‘Brand name no shield if packaging confuses buyers’

Kolkata: The Calcutta High Court has ruled that a different brand name cannot protect a company from a passing-off claim if its overall packaging impression misleads buyers, as it upheld an injunction in favour of Shalimar Chemical Works Pvt. Ltd. against Edible Products (India) Ltd., maker of KMP Ayurvedic Coconut Hair Oil.

A Division Bench of Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya held that in such disputes, the total get-up of a product—including the bottle’s shape, colour combination, texture and imagery—is what matters to an average consumer with ordinary recall. A distinct brand name, the court said, does not negate confusion if the overall packaging resembles that of the prior user.

The court found that Shalimar’s yellow-and-green HDPE bottle, ribbed texture, cap indentation and coconut-tree device had, through long use, acquired a distinctive identity. The brand has existed since 1945 and has used the present packaging since 2006, supported by extensive advertising and an annual turnover of about Rs 450 crore, noted in the injunction application and recorded by the court.

In contrast, the appellant’s claim of HDPE bottle use since 2017 was unpersuasive, the Bench noted, with invoices produced only from 2020. It also observed that 99 per cent of the company’s turnover comes from edible oil, undermining its stand that its primary business is hair oil. The defendant’s failure to produce packaging for its edible-oil products led the court to draw an adverse inference of selective disclosure.

A key factor in the ruling was the company’s application to register the bottle shape in 2023, filed after receiving Shalimar’s cease-and-desist notice in 2022 — an act the court said effectively acknowledged the distinctiveness of the very design it claimed to be generic.

Holding that Shalimar satisfied the three requirements of the ‘Trinity Test’ — goodwill, misrepresentation and likely damage — the Bench dismissed the appeal and upheld the trial court’s May 15, 2024 injunction. Since the High Court was deciding only the interim stage, it clarified that its observations were not conclusive and that the main suit must be adjudicated independently by the trial court after full evidence.