Bajaj Almond Hair Oil: Delhi High Court Directs Pioneer Herbals To Consider Changing Their Deceptively Similar Trade Dress

Justice Prathiba M Singh observed:

"In view of the facts of the present case and the above legal position, this Court is prima facie of the opinion that if the Plaintiffs' and the Defendants' products are stocked together in any shop or retail outset, there is a clear likelihood of the Defendants' product being associated or connected with the Plaintiffs' or confused with the Plaintiffs' products...Considering the fact that the case of the Defendants is that they have been using these containers and labels since 2013, this Court is inclined to grant time to the Defendants to revert with instructions as to the time that may be required for changing over from using the containers with the impugned trade dress."

The suit was filed by Bajaj Resources Pvt Ltd alleging infringement of trademark in their flagship product "Bajaj Almond Drops" hair oil.

It was pleaded before court that the Bajaj Almond Oil trade dress containing the unique shape of the container, the brown colour cap along with the 'U' shape label, with the words "Bajaj Almond Drops" written with droplets replacing the letter 'O', is a registered mark since 2007.

Plaintiff's grievance in the present suit is that the Defendants have adopted the infringing "Pioneer Almond Care" label and container for its non-sticky hair oil, the trade dress of which is almost identical to the trade dress of Plaintiffs' product. Counsel for the Plaintiffs points out that the Defendants have a separate trademark registration number for a label, which is completely different from what the Defendants are currently using.

The counsel for plaintiff also informed the court that a different container was being used by the Defendants earlier as per the promotional video of the Defendants' product where the shape of the bottle, label and other artistic features were entirely different. But as per the petitioner, the Defendants have consciously and deliberately chosen to adopt the impugned infringing container, label and trade dress.

Counsel appearing for the defendant argued that the cause of action had arisen in June, 2021 when a cease-and-desist notice was issued by the Plaintiffs calling upon the Defendants to immediately desist from using the impugned container and label. But the products of the Defendants with the impugned trade dress have been available in the market since 2013.

He submitted that the products of the Plaintiff and Defendants have co-existed in the market for the last several years, and therefore, the present is not a fit case for grant of an injunction. He also disputed the averments made by the Plaintiff that earlier the Defendants were using a different container/label.

Court after perusal of the two products observed that the features of the defendant's container, the colour combination, the artistic features including the droplet in the word 'Almond' instead of 'O', inverted 'U' shape label etc. are similar to that of the Plaintiffs' trade dress. Court also noted that the defendant products are nothing but a substantial and colourable imitation of the Plaintiffs' mark.

"It is the settled position in law that when comparing products of this nature especially, which are consumer goods, the Court is not to compare the differences, but to see the overall get up, trade dress and the look and feel of the products," Court said

The Court was prima facie of the opinion that if the Plaintiffs' and the Defendants' products are stocked together in any shop or retail outset, the Defendants' product would easily be associated or connected with the Plaintiffs and therefore, it was inclined to pass an injunction. However, the Counsel for defendant submitted that he wanted to seek instructions from his client as to whether the Defendants would be willing to change to a non-infringing label, container with a different trade dress as also in respect of stocks of the infringing products that are available with the Defendants.

Therefore, considering that the defendant have been using these containers and labels since 2013 the court granted him time to seek instructions about the time that may be required for changing over from using the containers with the impugned trade dress as also for producing the stock statement of the existing stocks of the products

Matter is now listed on 20^th May, 2022.

Case Title : BAJAJ RESOURCES PRIVATE LIMITED & ANR. V PIONEER HERBALS & ORS.

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