Procter & Gamble Company v. Joy Creators & Others

“Delhi HC bars Joy Creators from using ‘Total Effects’—protecting P&G’s signature element in Olay Total Effects.”

Short Summary :

Procter & Gamble (P&G) obtained a decree from the Delhi High Court restraining Joy Creators from using the phrase “Total Effects” in their trademarks—specifically “Joy Ultra Look Total Effects”—finding it deceptively similar to P&G’s registered trademark “Olay Total Effects,” and thus constituting infringement. The court also awarded punitive damages to P&G.

Facts :

P&G is the registered owner of trademarks OLAY TOTAL EFFECTS and TOTAL EFFECTS for anti-ageing cosmetic products (Class 3), with high brand investment and substantial Indian sales and advertising spends.

In 2008, P&G discovered Joy Creators had applied to register and were using the label “Joy Ultra Look Total Effects” on similar product lines.

P&G filed suit for trademark infringement and passing off, seeking injunctions, damages (50 lakhs INR), accounts, and delivery-up of infringing materials.

Joy Creators defended on grounds of prior-use of “Total Effects” since 2001, and argued that “Total Effects” was de-emphasized in their mark, with “Ultra Look” being more prominent.

Findings :

The Delhi High Court held that “Total Effects” was an essential component of P&G’s trademark and that Joy Creators’ use of the same, even with additional words like “Joy Ultra Look,” was deceptive and infringing.

The court rejected Joy Creators’ claim of prior use, noting they had agreed to delete “Total Effects” when challenged—but only in exchange for P&G not claiming damages. That admission undermined their defense.

Referencing authoritative precedents—Parle Products v. J.P. & Co., Corn Products v. Shangrila, Atlas Cycle, Ansul Industries, K.R. Chinna Krishna Chettiar—the court reaffirmed that even partial or prominent elements of a trademark, especially those that create overall similarity, can constitute infringement if they cause likely confusion in the mind of an average consumer with imperfect recollection.

Suggestion / Implications :

Trademark holders must protect essential elements of their marks—even if other words are added, the presence of a core element can still lead to infringemen.

Courts assess infringement based on overall impression and consumer confusion, not side-by-side comparisons.

Prior users should document and be able to prove their claim robustly—simply asserting prior use, especially with admissions to delete contested elements, is inadequate.

Defendants must avoid relying on visual de-emphasis; intellectual recognition often focuses on the distinctive phrasing rather than font hierarchy.

Judgment with Date :

Court : Delhi High Court, Single Judge Bench

Date of Judgment : February 21, 2011

Joy Creators were restrained from using the word mark OLAY TOTAL EFFECTS or any deceptively similar mark including “Total Effects” on anti-ageing or related products.

Punitive damages of ₹1,00,000 each were awarded against Defendants Nos. 2 & 3.