Trade Dress Protection Goes Beyond Labels: Calcutta High Court Affirms Injunction Over Coconut Oil Packaging Mimicry

“The test is not of a discerning consumer but of the average market-goer with ordinary recall” – In a detailed and significant ruling Calcutta High Court upheld an interim injunction granted to Shalimar Chemical Works Pvt. Ltd., restraining Edible Products (India) Ltd. from using a deceptively similar trade dress for its coconut oil packaging. The Bench of Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya dismissed FMAT No. 189 of 2024, affirming that the trial court had correctly applied the classical Trinity Test for passing off, and found no error in its reasoning.

The appellate court held that a composite assessment of shape, colour, packaging, and consumer perception must be undertaken when dealing with trade dress disputes, and such assessment, in the present case, clearly favoured the plaintiff.

“It is the total impression and get-up which is to be considered… not individual components” – Court Emphasises Holistic Trade Dress Evaluation

The plaintiff, Shalimar, had filed a suit before the Commercial Court at Alipore alleging that the defendant’s product packaging, though sold under a different name ("KMP"), closely mimicked the colour scheme, shape, and overall get-up of its own long-established HDPE bottles, used since 2006. The trial court, by an order dated May 15, 2024, confirmed an earlier ex parte ad-interim injunction passed in August 2023 and refused to vacate it.

The High Court affirmed that decision, remarking that “the cumulative appearance of the defendant’s packaging remarkably resembles that of the plaintiff… making the individual words or letters used in such device pale into insignificance.”

It further observed, “A person of average recall is the parameter, and not a particularly good observer with vivid memory… the reasonable test which should be applied.”

“The dishonesty is presumed if there is no explanation for adoption of similar trade dress” – Defendant’s Conduct Raised Inference of Misrepresentation

The Court held that no credible explanation was provided by the defendant for adopting a near-identical packaging style, especially in light of the cease-and-desist notice served upon it. In fact, after receiving the notice, the defendant had applied for registration of the bottle shape in 2023, which the Court viewed as an admission of distinctiveness rather than an assertion of generic design.

As noted in the judgment, “By the very act of making such application, the defendant/appellant has acknowledged the uniqueness and distinctiveness of the shape of the bottle and demolished its own case that it is generic in nature.”

It added that, “Dishonesty is to be presumed if there is no explanation for adoption of a similar appearance/trade dress as the prior user despite knowledge of such user.”

“Passing Off Is a Broader Remedy Than Infringement” – Court Reiterates Independence of Common Law Rights Under Section 27(2)

Dealing with the legal framework, the Court clarified that while the plaintiff’s mark is registered, the injunction was granted not for statutory infringement but on the basis of common law rights of passing off under Section 27(2) of the Trade Marks Act, 1999. It observed:

“A passing off action is an action in deceit, arising out of common law, and provides remedies in tort. Thus, the said action is, in a sense, wider in scope than an infringement action simpliciter.”

The Court relied heavily on precedents including Reckitt & Colman v. Borden Inc. (Jif Lemon Case), S. Syed Mohideen v. P. Sulochana Bai, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. to reinforce that trade dress protection stems not just from registration but from established market goodwill and consumer association.

“Market Dominance and Longstanding Goodwill Strengthen Plaintiff’s Claim” – Prior Use Since 2006 and ₹450 Crore Turnover Considered Material

The plaintiff’s trade dress in yellow and green HDPE bottles had been in consistent use since 2006, while its brand “Shalimar” dates back to 1945. In contrast, the defendant’s product entered the market in 2017, and the Court noted that the evidence of goodwill was overwhelmingly in favour of the plaintiff.

The Court recorded that the plaintiff’s turnover in edible oil was more than ₹450 crore, and held:

“The plaintiff/respondent already has an established goodwill at least for a decade… if linked in the public mind with the name ‘Shalimar’, then a legacy of goodwill of more than eight decades.”

On the other hand, the defendant’s claim that its product was hair oil and not edible oil was dismissed as misleading. The Court observed that “almost 99 per cent of the annual sales turnover of the defendant is derived from edible oil… thereby necessarily compelling the court to draw the adverse inference.”

“Even if Labels Differ, the Consumer May Still Be Deceived” – Court Applies Indian Average Consumer Test

Addressing the argument that the labels on the two bottles were different, the Court clarified that passing off is not defeated merely by label variations if the overall impression causes confusion. It stated:

“The appropriate yardstick is… how far a reasonably average person… would take the former to be the latter.”

It added that “The combination of the coconut trees… shape and colour of the bottles… may reasonably give the impression that the defendant’s product is that of the plaintiff.”

Court Rejects Generic Use and Publici Juris Defence – Finds No Evidence of Similar Trade Dress by Others

The defendant’s claim that the bottle shape and colours were common in trade was summarily rejected. The Court emphasised:

“Such defence of publici juris cannot be set up… since there is nothing on record to demonstrate substantial and continued use of the similar trade dress… by other users.”

The Court stressed that the plaintiff’s distinct ribbed texture, notched cap, and colour combination gave its packaging a distinctive and protectable identity.

No Ground for Appellate Interference – Trial Court's Reasoning Held Plausible and Legally Sound

The Division Bench concluded that the Commercial Court’s order suffered from no legal infirmity and that appellate courts must exercise restraint in interfering with well-reasoned interim orders.

“It is well-settled that the appellate court cannot substitute its own views for that of the trial court even if those are different… in the absence of any error.”

The appeal and all connected applications were dismissed. The Court, however, clarified that its findings are not conclusive on the merits of the suit, which shall be independently adjudicated.

Date of Decision: 03 December 2025