Establishing trademark passing off requires proof of goodwill, misrepresentation, and likelihood of damage, emphasizing overall impression over minor differences.

JUDGMENT :

TEJAS KARIA, J.

I.A. No. 14557/2023 (u/O XXXIX Rules 1&2 CPC)

1. This is an Application filed by the Plaintiff under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (“CPC”).

2. Vide Order dated 09.08.2023, the Defendant was restrained from selling its product ‘Cool King Thanda Tael’ (“Defendant’s Product”), in

any manner, in the Trade Dress ‘ ’ (“Impugned Trade Dress”) or any other deceptively similar Trade Dress.

3. The Defendant preferred an appeal against the Order dated 09.08.2023. The Division Bench vide Order dated 21.08.2023 passed in FAO (OS)(COMM) 171/2023 set aside the Order dated 09.08.2023 on the limited ground that in the circumstances of the present case, the Defendant ought to have been given an opportunity to file its Reply to the present Application before adjudicating on the aspect of interim stay.

4. As recorded in Order dated 29.02.2024, the Plaintiff has confined its submissions on aspect of passing off in this Application subject to reserving the right of the Plaintiff for other reliefs in the Suit.

SUBMISSIONS ON BEHALF OF THE PLAINTIFF:

5. The learned Senior Counsel for the Plaintiff made the following submissions:

5.1 The Plaintiff, established in the year 1974, is the flagship company of the Emami Group of Companies and is engaged in, inter alia, manufacturing and marketing of health, beauty, personal care and other allied products, and is one of the leading and fastest growing personal and healthcare businesses m India. The Plaintiff commenced manufacturing ayurvedic medicine and medicinal preparations in India in the year 1982 and is one of the pioneers amongst the manufacturers of ayurvedic medicines and ayurvedic medicinal preparations in India and has earned the tremendous trust and confidence of millions of people spread all over the country, both within and outside the jurisdiction aforesaid and several other countries to which the Plaintiff has been exporting its products.

5.2 Navaratna Oil (“Plaintiff’s Product”) was launched in January 1989, with the catch phrase ‘Thanda Thanda Cool Cool’, and has been in continuous and uninterrupted use ever since. Navratna has been the most trusted and preferred Trade Mark in the therapeutic cooling oil segment for a very long time. The Plaintiff’s Product is the undisputed leader in its therapeutic cooling oil segment providing multi-purpose benefits to its satisfied and ever-growing consumer base. The Plaintiff’s Product has a market share of 66% as of 2022 in the cooling oil segment. The Plaintiff has obtained registrations for the Marks, ‘NAVRATNA’, ‘NAVRATNA OIL’, ‘NAVRATNA AYURVEDIC TAEL THANDA’, ‘THANDA THANDA COOL COOL’, ‘COOL COOL’, ‘THANDA THANDA Cool Cool’, and ‘HALKA HALKA COOL COOL’ (“Plaintiff’s Marks”), to sell the Plaintiff’s Product. The registration details of the Plaintiff’s Marks used in the Plaintiff’s Product are as under: