Honasa Consumer Limited v. Cloud Wellness Private Limited & Anr.

6.10. The Plaintiff uses the same colour combination for different products, and the dates indicate the launch of those variants, such as sunscreens, lotions, serums etc. The dates relied upon by the Defendants pertain to the launch of particular product variants within the cosmetic range. Therefore, the earliest use of the Subject Trade Dress is 2020.

6.11. The Defendants have blatantly copied the entire color scheme, get-up, layout and overall representation of the Subject Trade Dress. The Subject Trade Dress has been identically copied by the Defendants. In respect of the orange packaging, the outer packaging has almost two-thirds portion in orange on the top and the remaining one-third portion at the bottom in white, the entire inner packaging is orange in color, and the cutout at the bottom on the inner packaging has been identically placed in order to deceive customers. The Defendants’ unlawful adoption and use of the Impugned Trade Dress in respect of their products amounts to infringement of copyright and passing off.

6.12. The Defendants’ claim that ‘it is the dermo cosmetics approach to adopt a particular colour for a product across the globe’. Thus, it is an admitted position that Defendants admit to copying ‘industry norms’, which in fact is a copy of the Subject Trade dress.

6.13. As the present Suit is based on the identical packaging adopted by the Defendants, which has been copied from that of the Plaintiff, the reliance on certain third-party packaging by the Defendants is untenable. The images relied on by the Defendants are merely screenshots from the internet without proof of actual use in the market. No product, invoice, or document has been filed to substantiate third-party use. It is settled law that infringement cannot be justified on the ground that others may also be infringers therefore the reliance on thirdparty use is wholly misconceived.

6.14. It is inconceivable that the Defendants, when commencing their business, were unaware of the Plaintiff’s Products being sold under the Mark ‘THE DERMA CO.’ given the Plaintiff’s significant market presence, high advertising spend and extensive consumer reach. The Defendants not only adopted a similar name but replicated the Subject Trade Dress in respect of identical products. The Defendants’ adoption was neither independent nor coincidental, but a calculated attempt to ride upon the goodwill, recognition and brand equity built by the Plaintiff in respect of its products.

6.15. Such use, if not stopped, would encourage other entities to misuse the Subject Trade Dress and make undue commercial gains. Apart from damage to the Plaintiff’s business, the Defendants are perpetrating fraud and deception on the unwary members of the trade and public by passing off their business / products as that of the Plaintiff’s which would eventually result in erosion and dilution of the reputation and goodwill of the Plaintiff. Such erosion cannot be compensated in pecuniary terms while the Plaintiff continue to suffer each day on account of the impugned acts of the Defendants and as such the Defendants should be restrained from resorting to such deception and unfair trade practices and competition.

6.16. A layout / colour combination / overall representation of the Defendants’ website identical to that of the Plaintiff’s website as depicted below: a) WEBSITE OF THE PLAINTIFF ‘www.thedermaco.com’ b) WEBSITE OF THE DEFENDANTS ‘www.dermatouch.com’

6.17. Reliance was placed on Colgate Palmolive Co. v. Anchor Health and Beauty Care (P) Ltd., 2003 SCC OnLine Del 1005; Cadbury India Ltd. v. Neeraj Food Products, 2007 SCC OnLine Del 841; Seven Towns Ltd. v. Kiddiland, 2016 SCC OnLine Del 5168; Marico Ltd. v. Mukesh Kumar, 2018 SCC OnLine Del 13412; and Marico Ltd. v. Zee Hygiene Products (P) Ltd., 2025 SCC OnLine Bom 2541 to submit that in passing off actions, the decisive factor is the overall impression of the colour combination, shape of container, packaging, getup or layout rather than minute differences.

6.18. Reliance was placed on Colgate Palmolive Co.(supra); Seven Towns Ltd (supra); and Marico Ltd. vs. Zee (supra) to submit that even though monopoly cannot be claimed over a single colour, substantial reproduction of a distinctive trade dress that has acquired secondary meaning is likely to mislead unwary consumers and amounts to passing off. The subsequent entrant must carve out its own independent identity and not ride on the goodwill of the prior user.

6.19. Reliance was placed on Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1 and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 to submit that the foundation of passing off lies in prior use and goodwill. The classical trinity of passing off goodwill, misrepresentation and damage guides the inquiry.

6.20. Reliance was placed on Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65; Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90; Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744; and Zee Hygiene Products (P) Ltd., (supra) to submit that where deception is shown, injunction normally follows. Mere delay in bringing an action is not fatal unless coupled with acquiescence.

6.21. Reliance was also placed on KRBL Ltd. v. Praveen Kumar Buyyani, 2025 SCC OnLine Del 198 and Cadbury India Ltd. (supra) to submit that likelihood of confusion, judged from the standpoint of an average consumer with imperfect recollection, suffices. The focus should be on similarities rather than dissimilarities, and deliberate copying raises a presumption of deception. Even without side-by-side comparison, if the overall idea or impression is copied, the same results in infringement.

6.22. Reliance was further placed on Sanjay Soya (P) Ltd. v. Narayani Trading Co., 2021 SCC OnLine Bom 407 and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164 to submit that copyright protects the expression of an idea and not the idea itself, and registration is not a prerequisite. Protection arises automatically on creation, and infringement can be direct or indirect, proved through substantial similarity in protectable elements.

SUBMISSIONS ON BEHALF OF THE DEFENDENTS

7. The learned Senior Counsel for the Defendants made the following submissions:

7.1. The Plaintiff has claimed the copyright in the Subject Trade Dress since the year 2019. The Subject Trade Dress comprising of two colours in the ratio of 2/3rd: 1/3rd is a copy of prior existing ‘work’ / trade dress of one ‘Hylamide’ (“Hylamide art work”) which has adopted the similar trade dress since the year

2015. As per Section 13 of the Copyright Act, the copyright subsists only in ‘original artistic work’. Hylamide art work is published or unpublished or now not in market, is not a relevant factor under the Copyright Act to confer the copyright in any work as even the unpublished work is also considered as the ‘original artistic work’. Thus, ‘Hylamide’ is the owner and author of ‘original artistic work’ since the year 2015 and, therefore, the Subject Trade Dress is not the ‘original artistic work’ within the meaning of Section 13 of the Copyright Act.

7.2. The designer company or the Plaintiff has also not demonstrated any document about the creative effort, artistic expertise, independent application of labour, skill, and investment in the Subject Trade Dress. The designer of the Subject Trade Dress has also not given a certificate of ‘originality’ of the Subject Trade Dress. The Subject Trade Dress as defined by the Plaintiff, is exact reproduction / substantial reproduction of / or pirated from the Hylamide art work. Such two-colour tone scheme for the artistic work / trade dress is adopted by at least four other companies prior to the Plaintiff. The trade dress of such four other companies (“similar art work”) as depicted in the Defendants’ documents is reproduced below:

7.3. The similar art work is also having two colour tone in a different ratio of colour combination. Therefore, merely changing the ratio of colour combination is insufficient to qualify the work as ‘original artistic work’ and a copyright under the Copyright Act.

7.4. The Plaintiff has claimed that the Subject Trade Dress and the Mark ‘DermaCo.’ with a sign of star mentioned in the bottom white colour and product description in the top coloured brand arrangement is ‘original artistic work’ under the Copyright Act. The Subject Trade Dress, being a mere juxtaposition of two colours in a horizontal or vertical plane, does not reflect any artistic skill or individual expression and is, in any case, incapable of being characterised as original. A colour combination simpliciter cannot constitute an ‘artistic work’ under Section 2(c) of the Copyright Act unless there is an identifiable element of creative authorship.

7.5. The Plaintiff’s Products and the Defendants’ Products are sold on the basis of the chemicals and combination of the chemicals, the intended purpose, name of the company, price of the product and such other aspects and not on the basis of the trade dress. The type of the nature of products in question is such that the consumers are likely to purchase the same only on the basis of the contents and the specific ingredients present therein, and based on their skin concerns, and not solely on the basis of the packaging. As regards, the goodwill, the Plaintiff has claimed sales turnover, advertisement in respect of the Plaintiff itself and not its subsidiary Derma Co., which is selling the products under the Subject Trade Dress. Mere combination of two colours which are taken from public domain would never be subject matter of a copyright that can be protected under Section 13, 14, 51 of the Copyright Act.

7.6. As per the data furnished by the Plaintiff for the year 2020, the sales turnover of all the three two-colour toned products of Derma Co was ₹13 lacs and in the year 2021 it was ₹18.82 lacs. As against this the Defendants’ sales turnover for Financial Year 2021-22 was ₹2,87,98,420/-. The Plaintiff and the Defendants have co-existed in the market for a period of more than 4 years. During these years if there was any likelihood of confusion, it should have been reflected in a drop of sales of the Plaintiff’s Products. On the contrary, there is an increase in the sale of the Plaintiff.

7.7. The Defendants have invested significantly in building its own brand, including an approximate turnover of ₹63 crores and over ₹22 crores spent on marketing and promotion in the last financial year. The Defendants’ Products enjoy high ratings on online platforms, indicating their own independent goodwill and customer base built on product quality. Additionally, it is an issue to be tried as to who is the first and prior user of the two colour tone trade dress and whether trade dress passes the test of originality.

7.8. The Defendants have adopted the Impugned Trade Dress in good faith, based on dermatological category conventions and market research, and not with the intent to imitate or cause confusion with the Plaintiff's Products. The use of such colour combinations is widespread and rooted in honest trade practices within the skincare industry. Multiple skincare brands utilize similar colours based on widely accepted colour theory. For instance: Turquoise is commonly used for acne products, symbolizing calmness, clarity, healing, and cleanliness. Orange is widely associated with sunscreen products or radiant skin due to its link to sunlight, energy, and warmth, making it intuitive for consumers. It also provides strong shelf appeal and aligns with themes of vitality and optimism. Given the industry-wide usage of these colour schemes, the Plaintiff cannot claim to be the originator or exclusive user of any specific combination and thus cannot claim infringement. Therefore, the Plaintiff cannot claim Distinctiveness or acquisition of secondary meaning independent of the Plaintiff’s Marks. The Plaintiff has failed to demonstrate that the Subject Trade Dress has acquired distinctiveness and secondary meaning in the market.

7.9. The Defendants are circulating the Impugned Trade Dress to proposed customer since 26.12.2020 and publishing their products in public domain such as YouTube since the year 2021-

22. The Defendants have sold the product since the year 2021 openly extensively and continuously. The Plaintiff was using one different label up to March- April 2021 and the Subject Trade Dress is at the best adopted under different brand name / description since April 2021 onwards. Thus, it is highly disputed triable issue in the present case that which party is the prior adopter and use of the Subject Trade Dress.

7.10. There is material distinction between proprietary right in a brand name / wordmark vis-à-vis get up / trade dress. There can hardly be passing off by get up alone. The Plaintiff must prove that the get up concerned indicates the Plaintiff’s Products and no one else’s. A trader who introduces a new feature into the get up does not thereby acquire any proprietary interest in it, so as to be able to prevent its use by competitors, until it has become so identified with his goods that its use by others is calculated to deceive. No case can be made merely by showing an imitation of the parts of the get up of products which are common to the trade.

7.11. Without prejudice, the best case of the Plaintiff of adoption and use of the two tone colour scheme for the product is of the year 2020-21 vis-à-vis the adoption and use of the two-tone colour scheme by the Defendants since the year 2020-21, within the short span of few months after the Plaintiff’s actual use of the product in the market under the Subject Trade Dress. Therefore, in absence of specific pleading by the Plaintiff in the present case to the effect that within the short span of a few months by which the Defendants launched their products under the Impugned Trade Dress in the market, the Subject Trade Dress had already acquired the sufficient goodwill, the Plaintiff fails to make out a prima-facie case.

7.12. It is trite law that a relevant consideration for grant of interim injunction is whether the defendant is yet to commence his enterprise or whether he has already been doing so. In the latter case, considerations is somewhat different from those that apply to a case where defendant is yet to commence his enterprise. Status quo ante is not permissible at least in the case of passing off action and in the case of infringement of copyright where ‘originality’ of the artistic work is prima-facie not established.

7.13. Both the Plaintiff and the Defendants have been coexisting in the market for over 4 years, offering skincare products under their respective trade dresses. The business operations of the Defendants, the contractual obligations, and the reputation of the Defendants would be adversely affected if an ad-interim injunction is granted in favour of the Plaintiff. Once the Defendants are out of the market, there is no chance to regain the lost business, the reputation and the market standing.

7.14. Any loss suffered by the Plaintiff can be adequately compensated by a monetary award. The Plaintiff has not demonstrated any comparable prejudice that it would suffer in the absence of interim relief, particularly when it has itself delayed the initiation of proceedings despite having full knowledge of the Defendants’ Products and the Impugned Trade Dress since at least August 2024.

7.15. Reliance was placed on decision of this Court in Britannica Industries Ltd.

V. ITC Ltd., FAO (OS) (COMM) 77/2016 and CM Nos. 33194/2016, Samsonite Corp V. Vijay Sales, 1998 SCC OnLine Del 324, ITC Ltd.

V. CG Foods (India) Pvt. Ltd., 2021 SCC OnLine Kar 14700 to submit that mere similarities in packaging or get up are not sufficient; the Plaintiff must establish that the public associates the trade dress exclusively with its goods.

7.16. Reliance was placed on decisions in Uniply Industries Ltd. V. Unicorn Plywood Pvt. Ltd., (2001) 5 SCC 95 to submit that the court should be cautious while granting an injunction which would affect the trade and business of another person using an identical mark.

7.17. Reliance was also placed on the decision in Himalaya Drug Co.

V. SBL. Ltd., 2010 SCC OnLine Del 2206 to submit that where the parties have co-existed in the market for a substantial period, the plaintiff must demonstrate concrete evidence of actual confusion in the minds of consumers. Mere apprehension or theoretical likelihood is insufficient and that in cases involving long standing market presence by both parties, the absence of credible proof of deception or misidentification is determinative.

ANALYSIS AND FINDINGS

8. The principles upon which interim injunction is granted is well settled. The prayer for grant of an interim injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested, uncertain and remain uncertain till they are established at the trial on evidence. The object of the interim injunction, is to protect the plaintiff against injury by violation of his rights for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The Court in restraining a defendant from exercising what the defendant considers his legal right and what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant is yet to commence his enterprise or whether he has already been doing so as for determining the grant of an interim injunction.

9. The conditions for grant of interim injunction under Order XXXIX Rules 1 and 2 of CPC are prima facie case, balance of convenience and irreparable injury. To assess whether the Defendants are liable to be injuncted pending the Suit for the alleged action of infringement of copyright in the Subject Trade Dress, the Plaintiff has to fulfil these three conditions. In applying these tests, the question of ‘deceptive similarity’ between the Subject Trade Dress and the Impugned Trade Dress assumes significance, keeping in view (i) the class of persons who are likely to be confused or deceived, and (ii) the manner in which similarities are to be evaluated in law.

10. It is well recognised that ‘perceptions’, be it ocular, mental or aural, can vary based on age, gender, social and economic exposure, intellect and other such factors. The person in this case must be understood, keeping in view the nature of the goods sold, the circumstances of sale, the class of persons to whom the product is sold and other factors.

11. The relevant public for the products in question consists of consumers of skincare products such as sunscreens, serums and lotions. The Plaintiff’s Products and the Defendants’ Products are specialised formulations intended to serve specific purposes, as is evident from the product descriptions. Both the Subject Trade Dress and the Impugned Trade Dress claim to contain differential chemical compositions, varying percentages of active ingredients, recommendations for distinct skin types, and assurances of particular protection or benefits that the product would confer on the user. The trade dresses of both the Parties prominently display components like kojic acid, hyaluronic acid, niacinamide along with their percentage used. The very manner in which these details are presented on the trade dresses reflect that the purchaser is expected to evaluate them and choose accordingly.

12. A variation in composition or absence of a particular ingredient is sufficient to alter the consumer’s purchasing decision. When the composition itself is distinct, the product ceases to be the same in substance, and the consumer’s choice is thus guided by this fundamental difference. The decision to purchase is, therefore, guided primarily by the formulation and claimed efficacy, making it unlikely that the similarity in trade dresses alone would mislead an average purchaser.

13. It is also pertinent to note that the Impugned Trade Dress does not carry the brand name ‘THE DERMA CO.’ The Defendants market their products under the brand name ‘DERMATOUCH’, which is displayed conspicuously on the Impugned Trade Dress. The Defendants’ variants such as ‘SPF 60 PA+++ Broad Spectrum Sunscreen’ or ‘Mild Cleansing Lotion’ indicate that the consumer would make the purchasing decision depending on the degree of protection the concerned Spectrum Sunscreen would offer, and the degree of skin tolerance, etc. Alongside this, the description of the Plaintiff’s Products such as ‘Hyaluronic Sunscreen Stick’ or ‘1% Kojic Acid Daily Face Wash’ is conspicuously placed in the coloured portion, thereby giving the Subject Trade Dress a usage identity on the basis of which a consumer would be making a purchasing decision. While the Defendants may also be employing a two-tone colour scheme, the brand name, percentage of the ingredients involved and dermatological consideration and recommendations of the medical practitioners differ.

14. It is the interplay of the Mark ‘THE DERMA CO.’ with the descriptive content on the Subject Trade Dress that provides the distinct identity to the Plaintiff’s Products, and not the mere use of two-tone colour arrangements. Therefore, when it is taken into account that the features of the product, its composition, and its intended purpose all of which are stated on both the Plaintiff’s Products and the Defendants’ Products, the likelihood of confusion does not prima facie arise so as to justify an interim injunction against the Defendants.

15. It would also be useful to refer to Colgate Palmolive Co. Ltd. (supra) relevant Paragraph of which is reproduced below:

specially blended colour. The usual Armour Label is white over red instead of red over white, as the plaintiffs use the colour, but in some cases Armour uses red and white bands vertically. What the plaintiffs are really asking for, then, is a right to the exclusive use of labels which are half red and half white for food products. If they may thus monopolize red in all of its shades the next manufacturer may monopolize orange in all its shades and the next yellow in the same way. Obviously, the list of colors will soon run out…’ [Emphasis supplied]

16. It is also pertinent to note that as stated in Professor Wadlow’s summary at Paragraph Nos. 8-133 of The Law of Passing Off (4th edition) that market reality is as such that ‘goods are almost always referred to by their trade names, not their get-up’. The relevant paragraph is reproduced below: “The difficulty confronting the claimant in all actions for passing-off based on get-up is that it is unusual for one trader's goods to be distinguished from those of his competitors exclusively, or even primarily, by their get-up. Normally a brand name or other mark is chosen and given prominence and it is this on which consumers are expected and encouraged to rely. To make out a case based solely on similarities of get-up the claimant must show that deception is likely to notwithstanding the absence of his own brand name on the defendant's goods and the likely presence there of the defendant's brand name and perhaps other distinguishing matter. Not surprisingly, the cases in which passing-off has been found have predominantly been ones of deliberate deception The burden on the Plaintiffs is to prove at least, prima facie, that despite the word mark of the Defendants and that of the Plaintiffs which are prominently displayed on their respective trade-dress, the similarity in the tradedress of the Plaintiffs and the Defendants is such that there is a possibility of deception. To discharge this burden, the Plaintiffs will have to establish that he has adopted some novel, original and striking features for his get up and that the Defendants have adopted similar features.”

17. In the judgment of Division Bench of this Court in Kellogg Company v. Pravin Kumar Bhadabhai., 1996 PTC (16) 187, the contention of similar getup or trade dress was held not to be tenable. The dispute related to the plaintiff’s sale of cornflake with cartons having the description inscribed as KELLOGG'S CORNFLAKE. The respondent was selling cornflake using a carton more or less similar in size, but with the title AMIS ARISTO CORN FLAKES written just at the place where the appellant's display the words KELLOG'S CORNFLAKE. The Division Bench came to the conclusion that the principal of fading memory or imperfect recollection should not be pressed too far and the goods in question sold to people belonging to middle class or upper middle class, who are fairly educated, has to be tested accordingly. It was held that there was no chance of deception. The Division Bench while dealing with the aspect of trade dress referred to the observations made in Supers v. Specters, (1953) 70 RPC 173 as under: “10. The law relating to ‘trade dress’ is very clear. Kerly in ‘Law of Trade Marks’ (12th Ed., 1986, para 16.67) says that it is usually true in some degree that a trader's goods are recognised by their general appearance, or ‘getup’. Accordingly, resemblance or ‘getup’ is not uncommonly an ingredient in passing off and it is possible for imitation of getup alone to amount to passing off. Such cases are rare, since few traders rely on getup alone to distinguish their goods, so that trade names and word trademarks are ordinary present too; and the author says— ‘and in these days, in this country, a difference in names is enough to warn the public that they are getting one trader's goods and not the others’ (Supers v. Specters, (1953) 70 RPC 173).”

18. The Division Bench in Kellogg Company (supra) further referred to the decision of the House of Lords in Schewappers Ltd. v. Gibbens, (1905) 22 RPC, wherein the appellant was selling Soda Water in bottles, with a neck label around them, the body of the label bring of chocolate colour with a white border and a red medallion in the centre of the label. The respondents, subsequently, sold soda water in bottles with a somewhat similar neck lable round them in some colour and with a central red medallion. However, appellants’ labels showed ‘Scheweppe’s soda water’ printed on them in white characters while respondents’ contained the name ‘Gibbens Soda Water’. It was held by the House of Lords that a fraudulent intent cannot be presumed in spite of the similarities in the bottles, labels colour and medallion because the distinguishing feature of name adopted by defendants showed that they had no intention to deceive purchasers. Lord Halsbury LC observed— “I should have thought if you looked at the two bottles together no human being could have mistaken one for the other. If ‘Royal’ and ‘Flag’ were sufficiently distinctive in the case to which the learned Counsel called our attention (Payton & Co. v. Snelling Lampard & Co., (17 RPC 628), I should have thought ‘Gibbens’ and ‘Schwappes’ are equally impossible to be confounded with each other.” Lord Halsbury also said that it was ‘ridiculous’ to apply the principle of similarity in trade dress in such a situation. It was held that the name of ‘Gibbens’ was so plainly placed upon the bottle as it could possibly be and it was in the place where ‘Schweppes’ was on the bottle of the appellant, and there was no intention to deceive.

19. In Burford V. Mowling (1908) 8 CLR 212 the High Court of Australia held that defendants were entitled to sell their soap in boxes which were the same size shape material and colour to the boxes in which the plaintiff sold their soap as there was a difference in name. In Parkdale Pty Limited V. Euxu Pty Limited (1982) 149 CLR 191, Gibbs C.J. stressed the importance of the use of the difference in brand name to distinguish goods of similar appearance.

20. In Red Bull Gmbh V. Mean Fiddler (2004) E.W.H.C. 991 Lewis J. refused to grant an interlocutory injunction against the defendant which sold an energy drink as a substitute for the plaintiff’s product even though he thought there was a striking similarity in the design of the two cans because the brand names Red Bull and Sinergy were prominent in each of the cans and the defendant gave certain undertakings in relation to ‘switch selling’.

21. In Rizla V. Bryant & May 1986 R.P.C. 389 (Per Walton J) where the only significant similarity in the parties’ pack of cigarettes was the colour scheme. The plaintiff ‘Rizla’ sold papers for rolling cigarettes with the three colours blue, green and red corresponding to the weight of the paper and whether it was cut at the corners. The defendants introduced corresponding packets of papers adopting the same colour coding as the plaintiffs, but with otherwise distinct get-up and under the brand name ‘Swan’. Though evidence was led to suggest that customers used to ask for plaintiff’s goods as a packet of reds, blues, or greens, it was not sufficient to establish that the reliance on ‘colour’ was to denote the plaintiff’s brand as opposed to the type of paper. The distinct brand name ‘Swan’ used by the defendants also contributed to lowering the risk of the likelihood of deception. Walton J, while refusing to grant interlocutory order of temporary injunction held that where two or more colours are used separately for goods from the same manufacturer, the natural inference may be that the colours serve to differentiate different kinds, flavours or qualities rather than to denote the trade source.

22. It is also a trite law that mere adoption is insufficient unless it is demonstrated that the Subject Trade Dress has acquired distinctiveness in the eyes of the public. The requirement of secondary meaning is crucial, as colour combinations are registrable and protectable only when consumers have come to associate them exclusively with a single source. In the present case the Plaintiff has not furnished any material to prima facie establish that elements claimed by the Plaintiff as its Subject Trade Dress, namely a twotone panel of colours with product description in the upper panel and brand name in the lower panel have acquired a secondary meaning pointing exclusively to its goods.

23. It is also pertinent to note that the Plaintiff has not furnished any material to establish that the Subject Trade Dress had acquired distinctiveness exclusively associated with the Plaintiff particularly at the time of the Defendants’ adoption of the Impugned Trade Dress. In Himalaya Drug Co. v. SBL Ltd., 2010 SCC OnLine Del 2206 it was observed that: “..76. It appears that by and large most cases covered by the Trade Mark Act are contested intensely at the stage of interlocutory proceedings when evidence is not complete and a decision has to be taken only on the basis of the documents and affidavits placed on record at that stage. Naturally, therefore, the Court is only considering whether by the Defendant using the infringing trade mark, there is a likelihood of confusion and not whether there is actual confusion. In Gilson on Trade Marks (2008 Edn, LexisNexis), while acknowledging that the Plaintiff in a trade mark infringement need prove only that confusion is likely and that the Plaintiff need not show that actual confusion has occurred, the importance of proving actual confusion is highlighted in the following passage at Page 5-72: “[3] Relevance of Lack of Evidence of Actual Confusion Where products or services have co-existed in the market place for an extended period of time with no actual confusion and consumers would have reported any actual confusion, the factor weighs against a finding of likelihood of confusion. The Restatement (Third) of Unfair Competition notes that a Court may infer that confusion is not likely from absence of proof of actual confusion if the actor and the other have made significant use of their respective designations in the same geographic market for a substantial period of time, and any resulting confusion would ordinarily be manifested by provable facts. One of the Federal Circuit's du Pont factors and one of the Third Circuit's Lapp factors explicitly direct those Courts to analyse the length of time and conditions under which there has been concurrent use of the marks without evidence of actual confusion. Courts reason that if there were any confusion between the marks at issue, it would have manifested itself over the time the marks were used simultaneously in the marketplace.”

24. Therefore, the total of all the considerations points out that firstly, the segment wherein the Plaintiff and the Defendants conduct their business, the class of purchasers is reasonably informed and ingredient-attentive; purchase decisions are materially driven by percentages, indications, and dermatological recommendations not merely by packaging colours. Secondly, the Plaintiff’s Mark ‘THE DERMA CO.’ and the Defendants’ Mark ‘DERMATOUCH’ are visually and phonetically distinct and clearly displayed on the trade dresses, enabling consumers to distinguish between the Plaintiff’s Products and the Defendants’ Products. Thirdly, surrounding circumstances include a four-year market co-existence with no pleaded instances of confusion. These circumstances, therefore, at this stage do not warrant an injunctive relief.

25. As regards the claim of passing off, it is also a settled law that in a passing off action the plaintiff must prove the trinity of goodwill, misrepresentation and damage. Therefore, the legal onus in a passing off action is on the Plaintiff who must prove, as on the date of the Defendants’ adoption, subsisting goodwill in the get-up, a misrepresentation by the Defendants, and a likelihood of damage. Considering the material placed on record, goodwill in the two-tone labels is yet to be established.

26. Accordingly, when the essential requirements of passing off i.e., goodwill, misrepresentation, and likelihood of damage are tested on the facts in the present case, the Plaintiff falls short of establishing them at this stage. The goodwill in the two-tone labels is not shown to have been exclusively associated with the Plaintiff.

27. At this stage, the over-extension of proprietary rights would amount to creating a monopoly in features without first examining their distinctiveness, originality and secondary meaning. The Defendants have specifically raised the plea of existence of similar art works and use by other entities, and such objections go to the root of the claim of originality. Therefore, originality of the Subject Trade Dress as claimed by the Plaintiff is itself a matter that requires trial. Likewise, the question of prior adoption and use between the parties is also a disputed question of fact. These aspects can only be examined and determined on evidence during trial. Any outcome dehors such determination is neither supported by principle nor consonant with the balance that Intellectual Property Rights Law seeks to maintain between rewarding innovation and preserving free competition.

28. At this stage, restraining the Defendants would amount to interdicting a business, which has been conducted openly for several years without demonstrable prejudice to the Plaintiff.

29. Therefore, taking into account the prolonged co-existence of the Parties in the market, the disputed questions surrounding originality, prior use and distinctiveness of the Subject Trade Dress requiring determination, and the balance of convenience, which lies in favour of allowing the Defendants to continue their business till such questions are determined at trial, no case for grant of interim injunction is made out. This Application is, accordingly, dismissed.

30. List for further proceedings on 19.01.2026.

TEJAS KARIA, J SEPTEMBER 26, 2025 hk