IP Connect

India: Emami Succeeds in design and Trade Dress infringement case against Patanjali

In a recent order passed by the Calcutta High Court, Baba Ramdev’s Kesh Kanti hair oil bottle was found to infringe the design of Emami’s Kesh King Oil bottle. Misuse of IP rights by way of trade dress infringement has been very common in the FMCG sector and we often encounter replicas of personal care items in the market. The adoption of similar design of a known product often misleads the consumers, thereby passing off the goods of the registered proprietor.

Brief Facts of the Case

Emami Limited (hereinafter referred to as Petitioner) headquartered in Kolkata is an Indian producer of fast-moving consumer goods, engaged in personal care and healthcare businesses. Patanjali Ayurved Limited & Anr. (hereinafter referred to as the Respondent) founded by Indian Hindu Swami and Yog-rihi Baba Ramdev is an Indian FMCG company and is engaged in production of mineral and herbal products.

In the instant case the disputerevoves around the Respondent's hair oil namely "Patanjali Kesh Kanti". The Petitioner in the case has accused the Respondent of infringing the registered design as its trademark "Kesh King" which is used by the Petitioner for its hair oil.

The aesthetic features of a product are protected under Section 2(d) of the Design Act, 2000, which defines a “design” as: “features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device…”

Contentions of the Petitioner:

That originally, the trademark and design of the impugned product was held by Sanjeev Kr. Juneja, however through assignment of the trademark as well as the design of bottle the Petitioner acquired absolute right in the intellectual property of the impugned product.

That pursuant to acquisition, the Petitioner vide advertisements and promotions also acquired goodwill and reputation in them.

Petitioner’s Grievances

The Petitioner alleged that the Respondent is manufacturing and selling its hair oil under the trademark “Kesh Kanti” which is structurally and phonetically similar to its trademark “Kesh King”.

The Petitioner has further alleged that apart from infringing its trademark, the Respondent has also infringed its trade dress by adopting the unique design of its bottle.

That the Respondent is passing off the goods in a deceptive manner.

The Petitioner in the case has claimed to be user of the impugned bottle design since 2011 and obtained its registration in 2011. The Petitioner alleges that the imitation of its registered design constitutes infringement and hence is entitled to appropriate protection of its IP under the law.

Court’s holding in the case:

The Court in the case found a prima facie case against the Respondent and granted exparte injunction to the Petitioner by restraining the Respondent from using Petitioner’ registered design, get up or colour which in any way resembled the registered design of Petitioner’s hair oil bottle.

Later on the Calcutta High Court by its order dated May 11, 2016 declared that the parties in the case had resolved their disputes and a further date of May 16 was assigned to the parties for appearance in the case.

Conclusion

Although the current case was resolved between the parties amicably, it is also a perfect example of how competition between Patanjali and the rest of the FMCG sector is heating up. Recently, the Haridwar based company was given the distinction of being the fastest growing FMCG Company by CLSA (Credit Lyonnais Securities Asia) and HSBC. Additionally, this is not the first time that Patanjali has landed itself in a controversy. Earlier, Advertising Standard Council of India (ASCI) found the advertisement for the brand ‘Kesh Kanti’ misleading as Patanjali reportedly failed to provide any clinical evidence for the claims made in its advertisement campaign.