Cool Oil, Hot Dispute: Trade Dress And Passing Off In Emami vs Dabur Case

Summary

A familiar red bottle of cooling oil became the centrepiece of a significant trade dress dispute before the Delhi High Court in Emami Limited vs. Dabur India Limited (CS(COMM) 532/2023, judgment dated 31st January, 2026). Emami Limited (herein the Plaintiff), maker of the iconic Navratna “Thanda Thanda Cool Cool” oil, alleged that Dabur India Limited (herein the Defendant), sought to unfairly capitalise on its decades-old goodwill and reputation by imitating the distinctive “look and feel” of its product through the launch of  “Cool King Thanda Tael”.

Notably, the dispute does not concern the word mark “NAVRATNA” nor the exclusive right to sell red-coloured cooling oil. Instead, the controversy centres on trade dress, the cumulative visual impression created by packaging, colour schemes, layout, and overall presentation; and whether the Defendant’s new product amounts to passing off claims rather than legitimate market competition. Hon’ble Justice Tejas Karia’s judgment provides valuable clarity on the contemporary judicial approach to trade dress protection, goodwill and the doctrine of “slavish imitation” in disputes between established brands in India.

Facts of the Case

The Plaintiff launched Navratna cooling oil in 1989, popularised by the now-iconic tagline “Thanda Thanda Cool Cool”. Over the next three decades, the brand claims to have established a dominant position in the cooling oil segment, commanding approximately 66% market share by 2022. Its commercial success is reflected in steadily rising sales figures, growing from a few lakhs in 1990–91 to over ₹585 crores in 2021–22. In parallel, the Plaintiff has built an extensive IP portfolio around Navratna, including trademark registrations for “NAVRATNA”, “NAVRATNA OIL”, “THANDA THANDA COOL COOL”, “COOL COOL”, “HALKA HALKA COOL COOL” and others, along with registered bottle designs and copyright registrations over its labels.

Over time, Navratna marks has acquired a distinctive trade dress strongly associated with the Plaintiff. The product is sold in a red transparent bottle featuring a particular V-shaped contour, containing red liquid, and accompanied by a red outer carton. The visual presentation consistently incorporated elements such as hibiscus flower, ice-cubes, herbs, and the representation “with 9 active herbal ingredients” rendered in a characteristic colour combination of red, white, yellow and gold. According to the Plaintiff these elements cumulatively constitute a unique and source-identifying overall get-up.

In 2023, the Defendant introduced “Dabur Cool King Thanda Tael”, another red cooling oil. Upon discovering the product, the Plaintiff alleged that the Defendant’s trade dress, including a red transparent bottle of similar shape, a red outer carton, the use of hibiscus (China rose) flower, ice, herbs, and the Hindi words “Raahat, Aaram, Tarotaazgi” on sachets, was deceptively similar to the Plaintiff’s overall presentation. Particular emphasis was placed on the adoption of the same three Hindi words in the same sequence, which the Plaintiff argued reinforced consumer association and confusion.

Consequently, the Plaintiff instituted a commercial suit along with an application for interim injunction under Order XXXIX Rules 1 and 2 of the CPC. Although an earlier ex-parte injunction against the Defendant was set aside by the Division Bench on procedural grounds, the matter was remitted for a fresh hearing. The dispute thereafter proceeded at the interim stage, confined specifically to the issue of passing off based on alleged trade dress infringement.

Issues before the Court

The core questions that arose for consideration before the Court were as follows:

1. Whether the Plaintiff had established substantial goodwill and reputation in the Navratna trade dress, independent of and distinct from its registered word mark “NAVRATNA”?
2. Whether the Defendant’s “Cool King Thanda Tael”, when assessed as a whole from the perspective of an average consumer of imperfect recollection, was deceptively similar to the Plaintiff’s trade dress?
3. Whether the elements complained of, such as the red colour scheme, depiction of flowers (hibiscus), ice-cubes, herbs, and descriptive expressions like “Thanda” or “Cool”, were common to the trade or functional in nature, thereby disentitling the Plaintiff from claiming exclusivity over the composite get-up?
4. Whether the prominent display of the Defendant’s formative mark “Dabur” was sufficient to dispel any likelihood of confusion or deception?
5. Whether the Plaintiff had satisfied the classical trinity of passing off, namely: (i) goodwill, (ii) misrepresentation and (iii) likelihood of damage?

Arguments

Plaintiff’s case (Emami Limited)

The Plaintiff contended that the Navratna trade dress, particularly its distinctive red packaging and overall visual presentation, has been in continuous, extensive and uninterrupted use since 1989, thereby acquiring strong goodwill and distinctiveness in the market. According to the Plaintiff, the trade dress has transcended mere packaging and has come to function as source identifier uniquely associated with Emani.

It was argued that the protectable feature is not any single element in isolation, but the cumulative combination of elements forming a distinctive “ensemble”. This ensemble comprises of the red transparent bottle with a specific V shape, red liquid, red outer carton, the red-white-yellow-gold colour palette, images of hibiscus, ice-cubes and herbs, the particular arrangement of these ingredients on the label, and even the product’s 270ml quantity presentation. The Plaintiff asserted that this overall get-up has acquired secondary meaning and is immediately identifiable with Navratna cooling oil.

The Plaintiff alleged that the Defendant’s product “Dabur Cool King Thanda Tael”, constitutes a “slavish imitation” of this ensemble. It pointed to the same colour of liquid, a similar bottle and cap configuration, comparable placement of hibiscus flower and ice imagery, a similar red-gold dominant palette, and the use of the identical trio of Hindi description “Raahat, Aaram, Tarotaazgi” on sachets in the same sequence. According to the Plaintiff, these similarities were too substantial and deliberate to be coincidental.

Relying upon precedents such as Corn Products Refining Co vs. Shangrila Food Products Ltd. AIR 1960 SC 142, Heinz Italia and Anr vs. Dabur India Ltd. (2007) 6 SCC 1,and Cadila Healthcare Limited vs. Cadila Pharmaceutical Limited (2001) 5 SCC 73, the Plaintiff submitted that in assessing deceptive similarity, courts must consider the overall impression created by the competing products from the perspective of an average consumer with imperfect recollection. The focus, it was argued, must be on similarities rather than differences, and the test is one of broad and essential features rather than meticulous side-by-side comparison.

Further, invoking Midas Hygiene Industries (P) Ltd. and Another vs. Sudhir Bhatia and Others 2004 SCC OnLine SC 106 and Hindustan Pencils Pvt. Lts. vs. India Stationery Products 1989 SCC OnLine Del 34, the Plaintiff contended that where a Defendant adopts a deceptively similar trade dress without plausible explanation, an inference of dishonest adoption can legitimately be drawn. In such circumstances, injunction should ordinarily follow.

Importantly, Emami clarified that it does not claim monopoly over red colour per se, the depiction of herbs or the use of descriptive expressions such as “cool” or “thanda” in isolation, rather, its claim is confined to the distinctive combination, arrangement and visual composition of these elements which, through long and exclusive use has acquired secondary meaning.

Defendant’s defence (Dabur India Limited)

The Defendant argued that a claim for passing off necessarily requires the Plaintiff to establish the classical “trinity” of goodwill in the specific trade dress, misrepresentation, and likelihood of damage, and that Emami had failed to satisfy this threshold. It was contended that the sales and advertising figures relied upon by the Plaintiff pertain to the broader “NAVRATNA” brand and not specifically to the 2017 version of the red trade dress presently in issue. According to Dabur, goodwill must be shown in the precise get-up alleged to have been imitated, and not merely in the underlying word mark or brand reputation.

The Defendant further submitted that the colour red is functional and descriptive in the cooling oils segment, being associated with heat relief and traditional herbal ingredients. It was argued that several players in the market, including the Defendant itself, have long used red packaging for similar products such as “Dabur Lal Tael”, “Dabur Himsagar” and “Dabur Super Thanda”, even prior to the Plaintiff’s current packaging. Likewise, elements such as hibiscus flower, ice-cubes, menthol leaves, and descriptive words like “thanda”, “cool”, “cool tael”, “cooling oil” were described as generic and common to the trade, incapable of exclusive appropriation through a passing off action.

On an overall comparison of the rival products, particularly their outer cartons, the Defendant contended that the two trade dresses are clearly distinguishable. The impugned product prominently displays the well-known “Dabur” formative mark, the name “Cool King” accompanied by a crown device, and a distinct illustration of a “chill tube” with crystalline elements, along with a different layout and artwork.  Relying on Zydus Wellness Products limited vs. Cipla Health Limited (Neutral Citation: 2023:DHC: 4344), the Defendant argued that use of common colours or thematic elements prevalent in a segment cannot, by itself, constitute imitation, and that the proper test is the overall impression on an average consumer.

The Defendant also invoked third‑party use in the market and alleged that the Plaintiff had failure to initiate action against other player employing similar visual elements, thereby indicating that such features are common to the trade. It further relied on its own prior registration and long-standing use in relation to red oils and cooling oils products to rebut any inference of dishonest adoption, submitting that the Plaintiff was impermissibly attempting to monopolise functional and descriptive elements under the guise of trade dress protection.

Decision of the Court

The court, while deciding Interim Application (u/O XXXIX Rules 1&2 CPC), granted an injunction in favour of the Plaintiff and restrained the Defendant from manufacturing, selling, or offering for sale “Cool King Thanda Tael” in the impugned trade dress or any other deceptively similar to that of Navratna. At the prima facie stage, the Court was satisfied that the balance of convenience lay in favour of protecting the Plaintiff’s established market presence pending trial.

On the question of goodwill, the Court held that the Plaintiff had built considerable reputation and goodwill in its Navratna cooling oil over decades, as evidenced by substantial sales figures and consistent marketing and advertising efforts. It accepted that the Plaintiff’s product had come to be associated with a distinctive red trade dress, including the particular bottle shape, red liquid, colour scheme of red, white, yellow and gold, and the specific arrangement of visual elements such as hibiscus, ice cubes and herbs. Taken together, these elements constituted a protectable trade dress that had acquired distinctiveness.

Upon comparison the rival products, the Court found that the Defendant’s impugned trade dress reproduced the essential and prominent features of the Plaintiff’s det-up. The similarities extended to the colour of the packaging, cap and liquid, the bottle configuration, the overall colour palette, the placement and depiction of hibiscus flowers, ice-cubes and ayurvedic ingredients, as well as the use of the words “Raahat, Aaraam, Tarotaazgi” in the same sequence, along with identical quantity of 270ml.  These overlapping features in the Court’s view, were too substantial to be dismissed as coincidence.

Applying the settled test that overall impression and similarities outweigh dissimilarities, particularly from the standpoint of an average consumer with imperfect recollection as articulated in Cadila Healthcare, the Court held that the impugned trade dress was deceptively similar. The Defendant’s failure to provide a credible explanation for adopting such a closely converging get-up strengthened the interface of imitation.

The Court further rejected the argument that the prominent display of the “Dabur” house mark cured the likelihood of deception, clarifying that the addition of a house mark does not neutralise similarity in overall get-up.

While recognising that no monopoly can be claimed over the red colour, herbs, or hibiscus in isolation, the Court emphasised that the distinctive combination, arrangement and long-standing use of these elements had acquired secondary meaning in favour of the Plaintiff. Consequently, it found that the Plaintiff had prima facie established the trinity of goodwill, misrepresentation and likelihood of damage, and was therefore entitled to interim protection restraining the Defendant from using the impugned or any deceptively similar trade dress.

Conclusion/Analysis

This judgment sends a clear and emphatic signal that Indian courts are willing to robustly protect trade dress, even in crowded FMCG markets where individual elements may be common or descriptive. The emphasis, as articulated by the Court frames, is not on claiming exclusivity over each ingredient or colour, but on protecting the complete commercial impression, the overall visual narrative that the packaging conveys to consumers. Where such an ensemble has, through long and consistent use, acquired secondary meaning and become uniquely associated with a particular source, it merits protection under the law of passing off.

This decision highlighted important practical lessons. First, sustained and consistent use of a distinctive get-up, coupled with extensive advertising and market presence, can transform otherwise ordinary elements into a legally protectable identity. Secondly, when launching competing products, a defendant that aligns itself too closely with the visual grammar of a market leader runs the serious risk of inviting an inference of imitation or dishonest intent. Importantly, the judgment clarifies that the presence of a well-known house mark such as “Dabur”, does not automatically insulate a Defendant where the surrounding trade dress creates a deceptively similar overall impression.

In a commercial environment where retail shelves are densely packed and consumer attention is fleeting; this case reaffirms that visual identity is commercially powerful and legally significant. The judgment stands as a reminder that while competition is encouraged, imitation that crosses the line into deceptive similarity, particularly in overall look and feel, can attract serious legal consequences under the law of passing off.