Marico limited manufactures Parachute coconut oil. Parachute is a household name in India with consumers not only using it as a hair oil but also using it as an edible oil. Parachute Coconut oil and its blue bottle have become synonymous. The distinctive blue packaging of the Parachute Coconut Oil serves the dual purpose of setting it apart from its competitors and visually indicating the product’s authenticity and integrity.
MARICO v. KLF Nirmal Industries
In the recent case of Marico Limited v. K.L.F. Nirmal Industries Private limited, Marico had filed a commercial suit against KLF in July, 2023 for a trademark infringement, alleging that the defendant was selling oil in a deceptively similar blue bottle along with similar labels, thereby asserting a passing off the products. The High Court on August 18, 2023 passed an ex-parte ad-interim order restraining KLF from using the allegedly infringing packaging and held that the product in dispute had packaging that was deceptively similar to Parachute’s own packaging which contained coconut tree device, broken coconut device, blue bottles/containers and overall trade dress. Aggrieved by the said order, KLF filed an appeal under Order 39 Rule 4 of CPC seeking vacation from the said Injunction order.
Contention by KLF
The contention by KLF for the appeal was that Marico had intentionally made false and misleading statements. Such contention was based on premise that Marico was over its limitation period for filing the suit as it had a prior knowledge of the said disputed product since, 2021 where KLF had put forth an Information Memorandum detailing the said product before the Mergers and Acquisition team of Marico and both the companies had deliberately signed a non-disclosure agreement. MARICO had only sought to file the suit for such infringement in July, 2023. The court had considered that the Information Memorandum from 2021 presented by KLF Nirmal Industries was not material or relevant to the trademark infringement case and the attempt to link this with the NDA lacked substance. Justice Chagla concluded that KLF Nirmal Industries had failed to establish that Marico knowingly made false or misleading statements. It found no merit in the application and rejected the same.
Contention by Marico
Marico had placed reliance on the case of Shaw Wallace & Company Vs. Mohan Rocky Spring Water, where temporary injunction in the case of trademark infringement was granted not only to protect the interest of plaintiff but was also granted to protect the interest of general public.[1] This contention was based on the premise that the product by MARICO is also used as an edible product and this product is used by millions of consumers and if this passing off the product by defendant is allowed, it would not only hurt the company in terms of its revenue, but would be disastrous for the general public at large. In the case of Shaw Wallace, the plaintiff was in trade of manufacturing and selling edible products for the consumption purposes. The court in the suit for trademark infringement had held that,
“An order of temporary injunction is to be made so that the public who buys the goods involved is not deceived or misled. Therefore, had the purpose of granting temporary injunction been only to protect the interest of the plaintiffs, then may be the temporary injunction could have been denied to the plaintiffs, because the plaintiffs have made an incorrect statement in the plaint. But as the purpose of granting temporary injunction in a suit for infringement of trade-mark or trade label is not only to protect the interest of the plaintiffs, but also to protect the interest of the general public, in my opinion, denial of temporary injunction to the plaintiffs merely because the plaintiffs have made incorrect statement in the plaint would not be in the interest of justice.”
Here, the plaintiff had made an incorrect statement. The court was of the view that even when the plaintiff has made an incorrect statement, such statement shall not lead to a justice which would disproportionately lead to injustice for the greater public.
Can an entity register a color as a trademark?
In Libertel Groep BV v Beneleux-Merkenbureau, the Court of Justice held that a colour, not spatially defined, is capable of being registered as a trade mark, provided it is
- a sign,
- capable of graphical representation if it was clear, precise, objective, durable, self-contained, easily assessable and intelligible,
- capable of distinguishing goods or services.[2]
Cadbury had also registered its iconic purple color as a trademark on its chocolate wrappers. Initially, when it applied for a trademark, it met with resistance from another competitive companies which contended that the registering color as a trademark would create a monopolistic tendency in the market. In the case of Société Des Produits Nestlé SA v Cadbury UK Ltd, the court upheld the Trademark registry’s decision which have allowed the company to register the color as a trademark on the basis acquired distinctiveness.[3] But such mark was only restricted for it milk chocolate segment which was happily accepted by Cadbury.
The Louboutin brand is also known to hold rights over its’s signature red sole. The signature of the brand is a sole colored in red. The brand was awarded damages in 2018 and a permanent injunction against two Indian shoe dealers who were infringing upon the red sole trademark of the Louboutin Brand. The court highlighted upon the fact, that the red sole of the brand had gained significant reputation as a distinct signature of the brand where consumers are able to differentiate the red sole of the brand.[4]
The pressing fact
A major issue could now arise as a result of this case where major players could kill the competition by pressing upon the smaller players. A contention raised by the defendant was that major players were also doing the same by using the same blue bottle. They contended that major players in the market segment of coconut oil like Dabur and Bajaj were using the same bottle along with the same descriptive marks which are extensively available in the market and against which, no action was taken by the plaintiff. Nevertheless, they continue to exist and trade with such products while the smaller players were getting harassed with these cases and suffer the most.
Marico, on its front, have faced stiff competition from other brands which would used its iconic Blue Bottle or the challenge that they face from Dabur with their regular Ad-wars. Nevertheless, Marico had took these challenges to grow their brands with Parachute dominating the Coconut oil segment with a majority market share.
[1] Shaw Wallace and Company Ltd. v. Mohan Rocky Spring Water Breweries Ltd., 2006 SCC OnLine Bom 393
[2] C-104/01
[3] [2012] EWHC 2637 (Ch)
[4] Christian Louboutin Sas v. Pawan Kumar, 2017 SCC OnLine Del 12173
DUCTUS EDGE 