Dabur India Ltd vs M/S Mughals Herbal Products & Anr
2013 Latest Caselaw 4247 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI


+    CS(OS) 388/2009

%                                           Decided on: 18th September, 2013

       DABUR INDIA LTD
                                                                ..... Plaintiff
                           Through      Ms. Meenakshi Singh, Adv.

                           versus

       M/S MUGHAL'S HERBAL PRODUCTS & ANR
                                                                   ..... Defendant
                           Through      Defendants ex-parte.

Coram:
HON'BLE MS. JUSTICE MUKTA GUPTA
MUKTA GUPTA, J (ORAL)

1.

By the present suit the plaintiff, inter alia, seeks a decree of permanent injunction against the defendants restraining them, their agents etc. from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in rose water under the impugned trade dress, or get up, or label as may be deceptively similar to the trade dress, get up and label of the plaintiff's DABUR GULABARI rose water so as to lead to confusion or deception amounting to passing off the goods/ business of the defendants for that of the plaintiff; decree of mandatory injunction to hand over to the plaintiff all goods, packagings, wrappers, cartons etc. bearing the impugned trade dress, to render the accounts and cost of the proceedings.

2. Summons in the suit were issued to the defendants on 15 th May, 2009 when an ad interim ex-parte order was passed in favour of the plaintiff and against the defendants restraining them from selling GULABARI JAL in bottles/ containers having similar/ deceptively similar trade dress to that of the plaintiff. Since the defendants No.1&2 could not be served by ordinary process they were served through substituted service and citations in this regard were published in the 'Tribune Chandigarh' Edition and 'Statesman New Delhi' Edition. None entered appearance on behalf of defendants No. 1&2 and consequently they were proceeded ex-parte on 18th May, 2010.

3. The plaintiff led ex-parte evidence and examined Shri B.K. Gupta, its Senior Manager Legal. PW1 tendered his evidence by way of affidavit and exhibited the copy of the resolution dated 29th January, 2008 authorizing him to swear the affidavit on behalf of the company which is duly incorporated under the provisions of the Companies Act, 1956. It is deposed that the plaintiff is, inter alia, engaged in the manufacture and sale of Ayurvedic preparations, healthcare products and toiletries and have been carrying on the business since the year 1884. The products of the plaintiff under the trademark DABUR are categorized in 5 divisions, namely healthcare products, family products, ayurvedic specialties, pharmaceuticals and food products. The plaintiff has acquired valuable goodwill and reputation in the mark and its annual sales turnover is approximately Rs. 1200 crores. One of the products manufactured and marketed by the plaintiff is Rose Water comprising of Hydrosol portion distillate of rose petals. This rose water has a very distinctive fragrance, aroma/ flavour and is used extensively in South Asia including India, West Asia, Middle East countries etc. Apart from

flavour and aroma, the rose water has therapeutic and cosmetic utility. The plaintiff is thus engaged in the manufacture and sale of the rose water GULAB JAL under the mark GULABARI along with the house mark DABUR for the last three decades. The trademark of the plaintiff GULABARI and the GULABARI label are registered under the Trademarks Act in Clause 5 for medicinal preparations and for rose water. The trademark certificates have been exhibited as Ex.PW1/2 and PW1/3 respectively. The plaintiff has adopted a distinctive colour combination of shades of pink and white for the trade dress of its rose water packaging. The registration number in this respect of old GULABARI label is exhibited as Ex.PW1/4 and Ex.PW1/5. The trade dress and the overall get up of the plaintiff's GULABARI rose water label and packaging have acquired distinctiveness. The annual sales of the plaintiff's rose water from 2002 to 2008 are into thousands of lakhs, the details of which are as under:

       Year               Amount of Sales (Rs. in Lacs)
       2002-03            1101
       2003-04            1552
       2004-05            1888
       2005-06            2222
       2006-07            2264
       2007-08            2764

4. The plaintiff has spent substantial amount in advertising and promotional campaign in respect of its GULABARI rose water, the details of which are as under:

Year Amount of Promotional Expenses (Rs. in Lacs)

5. Thus, the GULABARI label of the plaintiff including colour combination of pink, white and silver has acquired a distinctiveness and an exclusive right under the common law to use the same. The plaintiff has adopted a new packaging with effect from October 2007, however the colour combination and overall get up has remained the same as the previous packaging.

6. The defendants have launched its product rose water under the brand name of MUGHAL's GULAB JAL. However, the trade dress of the packaging of the defendant's product is deceptively similar to the trade dress and get up of the rose water packaging of the plaintiff in respect of colour combination and overall configuration of the packaging and their caps. Photographs of the two packages have been exhibited as EX.PW1/12 together which show the trade dress of the defendant's MUGHAL's GULAB JAL similar to the packaging of the plaintiff. From the photographs it is evident that all essential features of the defendant's packaging are

deceptively similar to the packaging of the plaintiff. The colour scheme, panel arrangements and placement of pictorial device of the rose is deceptively similar to that of the plaintiff.

7. The conduct of the defendant cannot be called as a bona-fide conduct as the defendant is in the same trade and the defendant must be aware about the packaging of the plaintiff at the time of its adoption because the plaintiff's packaging is in vogue since long. The evidence of the plaintiff has gone unrebutted. The plaintiff being the first adopter and owner of the copyright in the distinct work of DABUR GULABARI with the pink, white and silver colour therein, having spent crores on the promotion and advertisement and having extensive turnovers thereon is entitled to the relief as prayed for.

8. Consequently, the suit is decreed in favour of the plaintiff and against the defendant in terms of prayer A & B. The plaintiff is also awarded a cost of Rs. 50,000/-. The suit is accordingly disposed of.

(MUKTA GUPTA) JUDGE SEPTEMBER 18, 2013 'ga'