Coined Mark 'RAM BANDHU' Protected Despite Deity's Name; Essential Features of Device Mark Get Protection: Bombay High Court

Bombay High Court Grants Injunction in ' RAM BANDHU ' Trademark Case, Upholds Protection for Coined Marks with Deity Names

Mumbai, India - In a significant ruling on trademark law, the Bombay High Court has granted an interim injunction in favour of Empire Spices and Foods Limited, the owner of the " RAM BANDHU " brand, restraining Sanjay Bhimraoji Deshmukh from using the deceptively similar mark "SHREE RAM BANDHU ". The court, presided over by Justice Sharmila U. Deshmukh , held that a coined mark combining the name of a deity with another word can be protected, and that the essential features of a registered device mark are entitled to the same protection as a word mark.

Case Background

The case revolved around a trademark infringement suit filed by Empire Spices and Foods Limited, which claimed proprietary rights over the " RAM BANDHU " mark for spices and food products, with usage dating back to 1972. The Plaintiff, having acquired the brand through a merger, possesses several registrations for the " RAM BANDHU " device mark and has built substantial goodwill, with a turnover of around ₹250 crores and endorsements by renowned celebrities.

The Plaintiff had first issued a cease-and-desist notice to the Defendant in 2014 for using the mark "SHREE RAM BANDHU ". Assuming the Defendant had stopped, no further action was taken until the products resurfaced in 2023, prompting another legal notice. The Defendant claimed to be using the mark since 2004 and argued that the Plaintiff had acquiesced by not taking action for nearly a decade.

Key Arguments from Both Sides

Plaintiff's Arguments (Empire Spices and Foods Ltd.): - The mark " RAM BANDHU " is a registered trademark with a user history since 1972, establishing prior use and significant goodwill. - The Defendant's mark "SHREE RAM BANDHU " is structurally, visually, and phonetically almost identical, causing confusion among consumers. - The Defendant’s adoption was dishonest, copying the essential features, colour scheme, and layout of the Plaintiff's registered mark. - Mere delay is not a ground to refuse an injunction in an infringement action, and there was no positive act of encouragement to constitute acquiescence.

Defendant's Arguments ( Sanjay Bhimraoji Deshmukh ): - No exclusivity can be claimed over the name of a Hindu deity, " Ram ," as it is common practice in India. - The Plaintiff's registration is for a device mark (a logo), not the words " RAM BANDHU " themselves. Under Section 17 of the Trade Marks Act, protection does not extend to parts of a composite mark. - The prefix "SHREE" sufficiently distinguishes the Defendant's mark. - The Plaintiff’s delay of over ten years in filing the suit after the 2014 notice amounts to acquiescence, making it inequitable to grant an injunction.

Court's Analysis and Pivotal Findings

Justice Deshmukh systematically addressed the Defendant’s key defenses and found a prima facie case in favour of the Plaintiff.

1. On Protection of Coined Marks with Deity Names: The court distinguished this case from precedents where standalone names of deities like ' Krishna ' or 'Laxmi' were not granted monopoly. It held that the Plaintiff’s mark was not just ' Ram ' but the combination " RAM BANDHU ".

"Separately used, there can be no exclusivity claimed in the words ‘ Ram ’ and ‘ Bandhu ’ but the moment the name of the Hindu deity is used in combination with the word “BANDHU”, it loses its significance as name of deity and is registrable. The suffix of word “ Bandhu ” makes all the difference. The combination of these two words “RAM” and “BANDHU” is a coined word and arbitrary adaption..."

The court noted that the Defendant himself had applied to register "SHREE RAM BANDHU ", which estopped him from arguing that the mark was not distinctive.

2. On Device Mark vs. Word Mark Protection (Section 17): The court rejected the argument that protection under Section 17 is limited to the device mark as a whole. It emphasized that the essential and prominent features of a mark are protected, irrespective of whether the registration is for a device or a word.

"...the prominent/essential feature of the registered trade mark are the words “ RAM BANDHU ”. The test laid down by the Hon’ble Apex Court when applied to facts of present case, would entitle the Plaintiff the right to protect its essential features... As the words “ RAM BANDHU ” itself forms the registered mark, the same are required to be protected and it is no defence to say that the words have not been registered separately."

3. On Delay and Acquiescence: Citing established legal principles, the court ruled that mere delay in filing a suit is not fatal to an infringement claim. For acquiescence to be a valid defense, a positive act of encouragement from the Plaintiff is required, which was absent in this case.

The Final Decision

The court concluded that the Plaintiff had established a prima facie case of infringement, with the balance of convenience in its favour. It held that the Defendant’s mark was deceptively similar and likely to cause confusion, thereby diluting the Plaintiff’s goodwill built since 1972.

Accordingly, the court granted an interim injunction, restraining the Defendant from using the "SHREE RAM BANDHU " mark or any other mark deceptively similar to " RAM BANDHU " pending the final disposal of the suit. At the Defendant's request, the order has been stayed for four weeks.