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IN THE HIGH COURT OF BOMBAY
R.I. CHAGLA, J
Everest Food Products Pvt.Ltd. – Appellant
Versus
Shyam Dhani Industries Pvt.Ltd. And 2 Ors. – Respondent
IA 1628 of 2021
Decided On : 02-01-2025
(A) Trade Marks Act, 1999 - Sections 29(2)(c), 30(2)(a), 28(3) - Trademark infringement and passing off - Plaintiff, a registered proprietor of the trademark 'TIKHALAL', sought injunction against Defendants using 'TIKHA LAL' - Court found Defendant's actions likely to cause confusion and deception, emphasizing the dishonest conduct of the Defendants in fabricating evidence - Interim relief granted to Plaintiff against Defendants' use of the impugned mark. (Paras 66, 82)
(B) Evidence of Goodwill - Court noted Plaintiff's extensive use of 'TIKHALAL' since 2002, establishing goodwill and reputation, while Defendants failed to prove their defense of descriptive use under Section 30(2)(a). (Paras 75, 82)
(C) Jurisdiction - Court held that territorial jurisdiction was proper, dismissing Defendants' claims based on misconceived interpretation of Section 28(3). (Paras 35, 76)
ORDER :
1. By this Interim Application, the Applicant/Plaintiff has sought injunction against the Defendants for infringement of its registered trademarks and for passing off. For combination of the cause of action of infringement of trademark and passing off and since the Defendants are having their registered office outside the jurisdiction of this Court. Leave has been sought under Clause XIV of the Letters Patent. There is no Reply to the Letters Patent Petition. Further, this Court has jurisdiction to try, entertain and dispose of the captioned Suit for cause of action for infringement of trademark. In order to avoid multiplicity of proceedings, leave is granted under Clause 14 of the Letters Patent and accordingly the Letters Patent Petition is allowed.
2. The Plaintiff has stated that it is a company engaged in the business of inter alia manufacturing, producing, processing, exporting, importing buying, selling, distributing and dealing in all kinds and types of food products including all types of whole, pure and blended masalas, spices, herbs, seasonings and condiments for Indian dishes and international cuisines. The Plaintiff was earlier operating as a Partnership firm in the name and style of M/s. S. Narendrakumar & Co. registered under the Indian Partnerships Act, 1932. On 11th May 2020, the said firm was converted and incorporated into the Plaintiff.
3. It is stated that in or around the year 1961, M/s. Vadilal Champaklal & Co. (Plaintiff’s predecessor in interest) commenced and carried on the business of manufacture and sale of mirchi, masalas, spices and dry fruits under the trade mark “EVEREST”. In the year 1989, the Plaintiff’s predecessor in interest granted a license to M/s. S. Narendrakumar & Co. (now converted into the Plaintiff) to use the mark “EVEREST” by way of a Deed of License dated 1st April 1989. Thereafter by Deed of Assignment dated 26th September 1994, the Plaintiff’s predecessor in interest assigned the trade mark ‘EVEREST’ and the goodwill attached thereto in favour of the M/s. S. Narendrakumar & Co. As such, the Plaintiff is the proprietor of the trade mark “EVEREST” and is exclusively entitled to the same. A table setting out the particulars of the Plaintiff’s trade mark registrations for its EVEREST trade marks is at paragraph 3.6 of the Plaint.
4. It is stated that in or around 2000-2001, Mr. Sanjeev Vadilal Shah, at the time he was the partner of the said partnership firm and is now the Director of the Plaintiff, conceived and/or coined the unique word mark “TIKHALAL” to be used and applied to chilli powders manufactured/sold under the Plaintiff’s brand “EVEREST”. The word “TIKHALAL” was never in use before in trade and commerce with respect to chilli powders and the same is an invented and/or coined word. It is also pertinent to note that the word “TIKHALAL” does not have any dictionary meaning and is unknown/uncommon in use generally in English or any other Indian language. A copy of the Affidavit of Mr. Sanjeev Vadilal Shah, affirming these facts is at Exhibit E to the Plaint.
5. The Plaintiff has applied for and secured trade mark registration for the word mark “TIKHALAL” in class 30 bearing trade mark registration No. 1075818 in Class 30 dated 24th January 2002. The Plaintiff has also applied for and secured device mark registration for the Plaintiff’s product label “
” in class 30 bearing trade mark registration No. 2004353 in Class 30 dated 5th August 2010.
6. Since January 2002, the Plaintiff claims that it has been openly continuously and extensively using the trade mark “TIKHALAL” in respect of its goods and has acquired tremendous goodwill and reputation in the goods bearing the same. To demonstrate its goodwill and reputation respect of its goods bearing the trade mark “TIKHALAL”, the Plaintiff has produced the following documents along with the Plaint:
Important Point :The use of a trademark that is phonetically and visually similar to a registered trademark can lead to confusion, constituting infringement, especially when dishonest conduct is evid....
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
A plaintiff must use their registered trademark to claim infringement; failure to do so undermines the basis for an injunction.
Point of Law : Section 27 of Trade Marks Act provides that no action for infringement will lie in respect of an unregistered trade mark.
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