The plaintiff Shalimar Chemical Works sued Edible Products India Ltd. for passing off and infringement, alleging deceptive similarity in trade dress, colour scheme and HDPE bottle shape used for coconut oil, and obtained an ex parte injunction that was later made absolute; the defendant appealed.
The Calcutta High Court held that passing off—being broader than infringement—required application of the Trinity Test, and found that Shalimar had long-standing goodwill linked to its distinctive yellow-green HDPE packaging since 2006, while the defendant offered no credible explanation for adopting a strikingly similar get-up, including bottle shape and colour arrangement, thereby creating likelihood of confusion for an average consumer.
The Court concluded that goodwill, misrepresentation and likelihood of damage were clearly established, rejected the defendant's arguments on generic bottle shape, distinct labels, different product class (hair oil), non-suing of other infringers, and upheld the trial court’s grant of temporary injunction, dismissing the appeal.
Law Settled:
A passing-off action remains independent of trademark registration and is broader than infringement; Section 27(2) preserves the common law tort of deceit (Paras 42–45, S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683).
The Classical Trinity Test—goodwill, misrepresentation, and likelihood of damage—governs passing off; assessment is from the viewpoint of an average person with imperfect recollection (Paras 47–50, Reckitt & Colman v. Borden [1990] RPC 340).
Distinctiveness of trade dress is judged on overall get-up, not isolated elements; similarity in total impression is sufficient for injunction (Paras 51–57, Gerbatschow Wodka KG v. John Distilleries Ltd., (2011) 47 PTC 100).
Class or category of goods is irrelevant in passing off when the get-up causes confusion regarding trade origin (Para 63, Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills, (2009) 1 CHN 852 (FB)).
Defence of publici juris/common to trade fails without proof of substantial and continued use by others (Paras 71–73, Assam Roofing Ltd. v. JSB Cement LLP, AIR 2016 Cal 41).
Adoption of a similar get-up without explanation raises presumption of dishonesty (Para 69, Satyam Infoway Ltd. v. Siffynet Solutions, (2004) 6 SCC 145).
Appellate Court will not interfere with a well-reasoned discretionary injunction unless findings are perverse (Para 79, settled principles of appellate review).
Edible Products (India) Limited Vs Shalimar Chemical Works Pvt. Ltd.: 03.12.2025: FMAT No. 189 of 2024;: 2025:CHC-AS:2186-DB
Calcutta HC:Hon’ble Justice Sabyasachi Bhattacharyya and Hon’ble Justice Supratim Bhattacharya
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent and Trademark Attorney), High Court of Delhi]
