The Delhi High Court has restrained RSH Global Pvt Ltd, which operates under the brand name Joy, from using, manufacturing, selling, advertising, directly or indirectly dealing in cosmetic products that are deceptively similar to that of Beiersdorf AG’s NIVEA in terms of label and trade-dress (Beiersdorf AG vs RSH Global Pvt Ltd).
The order was passed by a single-judge Bench of Justice C Hari Shankar who found that the shape, size, and colour product of “Joy Intense Moisture” lotion was deceptively similar, even if not identical, to that of Nivea.
“Holistically seen. there is, prima facie, every likelihood of an unwary purchaser, of average intelligence and imperfect recollection, confusing the product of the defendants with that of the plaintiff,” the Court said.
Beiersdorf AG (plaintiff) approached the High Court after it came to know that the RSH Global Pvt Ltd (defendant) had commenced manufacture of “Joy Intense Moisture” moisturizing lotion by using a trade dress which was deceptively similar to its own coco butter moisturizer.
The plaintiff asserted that the distinguishing features of its trade dress was apparent from the body of the products.
It was stated that the brand name was written in white font on a dark blue background, had a distinctive blue colour which is inevitably identified with the plaintiff and its products, a milk swirl/splash device in white colour towards the lower half of the container and cocoa butter in the form of a droplet design in golden colour in the middle of the milk swirl/splash device.
Alleging infringement of its trademarks and trade dress, the plaintiff argued that the defendant was trying to ride the reputation garnered by the Nivea products over a period.
The Court was also informed that apart from the infringing product, none of the trade dresses of the defendants’ products imitate or replicate any of the distinctive features which mark the trade dress of the plaintiff’s product.
The Court said that the “test for comparison” was not identifying dissimilarities between products but the presence of “deceptive similarity”.
“The defendants’ product is also contained in a container of similar, even if not identical, shape and size, with white letters on a blue background, the shades of blue also being similar to the naked eye and, perhaps, most significantly, a white semi-circular splash towards the lower half of the container, which at any rate is, prima facie, a feature distinctive to plaintiff’s product,” the Court observed.
The Court accordingly concluded that a prima facie case of deliberate infringement of the trade dress of the plaintiff by the defendant was made out.
“In view thereof, till the next date of hearing, the defendants, their directors, wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and agents are restrained from using, manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in cosmetic products, especially body cream, lotion or goods that are deceptively similar to the plaintiff’s distinctive trade dress, amounting to an infringement of the plaintiff’s registered trademarks as stated in paragraph 12 of the plaint, particularly Trademark Registration Nos. 2912562 and 3289787; infringement of the plaintiff’s copyright in the artistic work of the plaintiff’s “NIVEA” label, trade-dress as also passing off their products as emanating from the plaintiff,” it ordered.
The Court clarified that the defendant shall be at liberty to apply for variation or modification of the order.
Anand & Anand Managing Partner Pravin Anand with Advocates M.S. Bharath, Dhruv Anand, Premchandar, Udita Patro, N.C. Vishal, Kavya Mammen and Sampurnaa Sanyal appeared for the plaintiff. None appeared for the defendant.