New Delhi: ‘Sanitize’ soap bar cannot be confused with ‘Dettol’, the Delhi High Court said refusing to grant an order of temporary injunction against Dabur in a suit by Reckitt Benckiser. [RB Health (US) LLC & Anr vs Dabur]
The Court has nonetheless directed Dabur to maintain an account of sales of the Sanitize soap bar.
The interim order was passed by a single-judge Bench of Justice Rajiv Shakdhar.
Dettol soap manufacturer, Reckitt Benckiser (Plaintiff) had sought a direction to restrain Dabur (Defendant) from making use of its registered design in relation to its Dettol soap bar.
Besides this, an injunction was also sought against the use of the Plaintiff’s tagline “be 100 percent sure”, the trade dress/packaging and the colour of the soap bar.
The Plaintiff argued that the Defendant’s soap bar was an obvious and fraudulent imitation of Dettol soap and, thus, the Defendant was guilty of infringement under Section 22 of The Design Act, 2000.
It was also asserted that the Defendant committed the tort of passing off by slavishly adopting several features of Dettol soap including its colour packaging, label, shape, colour, contour and configuration of the soap etc.
The Defendant, on the other hand, disputed the Plaintiff’s design registration and submitted that its soap bar had the shape and configuration of publicly known designs.
In response to the passing off action, the Defendant claimed that the packaging, the colour of the soap bar and the use of generic and descriptive phrases or taglines, which were common to the trade, could not be made the proprietary rights of the Plaintiff.
Further, Defendant contended that the Plaintiff had failed to establish that the packaging used by them and the descriptive elements superimposed on it had acquired distinctiveness.
To arrive at its decision, the Court noted that the principle feature of Dettol’s design i.e. the rounded corners and the two “dimples” on either side of the soap bars were published by Unilever in 1989 and 1995.
“The prior publications concerning Unilever soap bar made on 28.02.1989 and 31.01.1995, thus, provide significant heft to Dabur’s claim that the subject design registration is not validly registered if one were to bear in mind the provisions of Section 19(1)(b) and (c) read with Section 4(a), (b), (c) of the Designs Act.”, the Court said as it sided with the Defendant’s objection.
With respect to the claim of passing off, the court stated that the Plaintiff must satisfy the “classical trinity”. These are:
– A plaintiff must be able to establish that it has the necessary goodwill and reputation in the goods sold or services offered to the consumers at large which in turn should be interlinked with the get-up in which they are proffered.
– A plaintiff must be able to demonstrate that the defendant’s misrepresentation qua the goods or services offered by him have led consumers to believe that they originate from the plaintiff.
– The action of the defendant has resulted in damage or is likely to result in damage on account of the misrepresentation of the defendant regarding the origin of the goods and services.
The Court recorded that there was enough material to show that there were several soap bars in the market with similar features if not identical features in relation to the colour, shape, and smell of the soap bar.
Likewise, the taglines and indications/signs claimed by the Plaintiffs appeared to be “customary” in the “current language” of the trade for the purpose of designating hygiene-products which included soap bars, the court added.
The Court also noted that neither the taglines nor the indications/signs were registered with the trademark authority.
The Court further considered that the Plaintiff had not placed on record any surveys of customers, which would, at least prima facie, establish the distinctiveness of their taglines or indications/signs.
The Court opined that at least at this stage, it did not appear that the Defendant intended to misrepresent that the soap bar manufactured by it as having originated from the plaintiff.
The court said,
“The packaging boldly bears the mark “Dabur”. The background colour is dark green as against the packaging of the plaintiffs which has a combination of white and light green. Dabur’s packaging bears a cross and a shield whereas that of the plaintiffs’ bears a plus + sign.
To my mind, even if the test of “imperfect memory” is applied [which, in any case, cannot be pressed too far], it does not have me conclude, at least at this stage, that Dabur’s product could be confused with that of the plaintiffs’. Clearly when a consumer buys defendant’s product, it cannot miss the word mark “Dabur”. “
In view of the above, the Court concluded that it was not inclined to grant an injunction in favour of the Plaintiff and against the Defendant.
The Court, however, clarified that the observations made in the order would not impact the final adjudication of the case.
Senior Advocate Chander M Lall with Advocates Jawahar Lal, Nancy Roy appeared for the Plaintiff.
Defendant was represented by Advocates Hemant Singh, Mamta Jha, Manish Kumar Mishra, Akansha Singh.