Counterfeit in Disguise: Trade Mark Infringement through Packaging and Labels and Its Threat to Public Health

Introduction : The packaging and labelling is usually the first interaction that the consumer has with a Product. The first thing that the consumer sees before reading the details of ingredients, dosage, price or manufacturer is the colour scheme, shape of the pack, logo, font, imagery and overall presentation. This way, packaging serves as a form of communication, conveying information about the product’s origin, quality, and identity. Because of this, packaging and labels are often used to create valuable trade marks, trade dress, etc. For certain products like food, medicines, cosmetics or medical devices, the law has a particular significance with regards to packaging. A copy of a package may secure two things for the consumers: an alias for the machine and a substandard product that looks like the authentic product, but is produced by another brand without the same controls or rigorous quality management processes of the original brand.

In the case of a medicine or surgical product or food for vulnerable consumers, this deception could trigger not only a loss of financial value but also have a detrimental effect on the health and even on life. Infringement of the Trade Mark by packaging and labelling is therefore more than a commercial battle between competing entities; it can be in the interests of consumer protection and public health. This blog focuses on the question of infringement of a trade mark in Packaging and Labelling as the Indian Trademark Law provides for, specifically on food and pharmaceutical products. It deals with the sections of the Trade Marks Act, 1999, Food Safety & Standards Act, 2006 and TRIPS Agreement that is applicable to it. It also explores the judicial sentiments and interpretation of copied packaging, counterfeit labels and trade dress as reflected through the recent Johnson & Johnson’s case against Pritamdas Arora (2025). 

Legal Provisions

The Trademarks Act, 1999(India)

Section 2(1)(q) gives a wide meaning to the word ‘package’. It covers any casing, box, container, covering, folder, receptacle, vessel, or casket, etc., as well as a bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper or cork. It is of particular significance since the majority of infringement will typically occur as the customer reads the trade mark on the package.

The term ‘deceptively similar’ is explained in section 2(1)(h). A deceptively similar mark is nearly the same mark to the extent that it is likely to deceive or to cause confusion. This mark needs not be a literal representation.

Section 29 deals with infringement of a registered trade mark. Two of its subsections are particularly useful for packaging: that is, one for the gastrointestinal tract and the other for the urinary tract. The meaning of the word ‘use’ is explained in section 29(6). A person uses a registered mark if he places it on a product or upon the container of a product, offers or exposes goods for sale under a mark, imports or exports goods under a mark, uses a mark on business papers or advertising.

Section 29(7) explains that a person infringes a registered mark when he uses it on material intended for use in labelling or packaging of goods or on business papers or in advertising if he knew or had reason to believe that such use was not authorized by the proprietor or a licensee. In this way, the one who finally sells the product will not be liable, but the one who was printing the fake labels as well.

The Food Safety and Standards Act, 2006 (FSS Act)

The term ‘unsafe food’ is defined in section 3(1)(zz). It refers to food whose nature, substance, quality is altered so as to be harmful to health and the term encompasses harm to the consumer via the package used for the food material. ‘Misbranded food’ is defined in Section 3(1)(zf), which applies to ‘food upon which a label is affixed which is false or misleading’, among other things.

The accountability is determined by section 27. Section 27(1) presumes the manufacturer/packer is guilty if the food is not compliant with the requirements of the Act and its rules and regulations. Section 27(2) makes sure that wholesalers and distributors will be obliged for issues including providing food beyond valid expiration date(s) or maintaining it in violation of manufacturer’s instructions for its storage.

International Framework: Berne Convention and TRIPS

Article 16(1) deals with the rights conferred on the owner of a registered trade mark. Where such use would lead to a likelihood of confusion, the owner has the exclusive right to prevent the use, on the part of third parties other than the owner, of similar or identical signs for identical or similar goods in the course of trade. Where there is no indication to the contrary in seeking for the similarity of the products, the likelihood of confusion is presumed where the identical sign is employed for the identical goods. This presumption is very helpful against counterfeiters, who copy marks and packs exactly. Article 61 calls for member countries to provide criminal procedures and penalties, at least in cases of wilful counterfeiting on commercial scale in relation to the trade mark. The remedies include imprisonment and fines that are enough to deter such acts, along with seizure, forfeiture and destruction of the infringing goods.

Legal Analysis

Packaging as Trade Dress

The Indian legislation does not have a specific provision for ‘trade dress’. This is protected via registered mark action and by passing off. Trade Dress refers to the overall appearance of the product such as colour scheme, shape, layout, fonts and images. When comparing two packs, the courts are not looking to see how many differences there are and keep count. In Parle Products (P) Ltd vs J.P. & Co, the Supreme Court considered looking at the overall impression which the two wrappers would create to a member of the general public. This makes packaging an ideal use for this approach as a buyer usually makes a swift decision.

When deceptively similar mark under section 2(1)(h). causes Health Risk

In most cases of trade mark disputes, the confused purchaser ends up with a different quality product. When dealing with medications and food it can happen that the buyer receives a product that is impure, out of date or the wrong product for him. The Supreme Court acknowledged this in Cadila Health Care Ltd. v Cadila Pharmaceuticals Ltd, which held that the test of ‘deceptive similarity’ ought to be even more strict for medicines since ‘confusion can have harmful consequences’. The  fake pack that contains a  fake expiration date when used in a real case, like the Johnson & Johnson example, illustrates how packaging can help conceal the actual state of the product.

Two Laws, One Problem

The intended owner of the brand has the protection of the Trade Marks Act for their goodwill. The health of the consumers has been protected under the FSS Act 1940 and for medicines under Drugs and Cosmetics Act 1940. A typical counterfeit pack will violate both rules. Ideally, they should work together, so that action against a counterfeiter is not left only to a brand owner who has the money to go to court.

Relevant Case Laws

Johnson & Johnson v. Pritamdas Arora t/a M/s Medserve & Anr:

The controversy started when fake SURGICEL products were discovered in the United States (USA) at the University of Kentucky Medical Center. The defendants’ premises were visited by the Court-appointed Local Commissioners with the seizure of counterfeit SURGICEL and ETHICON products and counterfeit labels and stickers along with relevant documentation. Also, it was noted that some products were original SURGICEL products supplied by AK Global which had expired. The products were repackaged in illegally-made packaging with the SURGICEL label and fake expiration dates. The defendants had also printed or made copies of counterfeit stickers and labels for repackaging products under the mark SURGICEL and other ETHICON-formative marks. 

Decision: Justice Amit Bansal decreed the suit in favour of Johnson & Johnson. The Court recognised that the business possessed or owned the three marks.The Court found the three marks to be owned by the company. It was based on evidence including WhatsApp conversations, e-mails, invoices and financial transactions, demonstrating the direct involvement of the defendants. The Court gave a permanent injunction. It had also allotted monetary compensation of approximately Rs. 3.34 crore, made up of Rs. Two crore and 34 lakh as compensation. Effortless damages of Rs. 1 crore, in addition to actual damages. The Court noted the serious threat posed by counterfeit medical products in the public health to the innocent public. Trade mark infringement is not the only aspect of counterfeiting medical devices. The Court also cited to earlier cases, including Cartier International A.G. v. Gaurav Bhatia and Koninklijke Philips N.V. v. Amazestore, that damages should be severe enough to provide a sufficient deterrent for others to refrain from deliberate infringement.

Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2008 .:

The proprietor Cadila Healthcare acquired the mark ‘Sugar Free’-products which are primarily used by people having diabetes and health conscious individuals. The Gujarat Co-operative Milk Marketing Federation, which is responsible for producing Amul, has introduced its Amul ‘Sugar Free’ pro-biotic frozen dessert. Cadila took legal action against it. The Single Judge (G.S. Sistani J.) ruled in this case in 2007 that ‘Sugar Free’ was a descriptive expression, despite this being a good degree of distinctiveness to Cadila’s goods. The Court denied an injunction, reasoning that no words should be monopolized by one person, since it simply describes a product, and that others should also be permitted to advertise their foods as being sugar-free, as this is more likely to alert diabetics to the alternative products available for them. In 2009, a Division Bench of Mukul Mudgal and Vipin Sanghi JJ viewed the appeal and noted that such descriptive marks can’t be protected beyond goods of its use.

This case is useful for two reasons. In Brazil, it reveals the boundaries of a trade mark right in the context of health-related food products. Descriptive words cannot be used in a way that causes confusion as to the contents of the product; a brand owner cannot prevent this use. Secondly, the conflict is so apparent here that it will undoubtedly bring to a consumer’s mind the challenger is likely someone who has a health issue, and on whose life the label is a critical factor that helps them make a safe purchase. In a later case, Cadila Healthcare Ltd. v. Dabur India Ltd. (2008), the Delhi High Court, while refusing to stop Dabur from using ‘Sugar Free’ for a chyawanprakash, also took note of the differences in the packaging of the two products.

Parle Products (P) Ltd. v. J.P. & Co., Mysore: 

The Supreme Court has drawn parallels between the wrappers of the two biscuit products and exterior appearances were found in favor of the overall impression that these products have on a person with an average memory and not a detailed comparison of differences. The trade dress approach to packaging is based on this.

Amritdhara Pharmacy v. Satya Deo Gupta: 

The Supreme Court concluded that the names ‘Amritdhara’ and ‘Lakshmandhara’ used for medicines were likely to deceive ‘the ordinary buyer with imperfect memory. The ruling forms the basis for a drug product patentability test called the test of confusion

Practical Implications

Packaging or labels need to be regarded as an asset of a business, and a valuable design tool to the industries of food, pharmaceuticals, cosmetics and speedy moving consumer goods companies. The packaging of the product can affect the decision making process of the buyer and can even help establish brand identity and differentiate it from the others in the marketplace. Packaging risks should therefore be evaluated by businesses before they introduce a product into the market.

A business should search the registered and pending trade marks, company names, domain names, and design registrations relevant to the name, logo, colour scheme, label layout, bottle shape, carton design or overall trade dress before finalising a name. In addition to looking for the exact name, a clearance search may include other names that sound alike in the phone book, look alike logos, and packaging components with similar logos that could overall produce a similar impression. This is of added significance in the pharmaceutical industry, where “confusion between medicines” can create a danger to patients where the standard to be applied by the court is stricter. In Cadila Health Care Ltd. v Cadila Pharmaceuticals Ltd., the Supreme Court gives a nod to the fact that confusion in a medicinal product can be life threatening and adds an extra measure of car.

Consumers’ survey is another helpful technique for the evaluation of packaging risk. A well-conceived survey could help determine if a particular package will lead a consumer to recall an existing product, if the new product can be differentiated from a competitor’s, or if any colours, shapes, or aspects of the label will cause confusion. Such surveys should be carried out separately, adequately documented and interpreted with care; Courts are usually considering the confusion from the eyes of an average consumer who may not fully remember the survey.

The consequences of insufficient packaging clearance can be serious legal issues. Where a court decides a package or label is deceptively similar to a registered trade mark, the business could be ordered to stop production, selling, distribution and advertising the product. They can also be asked to settle their inventory, dispose of any packaging found to be infringing, cover profits made, compensate any damages, and cover their case costs. In Section 29(7) of the Trade Marks Act, 1999, application of a registered mark on a packaging or labelling material is also a forbidden practice for a person it ascertained that the use of the mark was unauthorised. Criminal penalties may also be imposed under Section 103 of the Act in extreme cases of counterfeiting. Misleading or false labelling could also call up the attention of the Food Safety and Standards Act, 2006, if the product is a food; and counterfeit medicines or medical devices might draw the attention of the Drugs and Cosmetics Act, 1940 as well as public-health enforcement authorities.

Information should be shared between manufacturers, FS-SAI, State drug controllers, Customs authorities, police and e-Commerce platforms with regard to suspected counterfeit packaging, false labels and unsafe products. Cooperation can play a role in detecting counterfeit networks early, in keeping unsafe products off the market, as well as not only allow brand owners with the resources to take civil action, but also encourage and support other brand owners to be more proactive. However the regimes for packaging protection clearly must take a proper account of the legitimate commercial interest of the business and the more primary interest of public health and safety of its consumer.

Conclusion

Packaging and labels are the quickest way in which a brand interacts with its buyer.  When the product is food or medicine, the buyer may also be harmed. The Trade Marks Act, 1999 gives brand owners strong tools against copied packs and false labels, and TRIPS expects countries to treat wilful counterfeiting as a serious offence. The Food Safety and Standards Act, 2006 adds a second layer, by making every link in the food supply chain responsible.

The decision in Johnson & Johnson v. Pritamdas Arora shows that Indian courts are ready to look beyond commercial loss and to see counterfeit medical products as a threat to public health. In the Sugar Free case, the courts balanced the rights of brand owners against the needs of consumers and honest competitors. These decisions suggest a direction for the law to protect the brand but to always keep the consumer’s safety at the centre.

Author:- Jahnavi Mehrotra, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

Endnotes

1. Trade Marks Act, 1999, s. 2(1)(q) (India).
2. Trade Marks Act, 1999, s. 2(1)(h) (India).
3. Trade Marks Act, 1999, s. 29(6) and 29(7) (India).
4. Trade Marks Act, 1999, ss. 27(2) and 103 (India).
5. Food Safety and Standards Act, 2006, s. 3(1)(zf) and 3(1)(zz) (India).
6. Food Safety and Standards Act, 2006, s. 27 (India).
7. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994, arts. 16(1) and 61.
8. Johnson & Johnson v. Pritamdas Arora t/a M/s Medserve & Anr., CS(COMM) 570/2019, 2025:DHC:1585 (Del. HC, 11 Mar. 2025) (India).
9. Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.) (Single Judge, 23 Oct. 2007); FAO(OS) No. 62/2008 (Div. Bench, 8 Sept. 2009) (India).
10. Cadila Healthcare Ltd. v. Dabur India Ltd., FAO(OS) No. 387/2008 (Del. HC, 12 Sept. 2008) (India).
11. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (India).
12. Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618 (India).
13. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 (India).