Delhi High Court restrains Dabur from using packaging similar to Emami Navratna oil

The Delhi High Court on January 31 restrained Dabur India Limited from selling its cooling oil product Cool King Thanda Tael in a trade dress found to be deceptively similar to Emami Limited’s well-known Navratna Ayurvedic Oil.

In a judgment delivered on January 31, Justice Tejas Karia held that Dabur’s packaging amounted to passing off and was a deliberate imitation of the distinctive trade dress associated with Emami’s Navratna oil, which has been in continuous use since 1989, according to a report by Bar and Bench.

Emami had approached the Court seeking an interim injunction against Dabur’s product, alleging that the trade dress of Cool King Thanda Tael copied the essential visual features of Navratna Ayurvedic Oil. These included the red colour scheme, a transparent bottle of a similar shape, a flip-top cap, the depiction of hibiscus flowers, ice cubes and ayurvedic herbs, as well as the overall layout and colour combination of red, white, yellow and gold.

An ex parte injunction had initially been granted in August 2023. This was later set aside by a Division Bench on the ground that Dabur had not been given an opportunity to file its reply. The matter was subsequently reheard on merits, limited to the issue of passing off.

Emami argued that Navratna oil is the market leader in the cooling oil segment with a market share of around 66 per cent, and that the product’s trade dress had acquired strong secondary meaning through more than three decades of uninterrupted use, extensive advertising and substantial sales. The company contended that Dabur’s adoption of a near-identical trade dress was dishonest and intended to ride on the goodwill associated with Navratna, adding that the similarities were so striking that confusion among consumers of average intelligence and imperfect recollection was inevitable.

Dabur opposed the injunction, arguing that the colour red, the use of cooling imagery such as ice and herbs, and descriptive words such as thanda and cool were common to the trade and functional in nature. It also stated that the prominent display of the DABUR house mark was sufficient to distinguish its product. The company further claimed prior use of red-coloured oils through products such as Dabur Lal Tail and Dabur HimSagar, and submitted that Emami had failed to establish goodwill specifically in the claimed trade dress.

The Court rejected Dabur’s arguments and held that its trade dress was deceptively similar to Emami’s. It found that the essential features of Emami’s trade dress, including the colour of the packaging, cap and liquid, the shape of the bottle, and the combination of red, white, yellow and gold along with ice cubes, hibiscus flowers and ayurvedic herbs, had been copied in Dabur’s packaging, along with the use of the words Raahat, Aaraam and Tarotaazgi in the same sequence.

While observing that Emami could not claim a monopoly over individual elements such as the colour red or the use of herbs, the Court held that the distinctive combination, arrangement and presentation of these elements had acquired secondary meaning in favour of Navratna oil and therefore deserved protection.

The Court concluded that Emami had prima facie established goodwill, misrepresentation and a likelihood of damage, and accordingly restrained Dabur from selling Cool King Thanda Tael in a trade dress deceptively similar to that of Emami Navratna oil.

Emami Limited was represented by senior advocate Abhimanyu Bhandari along with advocates Roohe Hina Dua, Harshit Khanduja and Vinayak Thakur. Dabur India Limited was represented by senior advocates Sandeep Sethi and Anirudh Bakhru, with advocates Kripa Pandit, Christopher Thomas and Pranjali Arya.