Case Study – Duplicate Boroline Antiseptic Perfumed Cream I NISSMAT I IPR

What this session covered

This session, a moderated conversation between a host and a single guest, examined a case study in brand protection: the circulation of counterfeit versions of Boroline antiseptic perfumed cream, a widely used skin cream recognised chiefly by its green packaging and its distinctive design and lettering. The speaker explained that the case was unusually difficult for enforcement and investigating agencies because, at the material time, the product's mark had not been registered under trademark law and its artwork did not attract statutory protection either, leaving the manufacturer without the ordinary registered-rights remedies against imitators.

The discussion turned on the common-law doctrine of passing off. The speaker described the Supreme Court of India's approach as resting on three ingredients — an unfair trade practice, the appropriation of the economic benefit and reputation earned by another, and deception, extending to deception of the consumer rather than only of the manufacturer — and illustrated this with two Supreme Court judgments, one concerning a soap whose near-identical get-up was held to deceive ordinary purchasers even though the wording and shades differed, and another involving a healthcare company. The speaker noted that an unregistered mark remains protected at common law through passing off, and that criminal action could also be pursued under the Indian Penal Code, including its cheating provision, provided reputation, goodwill and deception could be proved.

On the investigation itself, the speaker recalled that the hardest evidential question was establishing that the design belonged to the manufacturer at all. This was resolved when the company traced original artwork to its own artist, prepared many years earlier, and certified it as its own; the speaker did not recall the precise date. On that basis duplicate stock circulating in parts of Uttar Pradesh was seized, the investigation found numerous shopkeepers and medical stores selling the imitation, and the case was registered with the police and taken to court. Goodwill and reputation were evidenced through accounts, sales and distribution records, and certificates and photographs gathered from retailers. The session closed with the speaker's recommendation that proprietors register their trademarks rather than rely on the heavier evidential burden of passing off, the host's observation that criminal enforcement and civil recovery of economic loss are distinct remedies, and a note that NISSMAT operates an enforcement department to which such cases may be brought.

Key points raised

• According to the speaker, the Boroline mark and its packaging design were unregistered at the time of the case, so enforcement proceeded on the common-law doctrine of passing off rather than under trademark registration.
• The speaker set out three ingredients of passing off drawn from Supreme Court rulings: an unfair trade practice, appropriation of another's economic benefit and reputation, and deception — including deception of the consumer.
• The decisive evidence was original artwork traced to the manufacturer's own artist and certified by the company, which established that the design was the manufacturer's own.
• Reputation and goodwill were proved through books of account, sales and distribution records, and certificates and photographs collected from shopkeepers during the investigation.
• The host pointed out to the audience that two types of remedy are available: enforcement action through the law enforcement agencies, which operates to the detriment of the offending product being sold in the market, and civil proceedings, which the aggrieved party must pursue in the civil courts to recover economic loss.
• The speaker strongly recommended trademark registration, arguing it gives definite statutory protection and avoids the substantial evidential burden that passing-off actions impose.