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The cause of action for passing off are premised on “classical trinity” form or the extended form : Delhi High Court

When a Court adjudicates upon an infringement or a passing off action, it is required to take into account, not only the rights of the plaintiff and the defendant, but also the interests of the public at large. While the plaintiff is interested in preserving and protecting the investment made by her/him in the mark so that she/he can derive maximum gains, the defendant asserts a countervailing right, which is, to attract maximum number of consumers was held in the case of RB Health (US) LLC AND Anr. Vs. Dabur India Ltd., CS(COMM) 319/2020.

The facts of the case are that,  RB (US) and RB (India) claim to be part of a multi-national by the name Reckiit Benckiser PLC and they are into manufacture and sale of health and hygiene products.  The plaintiffs have approached this Court with the instant action and sought interim reliefs given the fact that Dabur has introduced a soap bar with the “offending shape and configuration”, under the brand name “SANITIZE”, on 30.07.2020. The plaintiffs in this case are seeking an injunction against the defendant from manufacturing, importing, marketing, advertising, promoting, selling and/or using plaintiff no. 1/RB Health (US) LLC’s registered design i.e. design no. 271671, falling in class 28-02, in relation to a soap bar.

Passing off is a tortious action for deceit. For such an action to succeed, it must have, in the very least, the following three indicia’s, commonly known as the “classical trinity”. The said markers are articulated in what is commonly known as the Jiff Lemon case [Reckitt & Colman Products Ltd. vs. Borden and can, broadly, be paraphrased in the manner set forth hereafter.

    1. First, the 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.
    2. Second, the 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.
    3. Third, that the action of the defendant has resulted in damage or is likely to result in damage on account of the misrepresentation of the defendant with regard to the origin of the goods and services.

While concluding on the first aspect which is concerned with colour, shape, and smell of the soap bar – there is enough and more material to show that there are several soap bars in the market with similar features if not identical features. Insofar as the second and third aspects are concerned, which pertain to, the use of taglines and indications by Dabur that are similar to those taglines and indications used by the plaintiffs – it is required to be noticed that neither the taglines nor the indications/signs are registered with the trademark authority. Since the competing products, like others products in the market, are hygiene-products, the taglines and indications/signs used by the plaintiffs appear to be “customary” in the “current language” of the trade for the purpose of designating hygiene-products which includes soap bars.

Thus, the Court held that the packaging adopted by Dabur is one which seeks to distinguish its product from that of the plaintiffs’. It needs to be emphasized that insofar as the shape and configuration is concerned, the same is not apparent to the consumer till such time the packaging is removed. Thus, not inclined to grant an injunction in favour of the plaintiffs and against Dabur.

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