Delhi High Court Grants Johnson & Johnson Permanent Injunction and Rs. 1.21 Crore Damages in ORSL Trademark Infringement Suit

The Delhi High Court recently delivered a landmark judgment in favor of Johnson & Johnson Pte. Ltd. (J&J) in a trademark infringement suit concerning the ORSL brand. The court granted a permanent injunction restraining Abbireddi Satish Kumar and other defendants from using marks and trade dress deceptively similar to J&J’s registered ORSL trademarks. Additionally, the court awarded damages amounting to approximately Rs. 1.21 crore and ordered the defendants to bear actual litigation costs.

Johnson & Johnson Pte. Ltd., a Singapore-incorporated entity since 1974, acquired the ORSL brand from Jagdale Industries Limited through an Assignment Deed dated November 7, 2014. The ORSL brand, launched 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 trademark registrations for ORSL and its variants, including ORS-L Lemon, Orange, and Apple flavors, which have generated substantial sales and advertising revenue in India from 2014 through 2023.

The defendants, including Abbireddi Satish Kumar operating as M/s Sree International India and partners of M/s Pure Tropic, were found to have manufactured and marketed electrolyte drinks under marks such as ERSI FRUIT DRINK, ERSI FRUIT DRINK APPLE, and ERSI FRUIT DRINK ORANGE. These products were sold via online platforms including dhanalakshmiagency.in and IndiaMart. The court noted that the defendants’ products mimicked J&J’s distinctive red-and-white color scheme, stylized script, fruit device placement, and descriptive text, thereby creating a likelihood of confusion.

Defendant No. 1 held trademark registration No. 5322696 for the mark ERSI dated February 10, 2022. Despite J&J issuing a cease-and-desist notice on September 5, 2022, the defendants continued their infringing activities. The court further observed the defendants introduced new marks such as ElectroORS, violating an interim injunction issued on December 7, 2023.

Local Commissioners appointed by the court on February 9, 2024, conducted inspections at the defendants’ premises. They found infringing goods manufactured post-injunction and invoices dated up to February 2024, confirming ongoing violations.

The legal issues before the court included whether the defendants’ marks and trade dress infringed J&J’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; the territorial jurisdiction of the Delhi High Court; violations of the interim injunction; entitlement to damages and costs under Order VIII Rules 1 and 10 of the Civil Procedure Code; and the liability of manufacturers, distributors, and marketers among the defendants.

J&J argued that its ORSL marks and trade dress were distinctive and had been in continuous use since 2003, supported by substantial sales exceeding Rs. 1,000 crore and advertising expenditures over Rs. 100 crore in 2023 alone. The plaintiff contended that the defendants’ marks ERSI and ElectroORS were visually and phonetically similar, copying key elements such as the ‘O’-like ‘E’, fruit devices, and descriptive text placement, thereby causing consumer confusion for identical electrolyte drink products. J&J also highlighted mala fide intent, including post-notice variations and violations of the interim injunction, and filed rectification petitions against the defendants’ registrations.

Defendant No. 1 denied infringement, asserting that their marks were distinct and registered. They claimed to have ceased production and distribution of the infringing products upon receiving legal advice and argued that the trade dress was completely changed for ElectroORS, with business resuming under the new dress from April 2024. The defendant also challenged the Delhi High Court’s territorial jurisdiction, stating their operations were based in Andhra Pradesh and Tamil Nadu.

Defendants Nos. 2 to 5, partners of M/s Pure Tropic, claimed to be mere service providers involved only in mixing and blending, without involvement in trademarks, marketing, or sales. They noted that the cease-and-desist notice was not addressed to them.

All defendants denied mala fide intent and sought dismissal of the suit, citing prior use and compliance with Food Safety and Standards Authority of India (FSSAI) guidelines permitting the use of “ORS” with prefixes or suffixes.

The court, however, found clear deceptive similarity in the defendants’ marks, trade dress, and packaging, including color schemes, script styles, and element placement, satisfying the triple identity test for infringement. The court also noted the defendants’ post-injunction activities, as evidenced by the Local Commissioners’ reports documenting manufactured goods and invoices dated after the December 7, 2023 interim injunction.

Consequently, the Delhi High Court granted Johnson & Johnson a permanent injunction against the defendants, awarded damages totaling Rs. 1.21 crore, and ordered recovery of actual litigation costs, reinforcing the protection of established trademarks against infringing conduct in the Indian market.