Madras High Court Dismisses 'Dr. WASH' Infringement Suit Over 'Dr. Bright' Soap, Says Packaging Distinct

On 21 September, the Madras High Court dismissed a trademark infringement and passing off suit filed by Ashique Exports against Koyenco Soaps and Detergents over its “Dr. Bright” washing soap, holding that the rival product's packaging was not deceptively similar to Ashique's “Dr. WASH” brand.

Justice K. Kumaresh Babu also dismissed Koyenco's separate rectification petition seeking cancellation of Ashique's “Dr. WASH” trademark registration, finding that the disclaimer relied upon by Koyenco did not apply to Ashique's separately registered word mark. The Bench held:

“a comparison... would indicate that the respondent's trade dress packaging wrapper together with the write up and the product sold under the trademark 'Dr.Bright' is distinct from the trade dress packaging wrapper together with the write up of the plaintiff's product sold under the trade name 'Dr.WASH,'”

Ashique Exports adopted and commenced continuous use of the 'Dr. WASH' trademark in September 2002 . In June 2016, the Koyenco Group launched its rival 'Dr. Bright soap. Ashique filed suit alleging that Koyenco deceptively adopted the 'Dr.' prefix and trade dress to pass off its soap as an improved variant of 'Dr. WASH' and capitalise on Ashique's established reputation.

Koyenco denied the allegations. It argued that Ashique's trademark registration contained a disclaimer stating that it did not confer exclusive rights over the “Plus” device or the words “Dr. WASH” separately, as “Doctor/Dr” and “Wash” were common to the trade.

The Court framed nine issues for trial, on which both parties led oral and documentary evidence. On Ashique's claim to be the prior adopter and user of the “Dr. WASH” trade dress, it ruled in its favour. It relied on Ashique's invoices, delivery challans and records of advertising expenditure dating back to 2002 and 2007, respectively, which predated Koyenco's admitted entry into the market in 2016.

However, the Bench rejected Ashique's claim that Koyenco's “Dr. Bright” packaging had usurped the essential features of its “Dr. WASH” trade dress. After comparing the two labels placed on record, it found that the packaging, written content and product presentation were distinct.

The Bench also considered whether “Dr. WASH” was generic. Relying on the Supreme Court's decision in Pernod Ricard India v. Karanveer Singh Chhabra, where “Pride” was held to be generic and incapable of being monopolised by a single trader, it held that “Dr.” and “Wash” were common to the trade. It also noted the disclaimer in Ashique's registration and held that “the plaintiff's trademark is generic to the trade.”

However, it rejected Koyenco's separate challenge to Ashique's trademark registration. It clarified that the disclaimer relied upon by Koyenco related to the label mark and not the word mark “Dr. WASH”, which had been separately registered in 2002 and subsequently renewed. It therefore found no merit in the rectification petition on that ground.

Having found against Ashique on the issue of deceptive similarity, the Bench held that it was unnecessary to decide the remaining issues concerning alleged unfair trade practices, surrender of stock and accounting of profits, as doing so “would only be an empty formality”.

Accordingly, the High Court dismissed both the suit and the rectification petition.