[Cites 2, Cited by 0]
Calcutta High Court
Himalaya Global Holdings Ltd And Anr vs Shimla Drugs Health Care Private ... on 4 February, 2026
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD-2
IN THE HIGH COURT AT CALCUTTA
Intellectual Property Rights Division
ORIGINAL SIDE
IA NO. GA-COM/1/2025
In
IP-COM/53/2025
HIMALAYA GLOBAL HOLDINGS LTD AND ANR.
Vs
SHIMLA DRUGS HEALTH CARE PRIVATE LIMITED AND ANR.
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
Date : 4th February, 2026
Appearance:
Ms. Suhrita Majumdar, Adv.
Mr. P. Sinha, Adv.
Mr. Dipro Dawn, Adv.
Ms. Sayani De, Adv.
Ms. Mallika Bothra, Adv.
...for the plaintiff/petitioners.
The Court: This is a suit for infringement of trademark and trade dress,
copyright and passing off in respect of the petitioner's registered trademark
"Liv.52".
Despite repeated service on the respondents through different modes
including courier, e-mail, whatsapp and speed post, the respondents remain
unrepresented.
It is alleged that the mark "Liv.52" was adopted by the predecessor-in-
interest of the petitioner no.1 as far back as in 1955 and has been in
continuous and uninterrupted use ever since in relation to medicinal and
pharmaceutical preparations. The petitioner no.1 is the registered proprietor of
the word mark "Liv.52", bearing trademark No.180564 in Class 5 which had
been obtained as far back as in the year 1957.
In addition, the petitioner no.1 is also enjoying several other registrations
in their favour, particulars whereof are set out below:
The petitioners boast of extensive sales and have incurred huge expenses
in advertising and promotional materials in respect of the above product.
The products of the petitioners under the mark "Liv.52" have also been
offered in distinctive packaging. Such packaging is in a distinctive green, white
and orange packaging, get-up and trade dress which has been used by the
petitioners continuously since 2001. The colour scheme is unique of the
petitioners' products. It is alleged that the public identifies and associates the
trademark "Liv.52" and its distinct trade dress exclusively with the product of
the petitioners.
In or about October, 2025 the petitioners came to learn of the impugned
product "Liv.72" which is available and sold in the market. For convenience,
the rival products are set out hereinbelow:
Petitioners Trade Mark Impugned Mark
LIV.52 LIV.72
In this background, the petitioners have instituted this suit and seek
interim reliefs.
On a comparison of both products, it prima facie appears that the
respondents have adopted a deceptively similar and nearly identical mark with
the sole intent to confuse and mislead consumers. The trade dress adopted by
the respondents in the impugned products and packaging bears a deceptive
similarity with the trade dress of the petitioners. The impugned trade dress
bears the same combination of the colours i.e. green, white and orange, which
is an outright imitation of the petitioners products. The trade dress adopted by
the respondents in the impugned product also has a green cap on top of a
brown plastic bottle for syrups which is deceptively identical to the product of
the petitioners. In such circumstances, there is every possibility of deception
and confusion.
Ordinarily , the plaintiff must make out a case that the use of the
defendant's mark is likely to deceive, but if the similarity between the plaintiff's
and the defendant's mark is so close either visually, phonetically or otherwise
and the Court arrives at a conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff's rights have been infringed.
In Pianotist Co's (1906) 23 RPC 774, it has been held as follows:
"You must take the two words. You must judge them, both by their look
and by their sound. You must consider the goods to which they are to be applied.
You must consider the nature and kind of customer who would be likely to buy
those goods. In fact, you must consider all the surrounding circumstances; and
you must further consider what is likely to happen if each of those trademarks is
used in a normal way as a trade mark for the goods of the respective owners of
the marks. If, considering all those circumstances, you come to the conclusion
that there will be a confusion that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but that there will be a confusion in
the mind of the public which will lead to confusion in the goods then you may
refuse the registration, or rather you must refuse the registration in that case."
In Himalaya Drug Company vs. S.B.L. Limited 2012 SCC Online Del 5701,
it has been held as follows:
"44. The courts have propounded the doctrine of prominent and essential feature
of the trade mark for the purposes of adjudication of the disputes relating to
infringement of trade mark. While deciding the question of Infringement, the court
has to see the prominent or the dominant feature of the trade mark. Even the
learned single judge agrees to this proposition when the learned judge quotes
McCarthy on Trade Marks that all composite marks are to be compared as whole.
However, it is dependent on case to case to basis as a matter of jury question as
to what can be the possible broad and essential feature of the trade mark in
question.
45. It is settled law that where the defendant's mark contains the essential
feature of the plaintiff's mark combined with other matter, the correct approach
for the court is to identify an essential feature depending particularly "on the
court's own judgment and burden of the evidence that is placed before the Court".
In order to come to the conclusion whether one mark is deceptively similar to
another, the broad and essential features of the two are to be considered. They
should not be placed side by side to find out if there are differences, rather
overall similarity has to be judged. While Judging the question as to whether the
defendant has infringed the trade mark or not, the court has to consider the
overall Impression of the mark in the minds of general public and not by merely
comparing the dissimilarities in the two marks.
46. The ascertainment of an essential feature is not to be by ocular test alone but
if a word forming part of the mark has come in trade to be used to identify the
goods of the owner of the trade mark, it is an infringement of the mark itself to
use that word as the mark or part of the mark of another trader for which
confusion is likely to result. The likelihood of confusion or deception in such cases
is not disproved by placing the two marks side by side and demonstrating how
small is the chance of error in any customer who places his order for goods with
both the marks clearly before him, for orders are not placed, or are often not
placed, under such conditions. It is more useful to observe that in most persons
the eye is not an accurate recorder of visual detail and that marks are
remembered rather by general impressions or by some significant detail than by
any photographic recollection of the whole". In the decision reported as (1951) 68
RPC 103 at page 105, De Cordova v. Vick Chemical Co., the plaintiffs were the
proprietors of a label containing the words "Vick's VapoRub" as the essential
feature, registered in Jamaica, and the defendants used a similar label with the
words "Karsote Vapour Rub" as the essential feature, and it was shown that the
expression "VapoRub" had become distinctive of the plaintiff's goods in Jamaica,
an action for infringement was successful. (See De Cordova v. Vick Chemical Co.
(supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June Perfect Ld., (1972) 1
SCC 618: AIR 1972 SC 1359 at 1362, National Chemicals and Colour Co. v.
Reckitt and Colman of India Limited and AIR 1991 Bom 76, National Chemicals
and Colour Co. v. Reckitt and Colman of India Limited).
In the above circumstances, the adoption by the respondent of the
impugned mark impugned product and the impugned packaging is prima facie
calculated to cause confusion and deception. There is a striking similarity
between two products. The similar colour combinations also adds to the
confusion and deception. There is also a prima facie case of misrepresentation
which the petitioners have been able to demonstrate.
By an ad interim order dated 23 December, 2025, the respondents were
restrained in terms of prayers (a) to (c) of the Notice Motion.
The petitioners have been able to make out a strong prima facie case on
merits.. The balance of convenience and irreparable injury is also in favour of
orders being passed as prayed for. In such circumstances, there shall be an
order in terms of prayers (a) to (e) of the Notice of Motion.
With the above directions, GA-COM/1/2025 stands disposed of.
As prayed for by the petitioners, let this matter appear in the monthly
list of March, 2026 under the heading "Case Management Hearing". In the
meantime, the plaintiffs are directed to take all necessary steps and comply
with all required formalities.
(RAVI KRISHAN KAPUR, J.)
spal
