Bombay High Court Temporarily Restrains Dabur From Using 'NEEM' As Leading Feature On Toothpaste Label

The Bombay High Court has temporarily restrained Dabur India Ltd from using its toothpaste label featuring 'NEEM' as the leading and essential feature in an interim order favouring Jyothy Labs Ltd. in a trademark infringement and passing-off suit.

Justice Arif S. Doctor, while allowing the interim application, clarified that Dabur was not barred from using the word 'NEEM' descriptively, but could not use it as a prominent, source-identifying feature on the label.

“It is, however, clarified that there shall be no fetter on the Defendant from using 'NEEM' per se in a descriptive manner on the impugned label or otherwise,” the Court held.

Jyothy Labs, which manufactures, markets and sells products under brands including Ujala, Pril, Maxo, Margo and Henko, claimed that its predecessor Calcutta Chemical Company Ltd had adopted and used 'NEEM' for toothpaste around 1920.

The suit was filed on the basis of three registered trademarks containing 'NEEM' as their leading and essential feature. None of the three registrations carried a disclaimer of 'NEEM'.

Jyothy Labs said it came across Dabur's application to register a label mark featuring 'NEEM' in August 2020 and opposed it. It alleged that Dabur commenced using the impugned label in the last week of December 2020 despite the pending opposition, prompting the suit.

The Court prima facie rejected Dabur's contention that 'NEEM' was generic. It noted that material relied on by Dabur itself showed the word being used across hair oil, soap, detergents, and several other products.

“This material does not establish that 'NEEM' is the generic name of toothpaste; it in fact indicates otherwise,” the Court observed.

The Court further found that the material prima facie supported the view that 'NEEM' was suggestive rather than descriptive, as a consumer would have to make an “imaginative leap” to connect the word with toothpaste.

Comparing Dabur's international and domestic packaging, the Court found that 'NEEM' appeared inconspicuously on the international packaging but was displayed centrally in large, bold lettering on the impugned label.

The Court noted that Dabur had said the domestic packaging was designed “to cater to the Indian market” but had not provided an explanation for why the change was necessary.

“This unexplained difference between the Defendant's two labels is a strong indicator that 'NEEM' has been consciously adopted and used as a source identifier (and not descriptively) on the impugned label,” the Court held.

It therefore prima facie found that Dabur could not rely on the descriptive-use defences under Sections 30(2)(a) and 35 of the Trade Marks Act at this stage.

The Court also held prima facie that Dabur's house mark did not, by itself, dispel the likelihood of confusion between the rival labels.

“To accept the Defendant's contention that the addition of its house mark necessarily avoids confusion would substantially dilute the protection afforded to composite and label marks,” it observed.

On Dabur's allegation of suppression, the court noted that Jyothy had disclosed its predecessor's earlier registrations in the plaint and reserved its right to rely on them. It prima facie found that the alleged non-disclosure did not meet the threshold for denying equitable relief.

The Court found that Jyothy had made out a prima facie case of both infringement and passing off and that the balance of convenience lay in its favour. It accordingly allowed the interim application in terms of prayers (a) and (b).

The court expressly clarified that Dabur remained free to use 'NEEM' descriptively on the impugned label or otherwise.

The Court subsequently granted Dabur's a six-week stay from the day the order is uploaded.