.05.2010, having a reciprocity date of 23.11.2009. The second design registration, which is relevant, is the subject registration which was obtained, as adverted to hereinabove, by RB (US) on 24.04.2015. The subject design registration [i.e. 271671] has a reciprocity date of 04.11.2014 and, as noticed above, falls in class 28-02.

4. Intermingled with these facts, are assertions by the plaintiffs, that the Dettol antiseptic liquid was first marketed in United Kingdom in 1933. The