The Delhi High Court has confirmed the ex parte ad interim injunction granted on 1 August 2024 and held that, until disposal of the suit, the Defendants and all persons acting on their behalf are restrained from selling, offering for sale or advertising Golden Sella Basmati Rice in the impugned trade dress/packaging that is confusingly or deceptively similar to the Plaintiffs’ trade dress/packaging. At the same time, the Court clarified that Defendant No. 1 is not precluded from continuing its business in Golden Sella Basmati Rice if it uses packaging that is distinct and not deceptively similar to the Plaintiffs’ packaging.
The Court also clarified that in a passing off action based on packaging/trade dress, the Court must assess deceptive similarity on the basis of the overall visual impression of the competing trade dresses, focusing on similarities in the ensemble rather than dissecting individual differences. Even where individual elements such as colours, imagery or certain words may be generic or common to trade, protection may still be granted if their distinctive combination, arrangement and presentation has acquired goodwill and if the defendant has adopted a substantially similar overall get-up likely to cause confusion.
The Court essentially ruled that presence of a different house mark does not, by itself, defeat a passing off claim where the overall trade dress is deceptively similar, especially for low-cost, fast-moving consumer goods purchased on the basis of memory and visual impression. In the case of edible products such as rice, the threshold of deceptive similarity is lower and greater sensitivity is required because consumer confusion is more readily occasioned.
A Single Judge Bench of Justice Jyoti Singh observed that the governing test in a passing off action concerning trade dress is one of overall impression and deceptive similarity, to be assessed from the standpoint of a consumer of average intelligence and imperfect recollection, with greater attention to similarities than dissimilarities. On comparing the rival packaging, the Bench found striking similarities in the green and gold colour scheme, gold lettering styled to resemble Urdu/Arabic script, the use of the word “Zarda” in similar stylisation, hanging lanterns and stars, and imagery of a pulao dish with minarets, and concluded that Defendant No. 1 had copied the essential elements of the Plaintiffs’ trade dress and attempted to come as close as possible to it.
The Bench rejected the defence that the presence of the house mark “DOUBLE CHABI” was sufficient to dispel confusion, observing that in the case of rice, a fast-moving edible commodity sold through common trade channels, purchasing decisions are predominantly influenced by visual recognition of packaging rather than careful textual scrutiny of brand distinctions. The Bench also held that even if “Zarda” were assumed to be generic or descriptive, that did not materially weaken the Plaintiffs’ claim because the gravamen of the action lay in the deceptive imitation of the overall trade dress and visual presentation.
The Bench further found that the Plaintiffs had prima facie established goodwill and distinctiveness in the relevant packaging by producing material showing cumulative sales of more than Rs. 86.16 crores under the 10X Zarda King packaging, GST invoices for printed laminated packaging, promotional material, endorsements, hoardings, online listings and a CA certificate. It observed that the sales figures and expenditure could not be treated as nominal for an FMCG product such as rice and were sufficient at the interim stage to support the Plaintiffs’ claim of strong market presence and goodwill in the impugned trade dress.
The Bench also rejected the Defendant’s reliance on third-party use of “Zarda”, holding that the Plaintiffs were not required to sue every alleged infringer and that none of the material showed use of “Zarda” with a deceptively similar trade dress of the kind adopted by Defendant No. 1.
Briefly, the Plaintiffs, GRM Foodkraft Pvt Ltd. and its parent entity, asserted that they had launched Golden Sella Basmati Rice in 2021 under the house mark “10X” and sub-brand “Zarda King”, using a specially designed packaging/trade dress featuring, inter alia, a green and gold colour scheme, stylised gold lettering resembling Urdu/Arabic script, hanging lanterns and stars, a crescent moon and imagery of pulao with Arabic-style architectural elements. They pleaded continuous and extensive use of this packaging, substantial sales exceeding Rs. 86 crores in about three years, and significant promotional expenditure, and claimed that the packaging had acquired goodwill and distinctiveness in the market.
In July 2024, they discovered that Defendant No. 1 was selling identical goods, namely Golden Sella Basmati Rice, in packaging alleged to be deceptively similar, leading to the institution of the suit and the grant of an ex parte ad interim injunction on 01.08.2024 restraining sale under the impugned trade dress. Defendant No. 1 sought vacation of that injunction, contending that the elements relied upon by the Plaintiffs were generic or common to trade, that “Zarda” was descriptive/generic, that the house mark “DOUBLE CHABI” distinguished its product, and that the rival packaging were not deceptively similar.
