Bombay High Court Declines To Vacate Ex Parte Injunction Restraining KLF Nirmal Industries From Using Blue Bottle Similar To Parachute Hair Oil

The Bombay High Court recently refused to vacate its ex-parte order restraining KLF Nirmal Industries from using for its coconut oil products blue packaging and label deceptively similar to that of Parachute Coconut Oil.

Justice RI Chagla observed that KLF Nirmal Industries Pvt. Ltd. failed to prove that Marico Ltd, manufacturer of Parachute coconut oil, knowingly supressed its delay in seeking the injunction against packaging of KLF Nirmal's coconut oil products.

“I am of the prima facie view that there has been no delay in the Plaintiff approaching this Court and / or that there is any suppression of delay, considering that the Defendant is not able to establish as to when the Plaintiff had knowledge of the Defendant's product contrasted with the Plaintiff's case of being aware of the Defendant's impugned products in July, 2023. The Plaintiff upon being aware has acted with utmost dispatch and proceeded to take action against the Defendant”, the court held.

Marico Limited, a consumer goods manufacturer, filed a Commercial IPR Suit against KLF Nirmal Industries, accusing the latter of infringing upon Marico's trademarks through similarities in packaging and labelling of their coconut oil products. It claimed that it came to know of the impugned product and packaging in July 2023 and immediately filed the suit. Marico claimed that such visual resemblances could lead to consumer confusion, potentially causing damage to the goodwill and brand image of their Parachute Coconut Oil product.

The Bombay High Court, on August 18, 2023, granted an ex-parte ad-interim injunction restraining KLF Nirmal Industries from using the allegedly infringing packaging, finding it deceptively similar to Parachute's coconut tree device, broken coconut device, blue bottles/containers and overall trade dress. Thus, KLF Nirmal Industries filed the present Interim Application under Order 39 Rule 4 of the CPC, seeking the vacation of the injunction.

Order 39 Rule 4 of the CPC empowers a court to discharge, vary, or set aside an injunction order. The proviso to this rule stipulates that an injunction may be vacated if a party, in their application for temporary injunction or supporting affidavit, knowingly makes a false or misleading statement, unless the court deems it unnecessary in the interests of justice.

The central contention raised by KLF Nirmal Industries was that Marico had prior knowledge of their product. KLF Nirmal referred to a 2021 Information Memorandum titled 'Project Kepler' which contained a disclosure of the its bouquet of products. It claimed that this information memorandum was given to parties interested in investing in KLF Nirmal and who signed a confidentiality agreement, including Marico. The NDA was signed by the Head of Marico's Mergers & Acquisition department, it claimed.

However, the court found the evidence presented by KLF Nirmal Industries to be speculative and lacking substance. The court emphasized that the burden of proving that Marico knowingly made false or misleading statements rested with the defendant. The court said that the evidence was not sufficient to establish that Marico's M&A team had knowledge of the allegedly infringing product.

The court opined that the Information Memorandum was not a material or relevant document in the context of trademark infringement. Even if Marico's M&A team had knowledge of the memorandum, the court held that it wouldn't constitute a knowingly false or misleading statement.

The court assessed KLF Nirmal's attempt to link the NDA with the Information Memorandum, finding the connection tenuous and lacking in substance. Mere reference to 'Project Kepler' in an email did not establish that Marico had received the Information Memorandum or any document containing images of the impugned product, the court observed.

The court concluded that KLF Nirmal Industries failed to establish that Marico knowingly made false or misleading statements. The court found no merit in KLF Nirmal's application, stating that the essential requirements for vacating an ex-parte order were not met.

In light of this, the court ruled that the ex-parte ad-interim order dated August 18, 2023, would continue to operate until further orders. The court scheduled the next hearing for the matter on January 11, 2024.

Senior Advocate Venkatesh Dhond, a/w Advocates Shriraj Dhruv, Aastha Mehta and Ronak Shah, represented KLF Nirmal Industries.

Senior Advocate Ravi Kadam a/w Advocates Hiren Kamod, Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, and Jaanvi Chopra represented Marico.

Case no. – Interim Application (L) No. 26759 of 2023 In Commercial IP (L) Suit No. 22293 of 2023

Case Title – K.L.F. Nirmal Industries Pvt. Ltd., Applicant/Defendant In the matter between: Marico Limited v. KLF Nirmal Industries Pvt. Ltd.

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