Delhi HC Allows L'Oreal to Add Trademark Infringement Claim in Garnier Bright Complete Suit

On July 13, 2026, the Delhi High Court allowed L'Oreal SA to amend its suit over the "Garnier Bright Complete" mark to include a trademark infringement claim in addition to the original passing off claim. Justice Jyoti Singh reversed the order of the Saket District Court, which had refused the amendment, holding that the trial court erred in treating L'Oreal's subsequent trademark registration as giving rise to a fresh cause of action that could not be incorporated through amendment.

The case, L'Oreal SA v. Vekariya Nikunj Arvindbhai and Others, highlights an important distinction in Indian intellectual property law between passing off and trademark infringement, and clarifies when a plaintiff can amend its pleadings after obtaining registration during the pendency of a suit.

The Factual Background

L'Oreal SA, the global cosmetics giant, markets skin brightening products under its well-known "GARNIER BRIGHT COMPLETE" brand. When L'Oreal filed its original suit before the Saket District Court, the GARNIER BRIGHT COMPLETE mark had not yet been registered with the Registrar of Trademarks. Accordingly, the suit was framed solely as an action for passing off and trade dress dilution.

The respondents, Vekariya Nikunj Arvindbhai and others, were accused of selling cosmetic products under the marks "GARUDA BRIGHT COMPLETE 30x" and "6 DROPS BRIGHT COMPLETE 3x." L'Oreal alleged that these marks and the accompanying trade dress were deceptively similar to its own, likely to cause confusion among consumers.

During the pendency of the suit, L'Oreal obtained registration for the GARNIER BRIGHT COMPLETE mark. Armed with this registration, L'Oreal sought to amend its plaint to add a claim for trademark infringement under Section 29 of the Trade Marks Act, 1999, alongside the existing passing off claim.

The Trial Court's Refusal

The Saket District Court refused to allow the amendment. The trial court's reasoning was that the subsequent registration of the mark gave rise to a fresh cause of action (i.e., trademark infringement) that was distinct from the original cause of action (passing off). On this basis, the trial court held that the amendment sought to introduce a fundamentally new case that could not be added to the existing suit through amendment.

The trial court also noted that L'Oreal's evidence had already concluded at the time the amendment application was filed.

The Delhi High Court's Analysis

Justice Jyoti Singh disagreed with the trial court's reasoning on multiple counts.

First, the High Court held that the trial court erred in treating the subsequent registration as creating a fresh cause of action that barred amendment. The Court noted that passing off and trademark infringement, while legally distinct, arise from the same set of underlying facts: the use by the respondents of marks deceptively similar to L'Oreal's mark. The registration of the mark does not create a new dispute; it provides L'Oreal with an additional statutory remedy for the same alleged wrong. Courts have previously examined whether descriptive terms can function as trademarks, but here the distinctiveness of the GARNIER mark was not in question.

Second, the Court observed that the respondents opposing the amendment were already proceeded against ex parte, meaning they had failed to appear and contest the suit. In this context, refusing the amendment would serve no legitimate interest of the respondents but would prejudice L'Oreal by requiring it to file a separate suit for infringement based on the same facts.

Third, the High Court emphasized that refusing the amendment would lead to multiplicity of proceedings. The Court stated that denying the amendment "will lead to yet another suit, which will only increase and prolong the conclusion of litigation inter se the parties with respect to the same trademark and products."

Passing Off Versus Trademark Infringement

Understanding this ruling requires appreciating the distinction between the two causes of action.

Passing off is a common law remedy available to any person whose mark has acquired goodwill and reputation in the market, regardless of whether the mark is registered. The plaintiff must prove three elements: goodwill, misrepresentation, and damage.

Trademark infringement, by contrast, is a statutory remedy available only to the registered proprietor of a mark. Under Section 29 of the Trade Marks Act, 1999, registration confers on the proprietor the exclusive right to use the mark and the statutory right to sue for infringement. The evidentiary burden is lighter: once registration is proved, the plaintiff does not need to separately establish goodwill. The scope of platform liability for trademark use in advertising is a related question that has been litigated separately.

When L'Oreal filed its suit, it could only rely on passing off because its mark was unregistered. Once registration was obtained, adding the infringement claim strengthened L'Oreal's position significantly, as it shifted the evidentiary burden in its favour.

Practical Implications for Brand Owners

This ruling has several practical implications for brand owners and intellectual property practitioners.

First, brand owners who file passing off suits before obtaining registration should be aware that they can amend their plaints to include trademark infringement claims once registration is granted. This avoids the need to file a separate suit and ensures that all remedies are pursued in a single proceeding. Brand owners should also be mindful of renewal timelines once their marks are registered.

Second, the ruling confirms that registration obtained during the pendency of a suit does not constitute a fresh cause of action for the purpose of Order VI Rule 17 of the Code of Civil Procedure. This is consistent with the principle that amendments to pleadings should be liberally allowed unless they cause irreparable prejudice to the opposite party. Where a trademark objection delays registration, brand owners can still pursue passing off in the interim.

Third, the timing of the amendment application matters but is not determinative. Even though L'Oreal's evidence had concluded, the High Court did not treat this as a bar. The key consideration was whether the amendment was necessary for the effective adjudication of the dispute. The case also illustrates how conflicts between trademark and copyright registrations can create complex IP litigation scenarios.

Key Takeaways

• The Delhi High Court reversed the Saket District Court and allowed L'Oreal to amend its Garnier Bright Complete suit to include a trademark infringement claim.

• Justice Jyoti Singh held that subsequent trademark registration does not create a fresh cause of action barring amendment.

• The respondents used the marks GARUDA BRIGHT COMPLETE 30x and 6 DROPS BRIGHT COMPLETE 3x for identical cosmetic products.

• Passing off and trademark infringement arise from the same underlying facts; both remedies can be pursued in one suit.

• Brand owners who obtain trademark registration during pending litigation can seek amendment without filing a fresh suit.