Summary
The Delhi High Court granted a permanent injunction and Rs. 1.21 crore in damages to Johnson & Johnson in a trademark case against ERSI and ElectroORS for infringing its ORSL brand. The court found deceptive similarity and violations of interim orders.
The Delhi High Court in a recent Trademark infringement case granted a permanent injunction to Johnson & Johnson Pte. Ltd. (J&J or Plaintiff) against Abbireddi Satish Kumar and other defendants for infringing J&J’s ORSL trademarks and trade dress through similar marks like ERSI and ElectroORS. The court awarded damages totaling approximately Rs. 1.21 crores across defendants and actual litigation costs, citing deceptive similarity and violation of interim orders.
Background
Johnson & Johnson Pte. Ltd., incorporated in Singapore in 1974, acquired the ORSL brand from Jagdale Industries Limited via an Assignment Deed dated November 7, 2014. The ORSL brand, introduced in India in 2003, covers flavored electrolyte drinks under Classes 30, 31, 32, and 33 of the Trade Marks Act, 1999. J&J holds multiple registrations, including for ORS-L Lemon (since 2003) and variants like Orange and Apple flavors. The brand has generated substantial sales and advertising revenue in India from 2014 to 2023.
The defendants, including Abbireddi Satish Kumar (trading as M/s Sree International India) and partners of M/s Pure Tropic, manufactured and marketed similar products under impugned marks and trade dress.
Facts of the Case
J&J discovered the defendants’ products bearing marks like ERSI FRUIT DRINK, ERSI FRUIT DRINK APPLE, and ERSI FRUIT DRINK ORANGE in September 2023 on websites such as dhanalakshmiagency.in and IndiaMart. These products mimicked J&J’s red-and-white color scheme, stylized script, fruit device placement, and descriptive matter.
Defendant No. 1 held registration No. 5322696 for the impugned mark dated February 10, 2022. J&J sent a cease-and-desist notice on September 5, 2022, but the defendants continued operations. Subsequent discoveries included new marks like ElectroORS, violating an interim injunction dated December 7, 2023.
Local Commissioners appointed on February 9, 2024, found infringing goods at defendants’ premises, including post-injunction manufactured items and invoices dated up to February 2024.
Issues Before the Court
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- Whether the defendants’ marks and trade dress infringed the plaintiff’s registered ORSL trademarks under Sections 27, 29, and 134(1) of the Trade Marks Act, 1999.
- Whether the defendants committed passing off through deceptive similarity.
- Territorial jurisdiction of the Delhi High Court.
- Violation of the interim injunction and entitlement to damages and costs under Order VIII Rules 1 and 10 CPC.
- Liability of manufacturers, distributors, and marketers among the defendants.
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Johnson & Johnson’s Arguments
J&J argued that its ORSL marks and trade dress, including unique packaging, color scheme, and stylized elements, were distinctive and registered since 2003. Substantial sales (e.g., Rs. 1,000+ crore in 2023) and advertising (Rs. 100+ crore in 2023) established goodwill.
The defendants’ marks like ERSI and ElectroORS were visually and phonetically similar, copying elements such as the ‘O’-like ‘E’, fruit devices, and descriptive text placement. This caused confusion, especially for identical goods (electrolyte drinks). J&J highlighted mala fide intent, including post-notice variations and injunction violations. Rectification petitions were filed against the defendants’ registrations.
J&J therefore sought permanent injunction, delivery-up of infringing goods, damages of Rs. 2 crore, and actual costs.
Defendant’s Arguments
Defendant No. 1 contended that there was no infringement, claiming their marks (e.g., ERSI) were distinct and registered. The Defendant also argued that the production and distribution of the impugned products were stopped immediately after receiving counsel’s advice. The trade dress was completely changed for the product ElectroORS, and business resumed under the new dress from April 2024. The Defendant also argued lack of territorial jurisdiction, as operations were based in Andhra Pradesh and Tamil Nadu.
Defendants Nos. 2 to 5 (M/s Pure Tropic partners) claimed they were mere service providers for mixing and blending, with no involvement in trademarks, marketing, or sales. They stated that the cease-and-desist notice was not addressed to them.
All defendants denied mala fide intent and sought dismissal, citing prior use and FSSAI guidelines allowing “ORS” with prefixes/suffixes.
Court’s Observation and Analysis
The court observed deceptive similarity in marks, trade dress, and packaging, including color schemes, script styles, and element placement, likely causing consumer confusion (triple identity test). It noted the defendants’ post-injunction activities, evidenced by Local Commissioners’ reports showing manufactured goods and invoices after December 7, 2023.
Jurisdiction was affirmed under Section 134(2) of the Trade Marks Act, as the plaintiff carried on business in Delhi. FSSAI guidelines on “ORS” usage did not permit deceptive adoption.
Under Order VIII Rule 10 CPC, due to non-filing of written statements, the court proceeded to judgment, treating Local Commissioners’ reports as evidence. It found infringement and passing off, with mala fide conduct, including violations warranting aggravated damages.
The court assessed damages based on seized goods quantities, invoice values, and severity of violations.
Conclusion
The court decreed a permanent injunction restraining the defendants from using ORSL-similar marks/trade dress, including ERSI and ElectroORS. It ordered delivery-up and removal of references from sites.
Damages awarded:
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- Damages to be paid by Defendant No. 1: Rs. 52,56,864/- (Rupees Fifty-Two Lacs Fifty-Six Thousand Eight Hundred and Sixty-Four) as compensatory damages; and Rs. 50,00,000/- (Rupees Fifty Lacs as Punitive damages
- Damages to be paid by Defendant nos. 2 to 5: Rs. 15,00,000/- (Rupees Fifteen Lacs)
- Damages to be paid by Defendant no. 6: Rs. 1,00,000/- (Rupees One Lac)
- Damages to be paid by Defendant no. 7: Rs. 1,50,000/- (Rupees One Lac Fifty Thousand)
- Damages to be paid by Defendant no. 8: Rs. 1,50,000/- (Rupees One Lac Fifty Thousand)
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Citation: Johnson & Johnson Pte. Ltd. v. Mr. Abbireddi Satish Kumar & Ors., CS(COMM) 801/2023 & I.A. 1741/2024, I.A. 31225/2024, I.A. 31226/2024, I.A. 1880/2025, Delhi High Court.