At first glance, Jyothy Labs v. Dabur looks like a fairly straightforward trademark dispute over the use of “NEEM” on toothpaste packaging. But beneath the favourable factual matrix lies a shakier doctrinal foundation, particularly on essential-feature protection, the descriptive–suggestive divide, and passing off. In this post, Harsh Kashyap examines how the Bombay High Court reached what may well be the right result on the facts, while questioning whether parts of its reasoning can safely travel beyond them. Harsh is a 3rd-year B.Sc. LLB student at NFSU Gandhinagar.
Saved by the Facts: A Critical Look at the Doctrinal Stretches in Jyothy Labs v. Dabur
By Harsh Kashyap
The difference between a descriptive trademark and a suggestive one isn’t just a matter of legal classification. It determines the burden of proof. A descriptive mark requires its owner to prove that the public associates the mark with their product, which in legalese is known as obtaining secondary meaning. Whereas a suggestive mark doesn’t require such proof. In the recent case Jyothy Labs v. Dabur, this distinction became central and also decided the outcome on Dabur’s most basic defence that ‘NEEM’ cannot be owned by anyone. The Bombay High Court held that ‘NEEM’ is suggestive and not descriptive, because it is used across diverse product categories, meaning a consumer must take a mental step to link it specifically to toothpaste. The classification matters because it allowed Jyothy Labs to avoid proving secondary meaning and also supported the Court’s passing off finding. While the Bombay High Court’s order rests on several other grounds too, this one is the shakiest and gets the least attention.
The Fact, Dispute & Decision, Briefly
The dispute was not over a standalone word mark, but over two competing label marks featuring the word ‘NEEM’. Jyothy Labs held 3 registered composite label marks in class 3, all with ‘NEEM’ as the lead feature, and none of them disclaimed. It claims to have used the word since 1920 and to have acquired it from its predecessor. Subsequently, the plaintiff came across Dabur’s application to register the label mark as (set out below) and opposed it. Despite the pending opposition, Dabur started commercial use; thus, Jyothy Labs filed the present suit. The Court, with detailed reasoning and analysis, granted the injunction in favour of Jyothi Labs, but clarified that Dabur may use the mark descriptively to show that neem is an ingredient in its toothpaste, but not in the manner on the impugned Label, that is, not as the primary, prominent feature or the main identifier on the packaging.
Table A
| Plaintiff’s Label | Impugned Label | Defendant’s International Label |
| | | |
What Works in Court’s Reasoning
The Court’s reasoning and analysis, spanning 24 paragraphs, rests on 7 foundational bases. Four of those – estoppel, the packaging switch, the house mark argument, and the publici juris defence- have a factual basis and, on the facts considered by the Court, are quite solid.
On estoppel, Dabur asserted that “NEEM” was a generic term, free for competitors to use, despite the fact that Dabur had earlier applied to register “NEEM” as the principal component of its label and protected exclusive rights over other botanical names such as “MESWAK” and “BABOOL”. The Court pointed out this contradiction while rejecting this argument. Regarding the packaging switch, Dabur relied on Sections 30(2)(a) and 35 of the Trade Marks Act 1999 to argue for an honest and descriptive use of “NEEM” and the Court rejected it relying on the difference in Indian and international packaging labels of Dabur and the reason for that change, namely, “NEEM” was changed in order to cater to the Indian market, as the proof of the conscious use of “NEEM” as the indicator of source. Regarding the house mark defence, the Court held that Dabur’s alleged house mark would not have resolved the confusion, reiterating that a house mark indicates the manufacturer, whereas a product mark indicates the product. Lastly, the publici juris defence was also dismissed due to defects in the uncertified Nielsen type report submitted by Dabur, emphasising that registrations alone cannot prove actual use by others. Thus, these four defences are clearly fact-based.
Where It Seems Problematic
Apart from these 4, the remaining 3 – essential feature protection, the classification of “NEEM” as suggestive rather than descriptive, and passing off – involve broader doctrinal questions and form the focus of the analysis below.
- Essential Feature Protection
Dabur argued that under section 17(2) of the Act, the plaintiff could not claim a monopoly over the word ’NEEM’ as it was a part of a composite mark and was not separately registered. The Court, relying on the ‘synecdoche principle’ which says that the leading or dominant feature of a composite mark can be protected even without separate registration, rejected this argument.
The problem is not with the principle, but with how the court dealt with Freudenberg Gala Household Products v. Gebi Products, perhaps the strongest precedent for the defendant. In that case, a similar argument that a common, traditional word placed prominently within a composite label deserves protection as its leading feature was outrightly rejected for the mark LAXMI on grass brooms. The Court in the present case distinguished Freudenberg on two grounds.: i) that the plaintiff there did not hold a registered label mark, and ii) that the defendant there had not applied to register the impugned mark. On a perusal, neither ground holds up. In Freudenberg, the plaintiff did hold a registered label mark, ‘LAXMI’, in a distinct font (para 2 &13) and the defendant there had also applied to register its own MAHALAXMI mark in the same class (Para 6). It is important to highlight that Freudenberg is a division bench judgment. Therefore, the present Court was distinguishing a binding precedent, making the accuracy of its factual distinction particularly important. If that distinction does not hold, the basis for departing from Freudenberg becomes weaker.
- Suggestive, Not Descriptive
This is perhaps the weakest part of the order. Dabur disputed the Plaintiff’s claim that ‘NEEM’ had acquired distinctiveness in relation to toothpaste. They argued that ‘NEEM’ was at most a descriptive or common term, incapable of exclusive protection. The Court classified ‘NEEM’ as suggestive and not descriptive using the ‘imaginative leap’ test from McCarthy on Trademarks and multiple judgments.
The Imaginative Leap test is quite straightforward. Using this, a mark is considered descriptive if the person who sees it immediately understands which product they are dealing with, whereas if they need to think about it for even a short time, the mark is considered suggestive.
The Court applied this by pointing to the range of products in which neem appears, like soap, hair oil, fertiliser, and pet perfume, and noted that because neem is not exclusively associated with toothpaste, a consumer cannot immediately connect the word to that product without some mental step in between; therefore, the mark is suggestive. This allowed the Plaintiff to avoid proving that their mark has obtained secondary meaning, which is harder to prove in court.
The problem with this is that the imagination leap test has been adopted in an abstract context rather than from the perspective of the consumer in the relevant market. The Bombay High Court in People Interactive v. Vivek Pahwa held that the degree of distinctiveness and imagination should be based on the consumer’s perception in the concrete context. In India, there is nothing abstract or distant about the association between the word ‘NEEM’ and oral products. The use of neem twigs for oral hygiene is rooted in culture and predates the emergence of toothpaste. Thus, with regard to the criteria of the People Interactive case, there is simply no need for any imagination when a consumer encounters the mark NEEM’ on oral care products in India.
Further, the Court relied on J.L Mehta, Lupin, Sapat and Central Camera Co. for the finding that, as NEEM is suggestive, the Plaintiff doesn’t need to establish secondary meaning at this stage. The problem is that none of these cases actually hold for what they are being cited. J.L. Mehta concerns which of two competing meanings of a single word is the one popularly understood, it has nothing to do with whether a suggestive mark owner needs to prove secondary meaning at the interim stage. Central Camera Co. holds that descriptiveness under Section 9(1)(d) requires a direct and plain reference to the character or quality of goods, nothing about secondary meaning. Lupin is a Full Bench decision on whether a court can examine the validity of a registration at the interlocutory stage; it says nothing about classifying marks or the secondary meaning burden. Sapat concerns the prima facie validity of registration and the heavy burden on a defendant challenging it. None of these cases supports the proposition for which they are cited.
- Passing Off
The Court’s finding on passing off doesn’t stand on its own ground. It is heavily dependent on the suggestive-mark finding, which, as described above, is itself shaky.
For a passing off claim to succeed, the plaintiff must show that there exists goodwill which has been misrepresented by the defendants, and that caused or is likely to cause damage to the goodwill. Importantly, goodwill must be shown to vest exclusively in the mark itself, meaning the public associates ‘NEEM’ with the Plaintiff only. Sales figures and advertising spend do not by themselves establish this. The Defendant relied on Aegon Life v. Aviva, which supports this point, the case held that sales and advertising figures alone does not prove goodwill.
The Court’s response to Aegon Life was that the Plaintiff’s period of use, spanning nearly a century, was far longer than the short period considered in that case. This answers the objection on duration, but not the objection on the kind of evidence required. However, a longer duration of use only makes it possible for the public to create such an exclusive link. It does not by itself prove that the link has been made. As a consequence, long and consistent use is being treated as evidence of goodwill without proof of consumers’ perception.
This is problematic as it risks making the duration of use a proxy for proof of consumer perception. The consistent long-term use may support an inference of goodwill, but it does not prove that such goodwill belongs exclusively to the Plaintiff. Without evidence of how the average consumer perceives the term ‘NEEM,’ the Court effectively assumed a fact that was to be proved by the Plaintiff. This risks granting exclusivity to a descriptive term based on the duration of its use, rather than consumer perception.
Conclusion
On first reading, the case seems easy and straightforward, but on closer examination, it raises some doctrinal questions. The case, in many ways, was saved by facts, particularly Dabur’s inconsistent conduct, its packaging choices, and the factual circumstances surrounding its use of “NEEM”. If the factual matrix changes, then the Court’s reasoning may provide a weaker foundation for resolving similarly borderline disputes.
