The Calcutta High Court in the case of Marico Limited
(Appellant) v. J.K. & Ors (Respondents) held that
Marico's case against J.K for use of the "NIHAL" mark
with respect to coconut oil was a clear prima facie one and as such
the court granted an injunction restraining J.K. from using the
word "NIHAL", or any other mark deceptively similar to
Marico's "NIHAR" mark.
The original plaintiffs in this case was Hindusthan Lever
Limited. During the pendency of the suit, the rights in respect of
the relevant mark "NIHAR" was assigned in favour of the
present Plaintiff/Appellant by the original plaintiff. Hindustan
Lever had obtained an ex-parte ad-interim order on GA No. 1823 of
2004 which had been reversed in appeal on June 11, 2004 on the
ground that the order was not supported by reasons. GA No. 1823 of
2004 was brought for consideration before Calcutta High Court in
the present suit.
Marico Limited, manufactured and sold coconut oil both of the
edible and the hair oil variety in pouches with the mark
"NIHAR" and other features such as the colour of the
pouch was green with the mark written in white and a picture of two
coconut trees with sun in the backdrop, further, on the top left
corner of the pouch there was an inverted triangle announcing it to
be economy pack and also indicated a price of Rs.10. In the
previous petition the complaint against J.K. was that the essential
features of the plaintiff's package had been substantially
reproduced by them.
GA No. 2250 of 2010 is the Plaintiff's second application
seeking interlocutory orders. Their contention was mainly on the
ground that although the use of the pouch had been discontinued by
them, they were still entitled to an order of injunction since
there was substantial recall value of their product being sold in
pouches and in such an event the use of the pouches by the
defendant would result in deception and confusion in the
consumer's mind. They asserted that the similarity of the get
up of J.K's pouches to Marico's pouches and the shape and
get-up of the plastic containers of J.K. nearly resembling those in
which Marico sold its coconut oil , would warrant an injunction as
The defendants/respondents on their part countered that their
pouch had "NIHAL UTTAM" written on them and the plastic
container was sold under the mark "FRESH NIHAL". It was
further contended that both pouches had evident distinguishing
features. Moreover, the plaintiff has discontinued the sale of the
pouches and so there was no question of consumers getting deceived
or confused. The defendant further laid down that they sold their
product only in Bihar, and there being no injunction order in the
last six years, no order should be passed now.
The Court opined that there was no dispute that the two marks
are used with respect to coconut oil, although J.K. claimed that
their coconut oil was only of edible grade. However, the Court said
that the products may not be identical in nature but in both being
coconut oil they were similar in nature. On a close examination of
the two marks, the Court found that in the case of both "UTTAM
NIHAL" and "FRESH NIHAL" the most significant
feature was "NIHAL", the other two words were written in
a very small manner. While applying the test used in determining
confusion, (which is, a) to see whether the offending package is
such that it may be associated with the original package or gives
an impression that it may be associated with the original package,
and b) such assessment to be done form the point of view of the
prospective customer who more often than not will not have the
opportunity of having the two packages side by side for comparison,
and thus will go by pure impression and memory), to the present
case, the Court found the mark used by J.K. "NIHAL" to be
visually and phonetically similar to Marico's "NIHAR"
mark. Therefore, Marico was granted injunction.
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