Jyothy claimed that its predecessor, Calcutta Chemical Company Ltd., had adopted \u201cNEEM\u201d for toothpaste around 1920. Its suit relied on three registrations in Class 3 covering toothpaste or dentifrices. According to Jyothy, \u201cNEEM\u201d was the leading and essential feature of these marks and had become distinctive of its products through extensive and continuous use.<\/p>\n
Two older registrations contained disclaimers concerning \u201cNEEM\u201d, but had lapsed before the suit was filed. Jyothy clarified that its infringement claim rested on the three subsisting registrations, rather than those earlier registrations.<\/p>\n
The dispute arose after Jyothy discovered Dabur\u2019s application to register the impugned label and opposed it. Jyothy subsequently alleged that Dabur commenced using the label in December 2020. It sought interim injunctions against infringement and passing off.<\/p>\n
The Court held that comparison of composite marks as a whole permits consideration of their distinguishing or essential features. Such a feature may remain in the recollection of the average consumer.<\/p>\n
According to the Court, Section 17 did not prevent Jyothy from relying on the appropriation of an essential feature when establishing infringement of its registered labels. On the material before it, \u201cNEEM\u201d was the leading and essential feature of both Jyothy\u2019s marks and Dabur\u2019s impugned label. The Court also recorded that Dabur had not challenged the registrations forming the basis of the suit.<\/p>\n
The Court prima facie rejected the contention that \u201cNEEM\u201d was generic for toothpaste. It noted that Dabur\u2019s material showed neem being used in connection with numerous products, including soaps, hair oils, detergents and fertilisers. According to the Court, this did not establish that \u201cNEEM\u201d was the generic name of toothpaste.<\/p>\n
The Court further considered \u201cNEEM\u201d suggestive of toothpaste because a consumer would require an imaginative leap to make that association. On this reasoning, Jyothy was not required to establish secondary meaning at that stage.<\/p>\n
The Court also relied on Dabur\u2019s application to register labels prominently featuring \u201cNEEM\u201d and its enforcement of rights in \u201cMESWAK\u201d and \u201cBABOOL\u201d. It considered Dabur estopped from contending that neem was generic and treated its unexplained difference in approach as a circumstance favouring Jyothy at the interim stage.<\/p>\n
Alternatively, the Court observed that the proviso to Section 9(1) recognised registration based on acquired distinctiveness. Jyothy\u2019s pleaded use over nearly a century and its evidence of sales, promotion and continuous commercial use were relevant to interim protection. These observations were made at the interlocutory stage, with issues requiring evidence left for trial.<\/p>\n
The Court declined to extend disclaimers from the lapsed registrations to the registrations relied upon in the suit. It held that a disclaimer must be expressly recorded for the relevant registration and could not simply be inferred. Disclaimers also did not remove the disclaimed matter from a comparison of marks as encountered by consumers or curtail the independent remedy in passing off.<\/p>\n
The Court rejected the suppression objection. Jyothy had disclosed the existence of its predecessor\u2019s registrations, and Dabur had not shown that the alleged non-disclosure met the threshold for denying equitable relief. The Court also declined to import handwritten Registry notations into a registration unless reflected in the final order. It treated Jyothy\u2019s pleas of inherent and acquired distinctiveness as alternative pleas, rather than mutually destructive positions.<\/p>\n
The Court held that the presence of third-party marks on the Register did not establish actual and substantial commercial use. Dabur had not sufficiently discharged that evidentiary burden at the interim stage. Jyothy\u2019s earlier adoption and evidence of enforcement also weighed against the defence. The Court held that a proprietor was not obliged to proceed against every infringer.<\/p>\n
The Court questioned the material presented as a Nielsen report because it lacked authentication and contained unexplained inconsistencies. Its evidentiary value would have to be tested at trial.<\/p>\n
The Court compared Dabur\u2019s international and domestic packaging. On the international packaging, \u201cNEEM\u201d appeared relatively inconspicuously as a descriptor. On the impugned label, it appeared centrally in large, bold lettering.<\/p>\n
The Court considered this presentation, together with the explanation offered for the change and Dabur\u2019s registration application, inconsistent with its plea of bona fide descriptive use. It therefore declined to apply the defences under Sections 30(2)(a) and 35 at that stage.<\/p>\n
The Court also held that the presence of \u201cDABUR\u201d did not, by itself, remove the likelihood of confusion. A house mark could identify the manufacturer while another prominent feature identified the particular product.<\/p>\n
The Court allowed the interim application in terms of the infringement and passing-off prayers. It expressly preserved Dabur\u2019s freedom to use \u201cNEEM\u201d per se in a descriptive manner on the impugned label or otherwise. On Dabur\u2019s request, the Court stayed its order for six weeks from the date of upload.<\/p>\n
The following extracts reproduce the Court\u2019s material reasoning, findings and directions. Omissions within extracts are marked […]. Paragraph 79 contains lettered subparagraphs.<\/p>\n
[…] It is well settled that at the interlocutory stage, the Court is not required to carry out a mini trial. In my view and from the material that has been placed before the Court, these are all issues which would require evidence to be led and would have to be determined at trial.<\/p><\/blockquote>\n
Paragraph 79(B) \u2014 Scope of the claim<\/h3>\n
[…] The Defendant’s contention that the Plaintiff is seeking to monopolise or claim exclusivity over ‘NEEM’ is plainly untenable. It has been expressly clarified that the Plaintiff is not seeking to restrain the Defendant from using the word ‘NEEM’ per se but is only aggrieved by the manner in which the Defendant had adopted and is using ‘NEEM’ on the impugned label, i.e., as its leading and essential feature.<\/p><\/blockquote>\n
Paragraph 79(C) \u2014 Subsisting registrations<\/h3>\n
[…] As already noted in (B), the Defendant has not assailed any of the Plaintiff’s Suit Marks. All three Suit Marks have at all times remained valid and subsisting, and the Plaintiff is therefore entitled to invoke the statutory rights conferred upon a registered proprietor under Sections 28 and 29 of the Trade Marks Act, 1999, which flow from these registrations.<\/p><\/blockquote>\n
Paragraph 79(H) \u2014 Section 17 and essential features<\/h3>\n
The Defendant’s reliance upon Section 17 of the Trade Marks Act is, also in my prima facie view, equally misplaced. Section 17(1) confers upon the registered proprietor, the exclusive right to the trade mark taken as a whole. Section 17(2) prevents the proprietor from asserting an independent monopoly or exclusivity over a part of the mark which is common to the trade, non-distinctive or otherwise incapable of separate protection. It does not, however, mean that the proprietor of a composite or label mark is precluded from relying upon the appropriation of its essential and distinctive feature while establishing deceptive similarity. This, in my view, is covered by the decisions upon which the Plaintiff has placed reliance and which are referred to in (D) and (E). Even otherwise, the interpretation which the Defendant seeks to propound would substantially denude the protection given to composite marks.<\/p><\/blockquote>\n
Paragraph 79(I) \u2014 Disclaimers<\/h3>\n
[…] Third, even in cases where disclaimers are present, the comparison of the marks does not involve excluding the disclaimed element. As held in Pidilite Industries Ltd. v. Riya Chemy, Pidilite Industries Ltd. v. S.M. Associates & Ors., and Serum Institute of India Ltd. v. Green Signal Bio Pharma Pvt. Ltd. & Anr., the comparison must be undertaken on the basis of how a mark appears in the marketplace and how it is perceived by consumers since consumers are unaware of disclaimers recorded on the Register. Fourth, a disclaimer attached to one registration does not automatically attach to another registration, nor does such a disclaimer curtail the proprietor’s independent remedy in passing off. […]<\/p><\/blockquote>\n
Paragraph 79(J) \u2014 Suppression<\/h3>\n
[…] In any event, and as held in Sab Miller India Ltd. v. Jagpin Breweries Ltd., State of NCT v. BSK Realtors LLP & Anr., and S.J.S. Business Enterprises v. State of Bihar, suppression which justifies the refusal of equitable relief, must be such that its non-disclosure would render the grant of the relief sought unjust, or render it impossible for the Court to arrive at a just decision on the application. In my prima facie view, the Defendant has not shown that the alleged non-disclosure in the present case meets that threshold.<\/p><\/blockquote>\n
Paragraph 79(K) \u2014 Registry notations<\/h3>\n
[…] The Defendant’s reliance upon handwritten note-sheets dating back to 1953 would also at this stage not assist the Defendant since as held in Sapat International Pvt. Ltd. v. Victoria International Pvt. Ltd., internal or handwritten notations of the Registrar cannot be read into a registration unless they are reflected in the final order. Admittedly, the final order dated 10th June 1953 does not contain any finding regarding “NEEM toothpaste” and does not impose any limitation or fetter upon the registration. The specification of goods simply reads “Dentifrices”. […]<\/p><\/blockquote>\n
Paragraph 79(L) \u2014 Alternative pleas<\/h3>\n
I am also unable to accept the Defendant’s contention that the Plaintiff has adopted mutually destructive pleas. In my view, a holistic reading of the Plaint and the Affidavit in Rejoinder shows that the Plaintiff has pleaded its case in the alternative. […]<\/p><\/blockquote>\n
Paragraph 79(M) \u2014 Genericness and Dabur\u2019s conduct<\/h3>\n
I am also, prima facie, unable to accept the Defendant’s contention that ‘NEEM’ is generic in relation to toothpaste broadly for three reasons. First, the material relied upon by the Defendant itself demonstrates use of ‘NEEM’ in relation to a wide variety of goods, including hair oil, soap, body mist, face wash, pet perfume, powders, tablets, prickly heat powder, plant fertilisers, laundry detergents and anti-ageing cream. This material does not establish that ‘NEEM’ is the generic name of toothpaste; it in fact indicates otherwise. Second, the Defendant has itself sought registration of the impugned label marks in which ‘NEEM’ is prominently featured, thereby asserting proprietary rights in the mark as it appears on its packaging. Hence, the Defendant is estopped from contending that neem is generic. Third, the Defendant has itself enforced statutory rights in respect of “MESWAK” and “BABOOL” against third parties, notwithstanding the presence of the third- party house marks appearing on the labels in question. The Defendant has not offered any explanation, much less a satisfactory explanation as to why “NEEM”, which, like “MESWAK” and “BABOOL”, is associated with oral hygiene, must necessarily be treated differently. At the interim stage, such conduct on the part of the Defendant is most certainly a factor that would militate against the Defendant and in favour of the Plaintiff.<\/p><\/blockquote>\n
Paragraph 79(N) \u2014 Suggestive character<\/h3>\n
As already noted in (M), however, to elaborate, the material relied upon by the Defendant, far from conclusively establishing that ‘NEEM’ is descriptive of toothpaste, prima facie supports the Plaintiff’s contention that it is suggestive. The use of neem in connection with a wide range of unrelated goods indicates that the word does not directly and immediately associate neem with toothpaste. For such an association to be made, a consumer would have to make an “imaginative leap” as referred to in McCarthy on Trademarks and Unfair Competition and adopted by this Court in Hygienic Research Institute Pvt. Ltd. v. Chandan and Shah Trading LLP & Anr., Bata India Ltd. v. Chawla Boot House and Another, and Bawaskar Technology (Agro) Pvt. Ltd. v. Anannya Agro Products and Ors. Hence, neem would clearly only be suggestive of toothpaste and not generic or descriptive. […]<\/p><\/blockquote>\n
Paragraph 79(O) \u2014 Acquired distinctiveness<\/h3>\n
In any event, even accepting that ‘NEEM’ is descriptive, the proviso to Section 9(1) of the Trade Marks Act expressly recognises that a descriptive mark is also capable of registration if it has acquired distinctiveness through use. The Plaintiff has pleaded nearly a century of use as on the date of the Suit and has placed substantial material on record concerning sales, promotion and continuous commercial use. Such prior adoption and continuous and longstanding use is plainly a relevant circumstance, at least at the interim stage. In these circumstances, I find that the Plaintiff’s reliance upon the decision of the Supreme Court in Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd. is apposite.<\/p><\/blockquote>\n
Paragraph 79(P) \u2014 Common trade use<\/h3>\n
I am also at this interim stage unable to accept the contention that ‘NEEM’ has become common to the trade or publici juris. The Defendant has in support of this contention principally relied upon a search report identifying third-party registrations which have ‘NEEM’. However, as held in Jagdish Gopal Kamath & Ors. v. Lime & Chilli Hospitality Services, the mere presence of marks upon the Register does not establish that an expression or mark has become common to the trade. The burden lies on the party asserting such a defence to establish actual and substantial commercial use of the third-party marks relied on. In my prima facie view, the Defendant has not at this stage sufficiently discharged this burden.<\/p><\/blockquote>\n
Paragraph 79(Q) \u2014 Prior adoption and enforcement<\/h3>\n
[…] The Plaintiff has also placed material on record indicating that it has consistently asserted and protected the Plaintiff’s statutory rights, which flow from the said registrations by filing oppositions, issuing cease-and-desist notices and instituting proceedings for infringement and passing off. In these circumstances, and given that the third-party registrations are unsupported by evidence of prior or substantial commercial use, they would not be sufficient to establish that ‘NEEM’ has become publici juris.<\/p><\/blockquote>\n
Paragraph 79(R) \u2014 Action against every infringer<\/h3>\n
It is equally settled that the proprietor of a registered trade mark is not obliged to proceed against every infringer. […]<\/p><\/blockquote>\n
Paragraph 79(S) \u2014 Nielsen material<\/h3>\n
The Defendant’s reliance upon “the Nielsen Report” also does not at this stage inspire confidence. As pointed out by the Plaintiff, what the Defendant has claimed to be the Nielsen Report is firstly not authenticated or certified and clearly appears to be a compilation prepared by the Defendant. Secondly, the said material is not confined to the use of ‘NEEM’, but contains sales data pertaining to manufacturers marketing toothpaste under various brands. Thirdly, there are also apparent inconsistencies, including entries attributing products to manufacturers who did not exist during the relevant period and sales figures which do not correspond with the stated launch dates of certain products. Crucially, the Defendant has left all of this entirely unexplained. Therefore, the evidentiary value of this material, which is relied upon in the guise of a Nielsen Report, would have to be tested at trial.<\/p><\/blockquote>\n
Paragraph 79(V) \u2014 Descriptive use<\/h3>\n
I am also at this stage unable to accept the Defendant’s contention that its use of ‘NEEM’ is protected as bona fide descriptive use under Sections 30(2)(a) and 35 of the Trade Marks Act. In my view, the answer is clear from a comparison between the Defendant’s international and the impugned label. On the Defendant’s international packaging, ‘NEEM’ appears in a relatively inconspicuous manner on the bottom right, clearly used only descriptively. However, on the impugned label, ‘NEEM’ is displayed centrally and in large, bold lettering clearly as the leading and essential feature of the impugned label. The Defendant has therefore on the impugned label clearly used ‘NEEM’ as a trade mark and not in a descriptive manner. What I find most telling is the explanation offered by the Defendant for the change between the international packaging and the impugned label. The Defendant has plainly stated that the domestic packaging, i.e., the impugned label, was designed “to cater to the Indian market” without so much as offering any explanation, let alone a satisfactory explanation as to why this change was necessitated in the first place. In my prima facie view, therefore, 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. Hence, I prima facie find that the defences under Sections 30(2)(a) and 35 of the Trade Marks Act would not at this stage and in these facts be available to the Defendant.<\/p><\/blockquote>\n
Paragraph 79(W) \u2014 Dabur\u2019s registration application<\/h3>\n
[…] As already noted, the Defendant has itself sought registration of labels in which ‘NEEM’ appears as a leading and essential feature without disclaiming ‘NEEM’. In my prima facie view this is inconsistent with the Defendant’s contention that the Defendant is using ‘NEEM’ descriptively on the impugned label. The same would also apply to the defence under Section 35.<\/p><\/blockquote>\n
Paragraph 79(Y) \u2014 House mark and confusion<\/h3>\n
Also, the presence of the Defendant’s house mark “DABUR” does not, by itself, distinguish the rival labels or dispel the likelihood of confusion. As noted by the Division Bench of this Court in Meher Distilleries Pvt. Ltd. v. S.G. Worldwide Inc., while approving CCE v. Kalvert Foods, a house mark and a trade mark perform distinct commercial functions. The house mark ordinarily identifies the manufacturer, whereas the trade mark identifies the particular goods by which they are recognised, advertised and purchased in the marketplace. […]<\/p><\/blockquote>\n
Paragraph 79(Z) \u2014 Multiple essential features<\/h3>\n
[…] The Court emphasised that the impugned mark must be compared with the registered mark as a whole, with due regard to all its essential and distinctive features, rather than by isolating only its single most prominent component. The same principle applies here. The prominence accorded to the house mark “DABUR” does not, prima facie, diminish the significance of ‘NEEM’, which has been adopted and used as the leading and essential feature of the impugned label.<\/p><\/blockquote>\n
Paragraph 79(AA) \u2014 Passing off<\/h3>\n
I am also satisfied that the Plaintiff has made out a prima facie case in passing off by satisfying the test laid down in Laxmikant V. Patel v. Chetanbhai Shah, S. Syed Mohideen v. P. Sulochana Bai, and Reckitt & Colman v. Borden Inc., The Plaintiff’s long, continuous and extensive use of the Suit Marks prima facie establishes substantial goodwill. For the reasons already recorded, the Defendant’s prominent adoption of ‘NEEM’ as a source-identifying feature is likely to lead consumers to believe that its goods are commercially associated with, connected to, or originate from the Plaintiff. Injury to the Plaintiff’s goodwill and business reputation are natural and probable consequences of such misrepresentation.<\/p><\/blockquote>\n
Paragraph 79(BB) \u2014 Independent causes of action<\/h3>\n
I am also conscious of the distinction between infringement and passing off recognised by the Supreme Court in Ruston & Hornsby Ltd. v. Zamindara Engineering Co. However, in my prima facie view, the Plaintiff has independently established both causes of action. […]<\/p><\/blockquote>\n
Paragraph 80<\/h3>\n
For all these reasons, I am satisfied that the Plaintiff has made out a prima facie case of infringement as well as passing off. The balance of convenience also lies in its favour. I am satisfied that if interim protection is refused, the continued use of the impugned label would, in addition to the violation of the Plaintiff’s statutory rights, also cause loss, harm and injury to the Plaintiff. The Plaintiff is therefore entitled to interim protection.<\/p><\/blockquote>\n
Paragraph 81<\/h3>\n
Hence, for the aforesaid reasons, I pass the following Order: i. The Interim Application is allowed in terms of prayer clauses (a) and (b). ii. 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.<\/p><\/blockquote>\n
Paragraph 82<\/h3>\n
Mr. Khandekar, the Learned Counsel appearing on behalf of the Defendant has prayed for a stay to this Order and the same is granted for a period of 6 weeks from the day on which this Order is uploaded.<\/p><\/blockquote>\n
Case Citation<\/h2>\n
Jyothy Labs Ltd. v. Dabur India Ltd., Interim Application No. 1880 of 2021 in Commercial IP Suit No. 240 of 2021, Bombay High Court, Commercial Division, Arif S. Doctor J., pronounced on 10 August 2026.<\/p>\n