Decoding Trademark Infringement and Passing Off: A Practical Analysis of a Delhi High Court Judgment

Johnson & Johnson Pte. Ltd. v. Abbireddi Satish Kumar & Ors.

CS(COMM) 801/2023 | Delhi High Court | 15 July 2025

Mamta Sharma, Advocate on Record | Arguing Counsel | Supreme Court of India

Part I – The Background: How a Simple Trademark Dispute Became a Masterclass in Commercial Litigation

Every trademark infringement suit begins with a simple allegation: someone has copied another person’s brand. However, the present case demonstrates that such disputes are rarely confined to the similarity of two trademarks. They often involve questions of goodwill, reputation, consumer confusion, jurisdiction, procedural compliance, interim relief, damages, and costs. The judgment delivered by the Delhi High Court in Johnson & Johnson Pte. Ltd. v. Abbireddi Satish Kumar & Ors. (CS(COMM) 801/2023, decided 15 July 2025) is an excellent illustration of this reality.

The dispute revolved around one of Johnson & Johnson’s well-known beverage products marketed under the trademark “ORSL.” The plaintiff asserted that it had been continuously using the mark in India since 2003 and had, over the years, built substantial goodwill and reputation through extensive sales, widespread distribution, and significant expenditure on advertising and promotion. According to the plaintiff, consumers had come to associate not only the word mark “ORSL”, but also the distinctive appearance of its product packaging with the plaintiff alone.

This distinction is important.

Trademark law protects much more than just the name of a product. In many cases, consumers identify a product by its overall appearance – its colour combination, packaging, style of writing, placement of images, and the manner in which information is presented. Collectively, these features are known as the trade dress of a product. The law recognises that where such trade dress has acquired distinctiveness in the marketplace, it deserves protection in the same manner as the trademark itself.

The controversy arose when the plaintiff discovered that the defendants had introduced products in the market under marks such as “ORSI,” “ERSI,” “CRSI,” and “ElectroORS.” According to the plaintiff, the defendants had not merely adopted deceptively similar names but had also imitated the overall packaging of the plaintiff’s products. The colour scheme, stylised font, placement of the brand name, fruit imagery, descriptive text, and the overall visual presentation were alleged to be so similar that an ordinary purchaser was likely to believe that the defendants’ products originated from, or were somehow associated with, the plaintiff.

In simple terms, the plaintiff’s case was this: “The defendants have not merely copied our trademark; they have copied the identity of our product.”

This distinction between copying a word mark and copying the overall commercial identity of a product forms the foundation of modern trademark law. As the judgment later demonstrates, courts do not examine trademarks by comparing isolated letters or words in a microscopic manner. Instead, they consider the overall impression that the rival products create in the mind of an ordinary consumer.

The plaintiff instituted a commercial suit before the Delhi High Court seeking several reliefs, including a permanent injunction restraining the defendants from using the impugned marks and trade dress, damages for infringement and passing off, rendition of accounts, delivery-up of infringing material, and litigation costs.

What followed, however, transformed this litigation into something far more significant than an ordinary trademark dispute.

The defendants failed to file their Written Statement within the mandatory period prescribed for commercial suits. They questioned the territorial jurisdiction of the Delhi High Court. They sought rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure. They challenged the maintainability of the proceedings and attempted to resist the plaintiff’s claims on procedural grounds.

The litigation also witnessed the grant of an interim injunction, the appointment of Local Commissioners, inspections of the defendants’ premises, recovery of allegedly infringing goods, and allegations that the defendants had continued their infringing activities even after the Court had restrained them from doing so.

What initially appeared to be a conventional trademark infringement suit thus gradually evolved into a comprehensive examination of several important procedural and substantive principles governing commercial litigation. This is precisely what makes the judgment exceptional.

Instead of deciding only whether the defendants had infringed the plaintiff’s trademark, the Court was required to examine a series of interconnected legal questions:

• How is territorial jurisdiction determined in trademark infringement suits?
• Can a defendant in a commercial suit be permitted to file a Written Statement after the expiry of 120 days?
• Under what circumstances can a plaint be rejected under Order VII Rule 11 CPC?
• When can a Court pronounce judgment under Order VIII Rule 10 CPC without conducting a full-fledged trial?
• How should courts determine whether two competing marks are deceptively similar?
• What distinguishes trademark infringement from passing off?
• How should compensatory, punitive and aggravated damages be assessed in intellectual property disputes?
• Can a successful plaintiff recover the actual cost of litigation?

The Delhi High Court answered each of these questions in a structured and reasoned manner. It is this systematic approach – not merely the final outcome – that makes the judgment an invaluable resource for every law student and aspiring commercial litigator.

Before examining these legal principles, it is important to understand one fundamental aspect of trademark law that runs throughout the judgment: a trademark case is rarely decided by comparing spellings alone. More often than not, the real question is whether the defendant has created an overall commercial impression likely to mislead an ordinary consumer into believing that the defendant’s product originates from the plaintiff.

The remainder of this article examines how the Court answered that question while simultaneously providing a practical lesson on almost every significant aspect of commercial litigation.

Part II – Understanding the Dispute: Was It Merely a Trademark Case?

At first glance, the dispute appears to be about the use of similar trademarks – ORSL on one hand and ORSI, ERSI, CRSI, and ElectroORS on the other.

However, a careful reading of the judgment reveals that the litigation was never confined to the similarity of words alone.

The plaintiff’s grievance was far wider.

According to the plaintiff, the defendants had copied almost every identifying feature of its product. The allegation was not merely that the defendants had adopted deceptively similar trademarks, but that they had deliberately imitated the overall commercial identity of the plaintiff’s products.

To appreciate the significance of this allegation, it is necessary to understand the difference between a trademark, trade dress, trademark infringement, and passing off.

What is a Trademark?

A trademark is simply an identifier.

It tells consumers where a product comes from.

When a consumer purchases a bottle of Coca-Cola, a packet of Maggi noodles, or a tube of Colgate toothpaste, the trademark assures the consumer that the product originates from a particular manufacturer and possesses a certain quality associated with that manufacturer.

In India, a registered trademark enjoys statutory protection under the Trade Marks Act, 1999. Once registered, the proprietor acquires the exclusive right to use the mark in relation to the goods or services for which it is registered and can restrain others from using an identical or deceptively similar mark.

However, modern trademark law extends much beyond the protection of words.

What is Trade Dress?

One of the most interesting aspects of this judgment is its detailed discussion on trade dress.

Trade dress refers to the overall visual appearance of a product.

It includes, among other things:

• the colour combination;
• the shape and size of the packaging;
• the arrangement of various elements;
• the style and colour of the lettering;
• the placement of logos and images;
• the layout of the product label; and
• the overall visual impression created by the packaging.

In simple words, trade dress is the personality of the product.

Consumers often identify products not merely by reading their names but by recognising their appearance. A consumer entering a supermarket may immediately recognise a particular chocolate, beverage, or toothpaste merely by looking at its packaging without consciously reading the trademark.

The law recognises this commercial reality. If the overall appearance of a product has acquired distinctiveness in the marketplace, it is entitled to protection even if the competing product bears a slightly different name.

What Was the Plaintiff’s Allegation?

The plaintiff contended that the defendants had copied not merely the word mark ORSL, but almost every significant element that gave the plaintiff’s product its distinctive identity.

According to the plaintiff, the defendants had imitated:

• the red and white colour scheme;
• the stylised presentation of the brand name;
• the placement of the fruit image;
• the arrangement of descriptive matter;
• the overall packaging; and
• the visual layout of the product.

The allegation was that an ordinary purchaser looking at the defendants’ product would immediately associate it with the plaintiff’s product. This was not a case of copying a name alone. It was a case of allegedly copying the entire commercial identity of the product.

Why Is This Important?

Many people believe that changing one or two letters of a trademark is sufficient to avoid liability. The law says otherwise.

Trademark law does not encourage dishonest traders to escape liability merely by making minor cosmetic changes. A person cannot copy another’s product, alter one letter of the trademark, retain substantially the same packaging, colour combination, and layout, and then argue that the two products are different. If that were permitted, trademark protection would become meaningless.

The Court did not restrict itself to comparing the spellings of the rival marks. Instead, it undertook a holistic comparison of both products, examining every feature that could influence the perception of an ordinary consumer.

This approach reflects one of the most important principles of trademark law: Courts compare the overall commercial impression created by competing products and not merely the individual words appearing on them.

Why Were Both Infringement and Passing Off Pleaded?

An interesting feature of intellectual property litigation is that plaintiffs often seek relief for both trademark infringement and passing off.

Although these expressions are frequently used together, they are not synonymous.

Trademark infringement is a statutory remedy available to the proprietor of a registered trademark under the Trade Marks Act, 1999.

Passing off, on the other hand, is a common law remedy. It protects the goodwill and reputation that a trader has built over time, even independent of statutory registration.

A registered proprietor may pursue both remedies simultaneously where the facts justify such relief.

The present judgment demonstrates precisely how these two causes of action often overlap. While the plaintiff relied upon its statutory rights arising from registration of the ORSL marks, it also asserted that the defendants’ conduct amounted to passing off by misrepresenting their products as being associated with, or originating from, the plaintiff.

The distinction between these two remedies is subtle but extremely important. The Delhi High Court discusses both concepts while analysing whether the defendants’ products were likely to deceive or confuse consumers. As we shall see in the next part, the Court applied the well-established principles of deceptive similarity, the perspective of an average consumer, and what is commonly known as the Triple Identity Test – a test that lies at the heart of modern trademark infringement litigation.

Part III – The First Battle: Did the Delhi High Court Have Territorial Jurisdiction?

Before the Court could examine the merits of the plaintiff’s claims, it was required to address a fundamental preliminary question: did the Delhi High Court have the territorial jurisdiction to entertain the suit?

This question was raised by the defendants and formed the first significant legal battle in the proceedings.

Territorial Jurisdiction in Trademark Suits

Under ordinary principles of civil procedure, a suit is filed before the court within whose jurisdiction:

• the defendant resides or carries on business; or
• the cause of action, wholly or in part, arises.

However, trademark litigation operates under a special jurisdictional provision.

Section 134 of the Trade Marks Act, 1999 confers an additional option upon the plaintiff. It provides that a suit for infringement of a registered trademark may be instituted not only where the defendant resides or carries on business, but also where the plaintiff resides or carries on business.

This provision confers a significant advantage upon trademark owners by allowing them to institute proceedings at a forum of their convenience.

However, the defendants in the present case challenged the plaintiff’s invocation of this provision, arguing that no cause of action had arisen within the territorial limits of the Delhi High Court.

The Defendants’ Objection

The defendants contended that:

• they did not reside or carry on business within the jurisdiction of the Delhi High Court;
• their products were not sold in Delhi; and
• the plaintiff had failed to establish any connection between the defendants’ activities and the territorial limits of the Court.

The Importance of Online Sales

The Court’s response to this objection is one of the most practically important aspects of the judgment.

The plaintiff had placed on record evidence showing that the defendants’ products bearing the impugned marks and trade dress were available for purchase through an interactive website that distributed the goods throughout India, including within the jurisdiction of the Delhi High Court.

The Court held that where a defendant’s website could be accessed from within the Court’s jurisdiction and the products of the defendant were displayed and made available for purchase online, this constituted use of the mark within the Court’s territorial jurisdiction.

The Court further held that the use of a mark includes offering the goods for sale or advertising the goods for sale. The fact that the goods may not have actually been delivered to the plaintiff within Delhi did not negate the jurisdictional connection, so long as the products were advertised and made available online to consumers within the jurisdiction.

This reasoning reflects a principled and modern approach to territorial jurisdiction in the age of e-commerce. As the Court observed: when the website marketing the goods of the defendants is accessible from Delhi, the very fact that the said website could be accessed with the products of the defendants shown online at the time of filing of the suit confers territorial jurisdiction.

Practical Lessons for Litigators

The Court’s reasoning on jurisdiction offers important practical guidance.

In cases involving online infringement, the plaintiff should place on record evidence demonstrating that the defendant’s products were advertised, displayed or made available for purchase online within the jurisdiction of the chosen court. The evidence need not necessarily establish that goods were physically delivered within the jurisdiction; it is sufficient if the infringing products were available for purchase online within the territorial limits of the court.

Equally, the plaintiff should ensure that the plaint contains specific averments setting out the jurisdictional facts. A vague or general plea of jurisdiction is likely to be rejected. The plaintiff must establish jurisdiction through precise and material facts.

The jurisdictional challenge having been resolved in the plaintiff’s favour, the litigation moved to its next significant phase.

Part IV – The 120-Day Rule: How the Defendants Lost Their Right to Defend the Suit

If there is one lesson that every aspiring commercial litigator should take away from this judgment, it is this: in commercial litigation, procedural discipline is not a matter of convenience – it is a statutory mandate.

Perhaps the most significant procedural development in the present case was not the grant of an injunction or the award of damages. It was the defendants’ failure to file their Written Statement within the period prescribed by law. That single procedural lapse fundamentally altered the course of the litigation.

The Law Before the Commercial Courts Act

In ordinary civil suits, the filing of a Written Statement is governed by Order VIII Rule 1 of the Code of Civil Procedure, 1908.

Although the Code prescribes a time limit, courts traditionally exercised considerable discretion in extending the period for filing a Written Statement where sufficient cause was shown. Over time, repeated adjournments became commonplace, and civil suits often remained pending for years merely because pleadings had not been completed.

Commercial litigation presented a different challenge. Disputes involving intellectual property, infrastructure projects, commercial contracts and corporate transactions demanded speedy adjudication. Delays defeated the very purpose of commercial justice.

Recognising this problem, Parliament enacted the Commercial Courts Act, 2015, introducing a fundamentally different procedural regime for commercial disputes.

The Mandatory 120-Day Rule

One of the most important reforms brought about by the Commercial Courts Act was the introduction of a strict and mandatory timeline for filing the Written Statement.

In a commercial suit, the defendant must file the Written Statement within the prescribed period. The Court may, for reasons to be recorded, extend the time. However, under no circumstances can the Written Statement be taken on record after the expiry of 120 days from the date of service of summons.

The consequence is drastic. Upon the expiry of 120 days, the defendant forfeits the right to file the Written Statement. The Court is thereafter prohibited from accepting it. Unlike many procedural provisions, this is not merely directory. It is mandatory.

The legislature intentionally adopted this strict approach to ensure that commercial disputes progress expeditiously without unnecessary delays.

Consequences of Non-Filing of the Written Statement

The defendants did not file their Written Statement within the statutory period. Consequently, the Court closed their right to file the Written Statement.

Instead of challenging that order through the appropriate legal remedy, the defendants attempted, at a later stage of the proceedings, to persuade the Court to take the Written Statement on record. The Court declined.

The reasoning was straightforward. Once the statutory period had expired and the right to file the Written Statement had already been closed, the Court had no jurisdiction to revive that right merely because the defendants subsequently wished to contest the suit.

The Court also noted that the defendants had never challenged the earlier order closing their right to file the Written Statement. Having allowed that order to attain finality, they could not indirectly reopen the issue during the final hearing.

This aspect of the judgment is particularly instructive because it demonstrates that procedural orders, if not challenged in accordance with law, attain finality and cannot be questioned repeatedly during the same proceedings.

Why the Court Refused to Extend Time

Many young lawyers initially find the 120-day rule harsh. However, the rationale becomes clear when one considers the purpose of the Commercial Courts Act.

Commercial disputes often involve substantial investments, ongoing business operations, intellectual property rights, and market competition. Every unnecessary adjournment has commercial consequences. A trademark owner whose rights are being infringed cannot be expected to wait indefinitely while the defendant repeatedly seeks time to file a Written Statement.

The Commercial Courts Act represents a conscious legislative shift from the culture of procedural delays to one of procedural certainty. Commercial litigation must proceed according to a strict timetable.

Practical Lessons for Commercial Litigators

For commercial litigators, the lesson is both simple and uncompromising. The period of 120 days is not merely another procedural timeline. It is a statutory deadline carrying irreversible consequences.

A lawyer handling a commercial dispute must treat service of summons as the beginning of a strict procedural calendar. Every pleading, every application, and every procedural step thereafter must be planned keeping these timelines firmly in mind.

In the present case, the defendants’ inability to place their Written Statement on record became one of the most significant factors that shaped the eventual outcome of the litigation.

Part V – Order VII Rule 11 CPC: Why the Defendants’ Attempt to Reject the Plaint Failed

After failing to file their Written Statement within the mandatory period, the defendants adopted another procedural strategy: they sought rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure, 1908.

Applications under Order VII Rule 11 are among the most frequently invoked procedural remedies in civil litigation. However, they are equally among the most misunderstood provisions of the Code.

Scope and Object of Order VII Rule 11

Order VII Rule 11 empowers a Court to reject a plaint on specified grounds, including where the plaint does not disclose a cause of action, where the suit appears to be barred by any law, or where the Court lacks jurisdiction.

The critical point is that this enquiry is restricted to an examination of the plaint itself.

The Court is not permitted, while considering an application under Order VII Rule 11, to travel beyond the four corners of the plaint and examine disputed questions of fact. The truth or falsity of the plaintiff’s allegations is irrelevant at this stage. The only question is: does the plaint, as drafted, disclose a legally recognisable cause of action?

Grounds for Rejection of a Plaint

The defendants’ application challenged the suit on grounds of territorial jurisdiction and lack of cause of action.

However, both contentions had already been substantially addressed by the earlier order on jurisdiction – an order that had, by then, attained finality.

Why the Application Failed

The Court held that the plaint clearly disclosed a cause of action. The plaintiff had set out specific averments regarding:

• its registered trademarks;
• the defendants’ impugned marks and trade dress;
• the deceptive similarity between the two;
• the plaintiff’s prior use and goodwill; and
• the territorial connection with the Delhi High Court’s jurisdiction.

A bare perusal of these averments established that the plaintiff had raised genuine triable issues. This is precisely the test that Order VII Rule 11 requires. Once the plaint discloses a cause of action – however weak – it cannot be rejected at this threshold stage.

Maintainability vs. Merits

The judgment reinforces a distinction that every civil lawyer must clearly understand.

Order VII Rule 11 deals with maintainability – whether the suit can proceed at all. It does not deal with merits – whether the plaintiff will ultimately succeed.

Conflating these two concepts is a common error. A plaint that is factually exaggerated, legally ambitious, or commercially questionable may nevertheless be perfectly maintainable. Whether the plaintiff can prove its case is a question for trial, not for a threshold rejection.

Practical Lessons

The failure of the Order VII Rule 11 application reinforces two important lessons for commercial practitioners.

First, a well-drafted plaint that sets out specific, material, and verifiable facts is extremely difficult to reject at the threshold stage. Investing adequate care and attention in the initial drafting pays significant dividends.

Second, an application under Order VII Rule 11 is not a substitute for trial. It is a threshold remedy designed to weed out clearly unmaintainable litigation. It is not an appropriate vehicle for contesting the merits of the plaintiff’s case.

Part VI – Order VIII Rule 10 CPC: Why the Court Could Pronounce Judgment Without Conducting a Full Trial

With all the defendants’ rights to file Written Statements closed, the plaintiff moved an application under Order VIII Rule 10 of the Code of Civil Procedure, 1908, seeking pronouncement of judgment.

This provision raises an important question: can a Court decree a suit merely because the defendant has failed to file a Written Statement?

Purpose of Order VIII Rule 10

Order VIII Rule 10 was inserted by the legislature to expedite the process of justice. It empowers a Court to pronounce judgment where the defendant has failed to file a Written Statement, thereby preventing defendants from using procedural defaults as a delaying tactic.

However – and this is crucial – the provision does not operate automatically. It does not entitle the plaintiff to a decree merely by demonstrating that the defendant has not filed a Written Statement.

Does Failure to File a Written Statement Automatically Result in a Decree?

No. This is one of the most common misconceptions in commercial litigation.

The Court must independently examine the plaint and the documentary evidence placed on record. It must satisfy itself that the averments made by the plaintiff are:

• legally sustainable;
• supported by reliable documentary evidence; and
• sufficient to establish the plaintiff’s entitlement to the relief claimed.

Only after this independent judicial examination can the Court pronounce judgment under Order VIII Rule 10. The purpose of the provision is to prevent procedural delay, not to convert every unanswered commercial suit into an automatic decree.

Reliance on Nirog Pharma Pvt. Ltd. v. Umesh Gupta

The Court relied upon this well-settled principle from the Delhi High Court’s own jurisprudence, holding that even where a defendant fails to pursue its case or does so in a lackadaisical manner by not filing a Written Statement, the courts should invoke Order VIII Rule 10 to decree such cases – provided the averments made and the documents relied upon are of an unimpeachable character, not requiring any evidence to be led to prove their contents.

This is an elegant and balanced formulation. It promotes procedural efficiency without sacrificing judicial fairness.

Why Issues Were Not Framed

The defendants raised a contention that the Court was required to frame issues before pronouncing judgment.

The Court rejected this contention. Where no Written Statement has been filed, there are no competing pleadings from which issues can be framed. The filing of a Written Statement is a precondition for the framing of issues. In its absence, the Court examines whether the unrebutted pleadings and documents justify the reliefs claimed.

Practical Lessons for Litigators

For commercial litigators, this part of the judgment reinforces an important principle.

A well-drafted plaint accompanied by comprehensive documentary evidence is critically important. Once the defendant’s right to file the Written Statement is closed, the plaintiff’s pleadings and documents become the foundation of the entire case. There is no further opportunity to plug gaps.

Part VII – Trademark Infringement and Passing Off: Two Different Causes of Action, One Common Objective

Having cleared the procedural obstacles, the Court turned to the substantive questions: had the defendants infringed the plaintiff’s trademark? Had they committed passing off?

Although these two causes of action are frequently pleaded together, they are conceptually distinct. Understanding this distinction is important not merely for examination purposes, but for effective advocacy.

Trademark Infringement: A Statutory Remedy

Trademark infringement is governed by Sections 27 and 29 of the Trade Marks Act, 1999.

The essential ingredients are:

• the plaintiff must be the registered proprietor of the trademark;
• the defendant must be using an identical or deceptively similar mark; and
• the defendant’s use must be in relation to goods or services identical with or similar to those for which the mark is registered.

Where these ingredients are established, the Court can grant an injunction and award damages under the statute.

In the present case, the plaintiff was the registered proprietor of the ORSL marks across multiple trademark classes. The defendants were using marks such as ORSI, ERSI, CRSI and ElectroORS in relation to fruit drinks – goods identical to those covered by the plaintiff’s registrations.

Passing Off: A Common Law Remedy

Passing off, on the other hand, rests upon three well-established ingredients:

• goodwill – the plaintiff must have established goodwill and reputation in the mark or get-up;
• misrepresentation – the defendant must have made a misrepresentation likely to deceive or confuse consumers into believing that its goods or services originate from, or are connected with, the plaintiff; and
• damage – the misrepresentation must have caused, or must be likely to cause, damage to the plaintiff’s goodwill.

The critical difference is this: passing off does not require the plaintiff to hold a registered trademark. It protects commercial reputation built through actual use. This is why even unregistered marks, trade dress, and get-up can be protected through an action for passing off.

Why Both Causes of Action Were Pleaded

In the present case, the plaintiff wisely pleaded both remedies.

The statutory infringement claim covered the registered word marks. The passing off claim covered the distinctive trade dress and the overall commercial identity of the product – elements that may not be fully captured by the word mark registrations alone.

By pleading both causes of action, the plaintiff ensured that its intellectual property was comprehensively protected, regardless of whether the Court found the marks to be identical or merely deceptively similar.

The Real Question Before the Court

In substance, the question before the Court was: had the defendants adopted marks and trade dress that were so similar to the plaintiff’s that an ordinary consumer was likely to be confused into thinking that the defendants’ products originated from the plaintiff?

The answer to that question required the Court to examine the principles governing the comparison of competing trademarks – principles that form the core of the next part of this article.

Part VIII – How Courts Compare Two Trademarks: The Average Consumer Test, the Overall Impression Test, and the Triple Identity Test

One of the finest portions of the present judgment is the Court’s discussion on how courts compare competing trademarks.

Many people assume that trademark disputes are resolved through a letter-by-letter comparison of the rival marks. Nothing could be further from the truth.

The law requires a far more nuanced and realistic assessment.

The Average Consumer Test

Courts must assess trademark similarity through the eyes of the average consumer – a person of ordinary intelligence and imperfect recollection who encounters the rival products in the normal course of purchase.

This standard, well-established since the Supreme Court’s decision in Amritdhara Pharmacy v. Satyadeo Gupta (AIR 1963 SC 449), remains the foundational test in Indian trademark jurisprudence.

The average consumer is not a trademark expert. She does not place the two marks side by side for a careful comparison. She relies upon her general recollection of the mark she has previously seen or purchased.

Imperfect Recollection

This is the key insight that drives modern trademark law.

Consumers do not remember trademarks with photographic precision. They retain a general, indefinite, and sometimes hazy impression of a mark. When they encounter a similar mark, they may confuse it with the one they have previously seen – not because they lack intelligence, but because trademark recognition works through general impression rather than precise recall.

This is precisely why minor differences between two marks do not necessarily prevent confusion. If two marks give the same general impression, confusion is likely to occur.

The Overall Impression Test

Building upon the average consumer test, courts apply what is sometimes called the overall impression test: the two marks must be compared as a whole.

It is impermissible to dissect the marks and compare individual elements in isolation. A competitor cannot escape liability merely because its mark differs from the plaintiff’s in one particular element while substantially copying the overall impression.

In the present case, the defendants argued that ORSI was different from ORSL because one uses the letter “I” and the other uses the letter “L.” However, the Court observed that when the marks were written in the particular font used by the defendants, the letter “I” was so similar to the letter “L” that an average consumer was likely to mistake one for the other.

This is a superb illustration of the overall impression test in action. The Court examined not just the letters in the abstract, but the visual impression that the mark actually created in the context of the product.

The Triple Identity Test

Perhaps the most useful analytical tool discussed in the judgment is the Triple Identity Test.

This test asks three questions:

• Are the marks similar or identical?
• Are the goods or services similar or identical?
• Are the target consumers the same or similar?

Where all three elements are satisfied – as they were in the present case – the likelihood of confusion and deception is particularly high.

The plaintiff’s products and the defendants’ products were both fruit drinks targeted at broadly the same consumers through similar trade channels. The marks were deceptively similar. The trade dress was substantially identical. All three limbs of the test were squarely satisfied.

The Court’s Comparative Analysis

The Court’s analysis was thorough and methodical.

It examined the marks as a whole, the colour combination, the font, the packaging layout, the placement of fruit imagery, the descriptive matter, and the overall visual impression created by the rival products.

Having conducted this comparison, the Court concluded that the defendant’s marks and trade dress were deceptively similar to the plaintiff’s registered marks and trade dress and were likely to cause confusion and deception amongst consumers.

Practical Lessons for Young Lawyers

The discussion on trademark comparison offers several practical lessons.

First, always present the Court with visual material: photographs of the rival products, packaging comparisons, and any market evidence demonstrating actual confusion. Trademark litigation is intensely visual.

Second, do not rely solely on a letter-by-letter comparison. Demonstrate the overall commercial impression through the eyes of the average consumer.

Third, where the goods are identical and the marks are similar, the test for confusion is less stringent. The Court need not be satisfied that every consumer will be confused. Likelihood of confusion in the mind of an ordinarily attentive consumer is sufficient.

Part IX – Local Commissioners: The Silent Pillars of Intellectual Property Litigation

One of the most distinctive features of the present case was the extensive use of Local Commissioners.

In trademark and intellectual property disputes, Local Commissioners serve a function that is simultaneously legal, evidentiary, and strategic. The present judgment offers an excellent illustration of how effective deployment of this remedy can fundamentally shape the outcome of commercial litigation.

Role of Local Commissioners

A Local Commissioner is an officer appointed by the Court under Order XXVI of the Code of Civil Procedure, 1908 to carry out specific duties at the direction of the Court.

In intellectual property matters, Local Commissioners are most commonly appointed to:

• inspect and seal premises where infringing goods are alleged to be stored or manufactured;
• take inventory of infringing material;
• prepare a detailed report of their findings; and
• collect samples for the purpose of evidence.

The Commissioner acts as an officer of the Court and his report carries significant evidentiary weight.

Preservation of Evidence

One of the most important functions of a Local Commissioner in intellectual property litigation is the preservation of evidence.

In trademark cases, infringers frequently take steps to conceal their activities once they become aware of legal proceedings. A rapid and effective Local Commission can therefore be decisive.

In the present case, the plaintiff successfully obtained the appointment of six Local Commissioners to carry out inspections at the premises of the defendants.

Execution of the Commission

The results of the Local Commission were striking.

Across the various premises inspected, the Commissioners found:

• hundreds of thousands of tetra-packs bearing the infringing marks;
• packaging material with sufficient capacity to produce millions of additional infringing packs;
• invoices and e-way bills confirming ongoing commercial transactions even after the interim injunction had been granted; and
• products manufactured after the date of the interim injunction order.

The total number of infringing goods found across all premises amounted to 4,38,072 tetra-packs. In addition, packaging material capable of producing over 20 lakh additional packs was discovered at the manufacturer’s premises.

Alleged Violation of the Interim Injunction

Perhaps the most significant finding of the Local Commission was the evidence suggesting continued manufacture and distribution of infringing goods after the Court had granted an interim injunction on 7 December 2023.

Several products bore manufacturing dates falling after the date of the injunction. Invoices and e-way bills for commercial transactions dated after the injunction were also found.

This finding had a direct and adverse impact upon the defendants’ case. It not only demonstrated the scale of infringement but also showed deliberate disregard for judicial orders – a factor that the Court subsequently considered while assessing the appropriate quantum of damages.

Evidentiary Value of the Commissioner’s Report

The Court held – consistent with established Delhi High Court jurisprudence – that the report of a Local Commissioner can be read in evidence under Order XXVI Rule 10(2) CPC and that, in light of such a report, no ex parte evidence need be led by the plaintiff.

This holding is of considerable practical importance. It confirms that a comprehensive Local Commissioner’s report can substitute for formal evidence in cases where the defendant has failed to file a Written Statement and there are no contested facts requiring oral evidence.

Practical Lessons

For commercial practitioners, the use of Local Commissioners in the present case offers the following lessons.

Move for a Local Commission as early as possible. Delay may allow the infringer to conceal or dispose of infringing goods. The Commission should be sought simultaneously with or immediately after the interim injunction.

Brief the Local Commissioner thoroughly. A Commissioner who understands what he is looking for will produce a more useful report. Specific instructions regarding what to inventory, what samples to collect, and what documents to examine are essential.

The Local Commissioner’s report is not merely evidence. It is often the most powerful weapon available to the plaintiff in intellectual property litigation.

Part X – Understanding Damages in Intellectual Property Litigation: A Brilliant Explanation by the Delhi High Court

One of the most outstanding features of this judgment appears towards the latter part of the decision.

After holding that the defendants had infringed the plaintiff’s trademark and had also committed passing off, the Court was confronted with another important question: what relief should now be granted?

Many people instinctively believe that once infringement is proved, the Court merely awards compensation. The law is considerably more nuanced.

Not every case of infringement deserves the same remedy. Not every infringer deserves the same treatment. The nature of relief depends upon several factors, including the conduct of the defendant, the extent of the infringement, the damage caused to the plaintiff, and the need to deter similar conduct in the future.

The Delhi High Court explains these principles in an exceptionally clear manner.

Why Are Damages Awarded?

A civil court does not award damages merely because a legal wrong has been committed. Damages serve different objectives.

Sometimes they are intended to compensate the injured party. Sometimes they are intended to punish the wrongdoer. Sometimes they are awarded to express the Court’s disapproval of particularly dishonest conduct. In other cases, they are meant to discourage others from adopting similar practices.

Although all these remedies involve payment of money, their objectives are fundamentally different. That is precisely why courts classify damages into different categories.

Compensatory Damages – Restoring the Plaintiff

The first and most common category is compensatory damages.

These damages are intended to compensate the plaintiff for the loss suffered as a result of the defendant’s wrongful conduct. The emphasis is not on punishing the defendant. The emphasis is on restoring the plaintiff.

In trademark disputes, compensatory damages may account for diversion of customers, loss of sales, erosion of goodwill, injury to commercial reputation, and loss of market share.

Punitive Damages – Punishing the Wrongdoer

Punitive damages serve an entirely different purpose.

Where infringement is found to be deliberate, dishonest, wilful or calculated, mere compensation may not adequately serve the interests of justice. If an infringer knowingly copies another’s successful brand and treats the possibility of paying compensation as nothing more than a business expense, the law would inadvertently encourage infringement.

Punitive damages seek to prevent precisely this result. Their purpose is to send a clear message: deliberate infringement must not become commercially profitable.

Aggravated Damages – Conduct That Worsens the Wrong

Aggravated damages are awarded where the defendant’s conduct has made the injury significantly worse.

The focus is not simply upon the infringement itself. Rather, the Court examines the manner in which the defendant behaved before, during, or even after the litigation – for example, continuing infringement despite repeated objections, violating interim injunctions, or showing complete disregard for judicial orders.

Such conduct aggravates the injury already suffered by the plaintiff. The Court may therefore consider awarding damages that reflect the seriousness of that conduct.

Exemplary Damages – Setting an Example

Closely related to punitive damages are exemplary damages.

The Court seeks to make an example of the wrongdoer. The purpose extends beyond the immediate parties: the Court conveys a wider public message that certain forms of commercial dishonesty will not be tolerated.

In intellectual property litigation, where counterfeit goods can damage consumer confidence and undermine genuine businesses, exemplary damages assume particular significance.

The Court’s Comparative Framework

The essence of the Court’s analysis may be understood through this classification:

• Compensatory Damages – to compensate the plaintiff for actual loss suffered;
• Punitive Damages – to punish deliberate, dishonest or wilful infringement;
• Aggravated Damages – to recognise the seriousness of conduct that worsened the injury; and
• Exemplary Damages – to deter similar misconduct by others and convey a public message.

Relief Granted by the Court

Having examined the evidence, the Court concluded that the defendants’ conduct was not an innocent or accidental adoption of a similar mark. The evidence demonstrated deliberate imitation of the plaintiff’s trademark and trade dress. The Local Commissioner reports revealed the scale of the infringing activity. The defendants’ own admissions confirmed that they had continued their activities after the injunction.

Accordingly, the Court granted:

• compensatory damages of Rs. 52,56,864/- (calculated on the basis of 4,38,072 infringing units found at an average price of Rs. 12/- per unit), to be paid by defendant no. 1;
• punitive damages of Rs. 50,00,000/-, also to be paid by defendant no. 1; and
• damages from the other defendants in varying amounts reflecting their respective roles as manufacturer (Rs. 15,00,000/-), marketer (Rs. 1,00,000/-), and distributors (Rs. 1,50,000/- each).

The Court also held that the plaintiff was entitled to recover its actual litigation costs under the Commercial Courts Act, 2015.

Part XI – Litigation Costs in Commercial Suits: A Shift from Nominal Costs to Actual Costs

For much of the history of Indian civil litigation, courts awarded nominal costs – token amounts that bore no relationship to the actual expenses incurred by the successful party.

This practice has changed significantly in commercial courts.

The present judgment addresses another important aspect of modern commercial litigation: the award of actual litigation costs.

Award of Actual Litigation Costs

The Court held that the plaintiff was entitled to recover its actual costs of litigation from defendant no. 1.

This direction was issued under the Commercial Courts Act, 2015, read with the Delhi High Court (Original Side) Rules, 2018, and the Intellectual Property Division Rules.

The shift from nominal to actual costs is of considerable practical importance. It reflects a legislative and judicial recognition that a successful litigant should not be required to absorb the financial burden of enforcing its own legal rights against a wrongdoer.

The Bill of Costs

The plaintiff was directed to file a Bill of Costs within two months.

A Bill of Costs is a formal document setting out the actual expenditure incurred by the successful party in the litigation. It may include court fees, advocate’s fees, senior advocate’s fees, Local Commissioners’ remuneration, clerkage, photocopying charges, printing expenses, process fees, translation charges, inspection charges, and miscellaneous litigation expenses.

Each item must ordinarily be supported by relevant documents such as invoices, receipts, vouchers or fee certificates wherever available. The objective is to enable the Court to determine not merely whether expenditure was incurred, but also whether it was reasonably necessary.

Role of the Taxing Officer

Once the Bill of Costs is filed, the matter is listed before the Taxing Officer.

The Taxing Officer does not simply total the figures mentioned in the Bill. Instead, each item is independently examined. The Taxing Officer considers whether the expenditure was actually incurred, whether it was reasonably necessary for the litigation, whether the amount claimed is proportionate to the nature of the proceedings, and whether sufficient proof has been produced.

The Taxing Officer may allow the claim in full, reduce particular items, or disallow expenses found to be unnecessary or excessive. This process ensures that the successful party receives reasonable reimbursement without imposing unfair or inflated liabilities upon the unsuccessful party.

Delhi High Court (Original Side) Rules, 2018

The procedure for taxation of costs in suits before the Delhi High Court is governed by Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018.

Commercial litigators practising before the Delhi High Court should familiarise themselves with this procedure.

A Significant Shift in Commercial Litigation

This part of the judgment reflects an important change in the philosophy governing commercial litigation.

Earlier, costs were often regarded as incidental. Today, they have become an integral component of commercial justice.

This shift serves two important purposes. First, it ensures that a successful litigant is not left financially disadvantaged merely because it approached the Court to protect its legal rights. Secondly, it discourages frivolous and dishonest litigation.

A party contemplating infringement or adopting unnecessary delaying tactics must now appreciate that, in addition to damages, it may also be required to reimburse the successful party for substantial litigation expenses. This promotes greater procedural discipline and commercial accountability.

Practical Lessons for Commercial Litigators

Maintaining proper records throughout the litigation is no longer merely a matter of good office management. It has direct financial consequences.

Advocates should preserve fee invoices, court fee receipts, Local Commissioners’ bills, process fee receipts, expert invoices, and other litigation-related documents. These records may ultimately form the basis of a successful claim for actual litigation costs.

Equally important, lawyers should specifically seek such relief in the plaint itself and, where costs are awarded, comply with the procedure prescribed by the Delhi High Court Rules by filing a properly supported Bill of Costs.

Part XII – Why Every Aspiring Commercial Litigator Should Read This Judgment: Twelve Practical Lessons

Every judgment teaches a legal principle. Some judgments explain a statutory provision. A very small number of judgments teach lawyers how to conduct litigation.

In my respectful opinion, the decision of the Delhi High Court in Johnson & Johnson Pte. Ltd. v. Abbireddi Satish Kumar & Ors. belongs to this rare category.

What makes this judgment exceptional is not merely the result reached by the Court, but the manner in which every stage of commercial litigation has been analysed. From the institution of the suit to the grant of final relief, the judgment provides valuable guidance on almost every important aspect of commercial litigation.

Having examined the judgment in detail, the following practical lessons emerge.

1. Procedure Can Decide the Entire Litigation

Commercial litigation is procedure-driven. Unlike ordinary civil suits, procedural timelines under the Commercial Courts Act are not mere guidelines. Failure to comply with them may permanently extinguish valuable procedural rights. The defendants’ inability to file their Written Statement within the prescribed period fundamentally altered the course of the litigation. Procedural discipline is often just as important as substantive legal rights.

2. Jurisdiction Must Be Examined Before Filing the Suit

Many lawyers devote considerable attention to the merits of the dispute but comparatively little attention to jurisdiction. A well-drafted plaint must establish territorial jurisdiction with precision. The plaintiff should clearly plead every jurisdictional fact and place supporting material on record at the outset. Jurisdiction should never become an afterthought.

3. A Plaint Is More Than a Formal Document

Once the defendants lost the opportunity to file their Written Statement, the plaint became the principal document before the Court. Every material fact pleaded by the plaintiff assumed enormous significance. A commercial plaint should never contain vague allegations. Every assertion should be supported by documents wherever possible. A carefully drafted plaint frequently becomes the strongest weapon available to the plaintiff.

4. Order VII Rule 11 Is Not a Substitute for Trial

Order VII Rule 11 is concerned only with the maintainability of the plaint. It is not concerned with the eventual merits of the plaintiff’s case. Young lawyers often confuse these two concepts. Disputed questions of fact cannot ordinarily be decided while considering an application under Order VII Rule 11.

5. Order VIII Rule 10 Does Not Mean an Automatic Decree

Even where the defendant fails to file a Written Statement, the Court does not mechanically decree the suit. The plaintiff must still establish a legally sustainable claim through proper pleadings and reliable documentary evidence. This preserves both procedural efficiency and judicial fairness.

6. Trademark Litigation Is About Consumer Perception

Trademark disputes are not decided through microscopic comparison of spellings. The real question is how an ordinary consumer is likely to perceive the competing products. Lawyers arguing trademark matters should present the Court with photographs, packaging comparisons, market evidence and other material demonstrating the overall commercial impression created by the rival products.

7. Trade Dress Is Often as Valuable as the Trademark

Consumers frequently identify products by their packaging rather than by reading the trademark. Colour combinations, layout, fonts, labels and overall presentation may all contribute towards a product’s distinctiveness. Protecting trade dress is therefore as important as protecting the trademark itself.

8. Local Commissioners Can Determine the Outcome of the Litigation

Prompt preservation of evidence often determines the success of intellectual property litigation. A well-executed commission may reveal the scale of infringement, preserve valuable evidence and expose continued violations of judicial orders. Every commercial litigator should understand both the legal and strategic importance of this remedy.

9. Damages Are Not One-Dimensional

Compensatory damages restore the plaintiff. Punitive damages punish deliberate wrongdoing. Aggravated damages recognise particularly objectionable conduct. Each category serves a distinct legal purpose. Understanding these differences enables lawyers to present more effective arguments on the question of relief.

10. Litigation Costs Have Entered a New Era

Commercial litigation is no longer governed by the traditional concept of nominal costs. The judgment demonstrates the growing importance of actual litigation costs, Bills of Costs and the role of the Taxing Officer. Maintaining proper records of litigation expenses is now an important professional responsibility.

11. Commercial Litigation Requires Preparation, Not Improvisation

Successful commercial litigation is rarely the result of courtroom improvisation. It is the product of careful preparation – every pleading, every document, every procedural step, every interim application, every strategic decision. Each contributes to the final outcome. The present case is a textbook illustration of this principle.

12. A Judgment That Teaches More Than Trademark Law

Although this was a trademark infringement and passing off action, the judgment teaches much more. It explains procedural law, demonstrates effective case management, illustrates the interaction between the Trade Marks Act, the Commercial Courts Act and the Code of Civil Procedure, discusses evidence, analyses damages, and examines litigation costs. In short, it provides a comprehensive lesson on commercial litigation itself.

Conclusion

The Delhi High Court’s decision in Johnson & Johnson Pte. Ltd. v. Abbireddi Satish Kumar & Ors. is far more than a judgment on trademark infringement.

It is a comprehensive exposition of commercial litigation itself.

From jurisdiction and maintainability to pleadings, procedural discipline, trademark infringement, passing off, trade dress, consumer confusion, Local Commissioners, damages and litigation costs, the judgment systematically addresses nearly every significant issue that may arise in a commercial intellectual property dispute.

For law students, it provides conceptual clarity. For judicial service aspirants, it offers an excellent illustration of the practical application of procedural law. For young advocates, it serves as a roadmap for conducting commercial litigation effectively. For experienced practitioners, it is a valuable reminder that success in commercial litigation depends as much upon procedural discipline as upon substantive legal rights.

In an era where commercial disputes are increasing in both complexity and value, judgments of this nature assume particular significance. They do not merely resolve disputes – they educate the Bar, guide future litigants, and contribute to the development of commercial jurisprudence.

In my respectful view, this is not merely a judgment that deserves to be cited.

It is a judgment that deserves to be studied.