• Goodwill: Shalimar has built substantial goodwill in its “Shalimar” mark since at least 1945, and in its particular HDPE packaging (yellow and green bottle with specific get-up) since at least 2006, as evidenced by advertisements and invoices. The public associates this packaging with Shalimar.
• Misrepresentation: Edible Products’ impugned packaging – including colour scheme, coconut tree imagery, bottle shape and configuration, and overall appearance – is so similar to Shalimar’s that an average consumer of imperfect recollection is likely to assume a connection, notwithstanding the different brand name “KMP” and “hair oil” description.
• Damage: Given Shalimar’s dominant market position (around ₹450 crore annual turnover in edible oils) and long-standing goodwill, the continued sale of the defendant’s deceptively similar product is likely to damage Shalimar’s goodwill and sales. Actual quantified loss is not required at this (interim) stage.

Significantly, the Court:

• Re-emphasised that in a passing off action, the total get-up and overall impression are crucial, not scrutiny of minute dissimilarities in label text or colours.
• Held that the difference in the type of use claimed (hair oil vs. edible oil) is legally irrelevant to passing off, especially since the underlying product is coconut oil, which has multiple uses, and since the law (per the Full Bench in Sony Kabushiki Kaisha) does not require the goods to fall in the same “class”.
• Rejected the defence that the bottle shape and overall get-up are generic or common to the trade, both because:
  • Edible Products produced no credible evidence of widespread third-party use of the same trade dress, and
  • Edible Products’ own application (in April 2023, after receiving a cease-and-desist notice) to register the shape of its bottle effectively acknowledges that the shape is capable of being distinctive.
• Applied the principle from Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. that dishonesty may be presumed when a later user adopts a similar trade dress without explanation, especially with knowledge of a prior user.
• Affirmed that a plaintiff’s decision not to sue other alleged infringers is no defence to a passing off action (Assam Roofing Limited v. JSB Cement LLP).
• Underlined the limited scope of appellate interference with a discretionary interlocutory order: the Commercial Court took a plausible view based on the materials; that is sufficient to decline interference.

The Court nonetheless made it clear that its observations are prima facie and shall not bind the trial court at the final hearing of the suit.

4. Detailed Analysis

4.1 Issues before the Court

The key issues addressed by the Division Bench were:

1. Whether Shalimar could maintain and obtain interim relief on a passing off claim, despite owning registered trademarks for some elements of its packaging.
2. Whether the classical trinity of passing off – goodwill, misrepresentation, and damage – was satisfied prima facie in relation to the impugned HDPE bottle packaging and trade dress.
3. Whether alleged differences in brand names (“Shalimar” vs. “KMP”), textual descriptions (coconut oil vs. coconut hair oil), label colours and details, and the asserted generic nature of the bottle shape were sufficient to negate a prima facie case of passing off.
4. Whether distinctions based on usage (hair oil vs. edible oil) or the classification of goods could defeat a passing off claim.
5. What evidentiary burden rests on a defendant asserting that a trade dress is generic or common to the trade.
6. To what extent an appellate court can interfere with a trial court’s discretionary order granting interim injunction in a commercial IP dispute.

4.2 Statutory Framework and the Nature of Relief

The Court’s starting point is Section 27 of the Trade Marks Act, 1999:

• Section 27(1) bars an infringement action in respect of an unregistered trademark.
• Section 27(2) expressly preserves the right of action for passing off and the remedies in respect thereof.

In this case:

• Shalimar had registration for certain devices/marks, but its specific HDPE bottle shape and full get-up as a “composite” trade dress were not registered as a shape mark.
• The interim relief granted (prayer (b)) was explicitly framed as a passing off injunction: to restrain Edible Products from “passing off its goods under the impugned trade mark/trade dress”.

The Division Bench underscored that:

• A common law passing off claim can co-exist with statutory infringement claims.
• Passing off is, in a sense, wider than infringement, because it protects the broader goodwill of the business and not merely the registered mark.
• The Manual of Trade Marks (relied on by the appellant) is of guidance only, is still in draft form pending stakeholder comments, and cannot override statutory provisions or settled jurisprudence.

4.3 The Classical Trinity Test and the Consumer Standard

4.3.1 Adoption of the classical trinity

The Court adopted the classical trinity test articulated in English jurisprudence, particularly:

• Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd. [1980] R.P.C. 31, and
• Reckitt & Colman Ltd v. Borden Inc. [1990] RPC 340 (the “Jif Lemon” case).

Accordingly, to establish passing off, a plaintiff must show:

1. That its mark/device/dress or overall appearance has acquired goodwill or reputation in the marketplace distinguishing its goods from others.
2. A misrepresentation by the defendant, likely to lead the public to believe that the defendant’s goods are those of the plaintiff or are connected with the plaintiff.
3. Actual or likely damage to the plaintiff’s goodwill due to such misrepresentation.

4.3.2 From “housewife in a hurry” to the Indian “average consumer of imperfect recollection”

In Reckitt & Colman (Jif Lemon), the House of Lords famously used the example of a housewife shopping in a supermarket, in a hurry, confronted with the rival products in close proximity, and likely to pick up the defendant’s product believing it to be that of the plaintiff.

The Calcutta High Court recognised and accepted this reasoning but observed that Indian courts have “diluted” or adapted the test to local conditions. The standard, as applied in India and in this judgment, is:

• Not the perspective of a consumer conducting a meticulous side-by-side comparison of two products.
• But the perspective of a reasonable, average consumer with no special knowledge and only an imperfect recollection of the plaintiff’s product, encountering the defendant’s product after some time interval.

For mass-market goods like edible oil:

• The consumers cut across all social and educational strata.
• The overall impression – colours, shape, imagery, layout – dominates over fine print and minor differences in wording.

This restatement is significant: it firmly anchors the Indian passing off test in a realistic view of market behaviour, which is especially important for fast-moving consumer goods (FMCG).

4.4 Application of the Trinity Test to the Facts

4.4.1 Goodwill

The appellant argued that:

• While “Shalimar” as a brand has long-standing goodwill, the shape and colour of the HDPE bottles are a relatively recent feature, introduced much later when HDPE technology became common.
• Shalimar uses multiple shapes and colours for its containers, so no monopoly over any particular bottle shape or trade dress should be recognised.

The Court, however, noted:

• “Shalimar” has been in use since at least 1945 and is “a household name”.
• The specific HDPE bottles with a yellow and green background, used for the coconut oil product, have been in use since approximately 2006, as shown by advertisements and invoices on record.

The Court’s key move was to link the brand goodwill to the trade dress:

• By 2006 onwards, the public would associate the HDPE packaging and trade dress directly with the Shalimar brand.
• Thus, the distinctive identity of the packaging becomes inextricably connected with the goodwill of “Shalimar” itself.

On the other hand:

• Edible Products claimed use of its impugned packaging only since 2017, supported by invoices from 2020 onwards.
• Even on its own showing, therefore, it is a late entrant by more than a decade in respect of this kind of packaging.

Taken together, these facts led the Court to conclude that Shalimar had demonstrated a prima facie goodwill not only in the “Shalimar” word mark, but in the overall HDPE get-up sought to be protected.

4.4.2 Misrepresentation

The central contest lay here. Edible Products argued that:

• The labels are significantly different:
  • Shalimar’s label: “Shalimar’s Coconut Oil”, with red colour predominance, coconut trees against a white sun.
  • Edible Products’ label: “KMP Ayurvedic Coconut Hair Oil”, written in brown, with coconut trees emerging from a half coconut.
• The origin is clearly marked as “hair oil” (defendant) vs. edible oil (plaintiff), which would dispel confusion.
• Per Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, added distinguishing matter (like “KMP Ayurvedic” and “hair oil”) suffices to avoid passing off.

The Court rejected these arguments and emphasised several factors:

• Colour perception in context: The defendant stressed that its text was brown while Shalimar’s was red. The Court noted that when red appears on a yellow background, it can take on a crimson hue, and on a green background, distinguishing red from brown is not easy for an average consumer. The predominant colours of Shalimar’s packaging are yellow and green, and Edible Products’ packaging uses similar combinations.
• Imagery and layout: Both products depict coconut trees and coconut motifs. One has a white “sun” background; the other has a half coconut. Both present rounded or semi-circular images, reinforcing visual similarity. The Court viewed this as insufficient differentiation in the eyes of the average consumer.
• Bottle shape and configuration: The HDPE bottles employed by Shalimar have a distinct ribbed texture and a particular indentation/notch in the cap. Edible Products adopted a strikingly similar bottle design, for which it offered no explanation. The Court treated this as a key component of the overall trade dress.
• Totality of impression: Drawing on the principle (even from the treatise of P. Narayanan, relied upon by the appellant) that in trade dress cases, one must look at the total image and overall impression, the Court held that:
  • An average consumer with imperfect recollection, seeing the defendant’s product some time after seeing Shalimar’s, is likely to be misled.
  • The letters “KMP” and the textual description “hair oil” may be pale and subordinate in the consumer’s mind compared to the visual impact of shape, colour, and coconut imagery.

This led to the Court’s vivid observation that, for such a consumer:

“…there is every possibility that the ‘trees (coconut?) will be missed for the woods’…”

That is, the overall appearance of the defendant’s product – the “woods” – will dominate over the specific words or minor differences – the “trees”.

Thus, the Court held that Edible Products’ use of a deceptively similar trade dress amounts to a misrepresentation that is likely to cause confusion as to the source or origin of the goods, satisfying the second limb of the trinity test.

4.4.3 Damage

Edible Products argued that Shalimar had not shown actual damage or a direct causal connection between Edible Products’ actions and quantifiable loss, as allegedly required by passing off principles.

The Court disagreed. It proceeded on the basis that:

• Shalimar’s sales turnover (~₹450 crore annually, as averred and not specifically denied) and market dominance in edible oils are substantial.
• Shalimar has built up its goodwill in the relevant trade dress over more than a decade, and its brand goodwill over many decades.
• If a competitor is allowed to use a deceptively similar trade dress for the same core product (coconut oil) in the same market, damage to Shalimar’s goodwill is a natural and probable consequence.

The Court concluded that in such circumstances, especially at the interim stage, likelihood of damage suffices, and actual loss need not be quantified. It held that damage to Shalimar’s goodwill was “a given” if the defendant’s packaging was allowed to continue, thus meeting the third limb of the trinity.

4.5 Treatment of Specific Defences and Precedents

4.5.1 The “hair oil vs. edible oil” distinction and the Sony / Cadila line

A central plank of Edible Products’ defence was that:

• Its product is marketed as “coconut hair oil”,
• Shalimar’s product is edible coconut oil,
• Therefore, they operate in different segments, reducing or eliminating confusion.

The Court found this unpersuasive for several reasons:

• Evidence suggested that nearly 99% of Edible Products’ turnover is from edible oil; its portrayal of itself as primarily a hair oil seller was characterised as a sham.
• Edible Products did not produce packaging for its edible oil, inviting an adverse inference that such packaging would further resemble or overlap Shalimar’s get-up.
• More fundamentally, coconut oil is a multi-use product; its use as hair oil or edible oil does not create sharply distinct markets in the mind of the average consumer.

The Court then invoked the Full Bench decision in Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills (2009) 1 CHN 852, which, relying on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, held that:

• A common field of activity or the same class of goods is not essential in a passing off action.
• Even if the goods or services of the rival traders differ, this factor alone cannot eliminate the possibility of confusion.
• The core question is confusion as to source or origin, not the precise classification of goods.

Applying these principles, the Court held that Edible Products’ reliance on “hair oil vs. edible oil” was legally untenable. In passing off, what matters is whether consumers are likely to believe that the defendant’s goods emanate from, or are connected with, the plaintiff.

4.5.2 Generic shape and “publici juris” defence

Edible Products argued that:

• The HDPE bottle shape used by Shalimar is generic and conforms to standard industrial practice in the edible oil/hair oil market.
• Shalimar has no registration over any bottle shape; hence no exclusive right should be recognised.
• Several other competitors use similar bottles; therefore the shape is common to the trade (publici juris).

The Court held that this defence fails on both evidentiary and conceptual grounds:

• Lack of evidence: Per Assam Roofing Limited & Anr. v. JSB Cement LLP & Anr. AIR 2016 Cal 41, to establish that a mark or dress is “common to trade” or “publici juris”, a defendant must demonstrate substantial and continued use of that mark/dress by others. Edible Products produced no credible evidence of such widespread third-party usage.
• Defendant’s own conduct: Crucially, Edible Products itself, on 21 April 2023 – after receiving Shalimar’s cease-and-desist notice dated 23 July 2022 – applied for registration of the shape of the bottle
• Undermines its claim that the bottle shape is generic or common to trade.
• Signals that the defendant itself considered the shape capable of functioning as a distinctive indicator of origin.