New Delhi: The Delhi High Court has awarded damages of Rs 1.2 crore to multinational pharma company Johnson & Johnson in an infringement case relating to its trademark ORSL, a brand of electrolyte drinks.
The court Tuesday penalised the makers of the product ElectroORS and also restrained them from manufacturing deceptively similar drinks and copying the packaging and branding of Johnson & Johnson’s electrolyte drink.
A bench of Justice Mini Pushkarna pointed to confusion among consumers regarding the drinks, saying: “The present case is a clear example wherein the triple identity test is satisfied. The marks/trade dress of the parties are similar. The areas of operation/business are the same, and the target consumers are also similar.”
The “triple identity test” looks for three things: whether a set of goods or services are identical to each other; whether the trade channel or customers are identical; and whether the marks are identical.
The order noted that Jagdale Industries had first introduced the ORS-L brand by way of flavoured electrolyte drinks in 2003. It came to be known for its apple, lemon and orange flavours. Johnson & Johnson acquired the brand in 2014 and the trademark ORS-L was subsequently changed to ORSL.
In 2022, upon finding out that an Andhra Pradesh-based firm, Sree International India, along with another Tamil Nadu-based company, Pure Tropic, had been making products bearing similar trademark and trade dress, Johnson & Johnson approached the high court seeking a permanent or interim injunction that would restrain them from making the product.
An injunction is a court order requiring a person to do or cease doing a specific action. It can either be issued temporarily or even permanently, as a final judgment in a case.
Essentially, Johnson & Johnson claimed its product’s infringement and passing off of its trademarks in this case. Infringement occurs where there is unauthorised use of a registered trademark, whereas passing off refers to misrepresenting one’s own goods or services as those of another while infringing on the other’s trademark or brand reputation. The defendants in the case at hand used the marks ORSI and ERSI.
A core tenet of passing‑off law is that “a man may not sell his own goods under the pretence that they are the goods of another man”, the Delhi High Court had said in the 1996 case N.R. Dongre And Ors. vs Whirlpool Corporation.
Taking note of the defendants’ product packaging and finding it similar to Johnson & Johnson’s, the court observed Tuesday that they had made “minor alterations” in the packaging of their product, which increased the likelihood of confusion among the consumers.
Relying on its 2014 ruling in Heifer Project International vs. Heifer Project India Trust, the high court said the triple-identity test had been satisfied in this case.
It noted that the trademarks were “nearly identical” along with the areas of operation, and the segments of public they targeted. “The defendants’ use of these nearly identical and deceptively similar marks is certain to cause deception and confusion among the general public,” the court said.
The court added that the dress, mark and packaging of the defendants’ products would also cause confusion and deception among “any unwary purchaser”, especially since the goods are easily-available as over-the-counter products, and available on e-commerce platforms.
“The present is a case of blatant infringement and passing off,” the court noted, awarding cumulative damages in favour of Johnson & Johnson to the tune of Rs 1,21,56,864.
(Edited by Nida Fatima Siddiqui)