Trade Dress and Deceptive Similarity
Introduction:The High Court of Delhi, in the recent case of Johnson & Johnson Pte. Ltd. v. Mr. Abbireddi Satish Kumar & Ors., addressed significant questions surrounding trade mark infringement and passing off within the highly competitive market of consumer healthcare and energy drinks. This dispute involved allegations of deliberate copying of trade dress and marks associated with the plaintiff’s well-known ORSL brand.
The judgment, delivered by Hon’ble Ms. Justice Mini Pushkarna on 15 July 2025, demonstrates the application of the Commercial Courts Act’s strict timelines and the consequences of procedural default by defendants. It also illustrates the approach taken by the Court in determining deceptive similarity and infringement, even in the context of defendants attempting to circumvent injunction orders through variant marks.
Factual Background:The plaintiff, Johnson & Johnson Pte. Ltd., a Singapore-incorporated entity established in 1974, had acquired the ORS-L and ORSL trademarks and associated goodwill from Jagdale Industries Limited through an assignment deed dated 7 November 2014. These marks had been used in India since 2003 for flavoured electrolyte drinks. Following acquisition, the plaintiff invested heavily in marketing and brand promotion, resulting in significant goodwill attached to these marks and distinctive trade dress, including a red and white colour scheme and stylised script.
The defendants were engaged in manufacturing and marketing fruit drinks under marks such as ORSI and ERSI, which the plaintiff discovered in September 2022. The plaintiff alleged that the defendants’ marks and packaging were deceptively similar to its own, intended to mislead consumers and ride on its reputation.
Procedural Background:Following discovery of the allegedly infringing marks, the plaintiff issued a cease-and-desist notice to defendant no. 1 and M/s Pure Tropic, the manufacturing entity associated with defendant nos. 2 to 5. The plaintiff filed the suit under Section 134(1) read with Sections 27 and 29 of the Trade Marks Act, 1999, seeking permanent injunction and damages.
On 7 December 2023, the Court granted an interim injunction restraining the defendants from using the impugned marks or deceptively similar variants. Local Commissioners were appointed on 9 February 2024 to investigate compliance, leading to the discovery of large stocks of infringing goods manufactured and distributed even after the injunction.
Defendants failed to file written statements within the mandatory 120-day period prescribed by the CPC as amended by the Commercial Courts Act, 2015, despite service of summons and notices. Their right to file written statements was closed by order dated 27 May 2024. Defendant no. 1's application under Order VII Rule 11 CPC challenging territorial jurisdiction was dismissed by judgment dated 4 February 2025. Subsequently, the plaintiff filed an application under Order VIII Rules 1 and 10 CPC seeking judgment based on admissions.
Core Dispute:The central dispute was whether the defendants' use of the marks ORSI, ERSI, and similar trade dress constituted infringement and passing off of the plaintiff’s well-known ORSL marks and packaging? Additionally, the Court examined whether minor alterations by defendants, such as changing letters or adopting new variants like ElectroORS, were sufficient to avoid confusion among consumers and whether the defendants had violated the interim injunction?
Discussion on Judgments:The plaintiff relied upon Christian Broadcasting Network Inc. v. CBN News Pvt. Ltd., 2018 SCC OnLine Del 11666, to support the proposition that under Order VIII Rule 10 CPC, when defendants fail to file written statements, the Court may proceed to pronounce judgment if the plaintiff's claim is unimpeachable. The Court referred to Nirog Pharma Pvt. Ltd. v. Umesh Gupta, (2016) 235 DLT 354, which emphasised the legislative intent to expedite commercial disputes and discourage dilatory tactics.
In assessing likelihood of confusion, the Court applied the principles laid down in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953, which highlighted that when products are identical, even a lower degree of similarity in marks can cause confusion among consumers of average intelligence with imperfect recollection. The Court also invoked the “triple identity” test as reiterated in Heifer Project International v. Heifer Project India Trust, 2024 SCC OnLine Del 2847, where similarity of marks, business area, and consumer base creates an overwhelming likelihood of deception.
On the procedural aspect, the Court noted its earlier judgment dated 4 February 2025 dismissing the defendants’ challenge to jurisdiction, following Koninklijke Philips N.V. and Another v. Amazestore and Others, 2019 SCC OnLine Del 8198, which endorsed the rule of thumb approach to award damages where infringement is established and defendants have acted wilfully.
Reasoning and Analysis of the Judge:The Court observed that the defendants’ marks, though differing superficially by letters such as E instead of O, were presented in fonts and colour schemes closely resembling the plaintiff's well-established trade dress. The deliberate similarity, including the round shape of ‘E’ to mimic ‘O’ and positioning of product elements, evidenced malafide intent to cause confusion.
The Court dismissed defendants' arguments that they were only service providers or distributors without control over the mark, finding that defendant nos. 2 to 5 had continued manufacturing infringing goods even after being served notices and despite the injunction order. Local Commissioner reports corroborated this, showing products with manufacturing dates after the injunction. The Court concluded that such conduct demonstrated clear knowledge and participation in the infringing activity.
The Court held that when defendants fail to file written statements within the statutory limit and evidence shows an unimpeachable case of infringement, it is proper to pass judgment under Order VIII Rule 10 CPC without further trial. The repeated attempts by defendants to modify marks marginally or create new variants like ElectroORS did not alter the likelihood of confusion.
Final Decision:The Court decreed the suit in favour of the plaintiff, permanently restraining the defendants from using the infringing marks and trade dress, or any deceptively similar variants. It awarded actual litigation costs and damages against the defendants, noting the wilful violation of the injunction and continued infringement. The defendants’ plea regarding jurisdiction and procedural lapses was rejected, affirming the plaintiff’s rights over its well-known marks and trade dress.
Law Settled in This Case:The judgment reinforces that in commercial suits under the Commercial Courts Act, failure to file written statements within the statutory 120-day period leads to forfeiture of the right to defend, and the Court may decree the suit under Order VIII Rule 10 CPC if the plaintiff’s case is prima facie unimpeachable. It further affirms that even minor modifications of marks or trade dress by defendants do not negate infringement if the overall impression remains confusingly similar. The decision also clarifies that entities involved in manufacturing or distribution can be held liable if they knowingly aid the principal infringer, especially after notice and injunction orders.
Case Title: Johnson & Johnson Pte. Ltd. v. Mr. Abbireddi Satish Kumar & Ors.
Date of Order: 15 July 2025
Case Number: CS(COMM) 801/2023
Neutral Citation: 2025:DHC:5622
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Ms. Justice Mini Pushkarna
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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