Not An Honest Adoption: Bombay High Court Grants Interim Relief To Parachute Hair Oil In Trademark Infringement Case
The Bombay High Court allowed an Interim Application preferred by Marico Limited against Zee Hygine Products Pvt. Ltd., alleging infringement of trademark, copyright, and passing off.
The Bombay High Court has granted interim relief to ‘Parachute’ Hair Oil in a trademark infringement case against ‘Cocoplus’.
An Interim Application was preferred by Marico Limited against Zee Hygine Products Pvt. Ltd., alleging infringement of trademark, copyright, and passing off.
A Single Bench of Justice Sharmila U. Deshmukh observed, “The use by the Defendant of Plaintiff’s trade mark cannot be said to be an honest adoption for the simple reason that though having a registered trade mark, the Defendant has deviated from the mark and has adopted a mark which is deceptively similar to the Plaintiff’s registered trade mark. Such conduct by the Defendant with knowledge of the Plaintiff’s registered mark cannot be said to be a honest adoption.”
The Bench reiterated that in case of infringement of trade mark which is already in existence, the subsequent user has obligation to avoid unfair competition and become unjustly rich by encashing on the reputation and goodwill of the prior user.
Advocate Hiren Kamod appeared on behalf of the Plaintiff while Advocate Harsh Desai appeared on behalf of the Defendants.
Facts of the Case
The Plaintiff came with the case of infringement of its three registered trademarks/trade dress, copyright in the artistic work, and passing off of three products i.e., ‘PARACHUTE’, ‘PARACHUTE ADVANSED’ and “PARACHUTE JASMINE/PARACHUTE ADVANSED JASMINE”. In 1948, the Plaintiff’s predecessor adopted the mark ‘PARACHUTE’ which was used openly and extensively since then. The Plaintiff’s edible coconut oil product is sold under the said trademark. The Plaintiff’s hair oil containing coconut oil is sold under the “PARACHUTE ADVANSED” trade mark which was adopted as formative mark since the year 2007 and another variant being “PARACHUTE ADVANSED GOLD” was introduced in the year 2019 with the unique distinctive artistic work retaining the essential features. The Plaintiff is the registered proprietor of the device mark. In 2010, the Plaintiff came across a trademark application filed by Defendant for the mark “UNIQ-PURE-COCO”.
The said application was opposed by the Plaintiff and no counter statement was filed and the same was deemed to be abandoned as the Plaintiff did not come across actual products of the Defendant at that time and the application did not proceed further. In 2017, the Plaintiff came across another trademark application filed by the Defendant for the mark ‘COCO-PLUS’, which was opposed by the Plaintiff and pending adjudication. In 2021, the Plaintiff came across range of oil products manufactured and marketed by the Defendant. A cease and desist notice was issued to the Defendant and in view of the pandemic prevailing circumstances, the Plaintiff was not in a position to ascertain whether the Defendant had complied with the Plaintiff’s requisition. A second notice was issued to the Defendant to which there was no response. Prior to the filing of Suit, the Plaintiff conducted search on the website of Trademarks Registry which revealed that the Defendant has fraudulently obtained registration of a device mark.
Reasoning
The High Court after hearing the contentions of the counsel, remarked, “In the instant case, even assuming arguendo of the Defendant’s use since the year 2008, the same will not tilt the balance of convenience in favour of the Defendant particularly when the Plaintiff is prima facie shown to be prior user. It is also not the Defendant’s case that he had inspected the trade mark Registry and did not notice the Plaintiff’s mark. On the contrary, the fact that in the year 2010, the Plaintiff had opposed the registration of Defendant’s mark, put the Defendant to notice about the registered trade mark of the Plaintiff and the balance of convenience cannot be said to be in favour of the Defendant.”
The Court said that in this case, the Plaintiff has made out a prima facie case of infringement of trade mark and the use by the Defendant of the trade mark which is so deceptively similar to that of the Plaintiff’s trade mark which is likely to cause confusion in public and show association with the Plaintiff’s product.
“Considering the rival marks, the consumer base of the products is likely to be confused as the distinctive colour/trade mark/trade dress/packaging adopted by the Plaintiff has been copied by the Defendant going as far as copying the shape of the bottles/containers. Prima facie, the first impression which is created upon a visual of both the products would indicate structurally and visually similarity which is likely to cause an association of Defendant’s product with that of the Plaintiff. It is not only necessary to protect the Plaintiff’s proprietary rights in the registered trade mark but also to protect the consumers”, it further noted.
The Court added that in event the interim relief of infringement of trade mark and copyright is not granted, the Plaintiff will suffer irreparable harm, loss and prejudice. It also clarified that it is open for the Plaintiff to apply for interim relief in terms of passing off after leave has been obtained.
Accordingly, the High Court allowed the Application.
Cause Title- Marico Limited v. Zee Hygine Products Pvt. Ltd. and Others (Neutral Citation: 2025:BHC-OS:9444)
Appearance:
Plaintiff: Advocates Hiren Kamod, Nishad Nadkarni, Aasif Navodia, Khusbhoo Jhunjhunwala, Jaanvi Chopra, and Rakshita Singh.
Defendants: Advocate Harsh Desai
