Delhi High Court
Capital Food Private Limited, vs Radiant Indus Chem Pvt. Ltd on 11 January, 2023
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number 2023/DHC/000224
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 09.01.2023
Date of decision: 11.01.2023
+ CS(COMM) 379/2020
CAPITAL FOOD PRIVATE LIMITED ..... Plaintiff
Through: Mr.Rajiv Nayar, Sr. Adv. with
Ms.Nancy Roy, Ms.Aastha
Kakkar, Ms.Prakriti Varshney,
Ms.Manjira Advs.
versus
RADIANT INDUS CHEM PVT. LTD ..... Defendant
Through: Mr.Hemant Singh, Mr.Abhijeet
Rastogi, Ms.Antara Pachauri,
Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 8147/2020
1. The present application has been filed by the plaintiff inter-alia
praying for the grant of an ad interim injunction restraining the
defendant, its directors, and/or anyone acting for and on their behalf
from manufacturing, selling, offering for sale, marketing, retailing,
supplying, distributing, exhibiting, advertising, promoting,
displaying, dealing in and / or using, in any manner whatsoever, the
products bearing the marks "SCHEZWAN CHUTNEY" and
"SZECHUAN CHUTNEY".
FACTUAL BACKGROUND:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 1 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
PLAINTIFF'S CASE
2. It is the case of the plaintiff that the plaintiff is one of the leading
food companies in India, engaged inter alia in manufacturing and
marketing a wide variety of dips, spreads, condiments, sauces,
noodles, soups, pastes, dressings, ready-to-eat food products and
other food preparations, for more than 25 years. The plaintiff
employs more than 1200 people, having presence in countries such
as U.S.A., Canada, Australia, U.K., Singapore, to name a few.
3. The plaintiff asserts that the plaintiff was the first to coin and
independently invent a distinctive trade mark "SCHEZWAN
CHUTNEY" in relation to dips and spreads, which is prima facie
distinctive of the goods of the plaintiff and is exclusively associated
with the plaintiff‟s brand. Its mark "SCHEZWAN CHUTNEY"
has been granted registration for goods covered in Class 30,
including sauce, under Registration No. 2431851 on 01.06.2017 as
of 22.11.2012. Though Rectification Petitions have been filed
against the said registration, the same is still valid and subsisting.
4. The plaintiff has also filed another trade mark application for the
mark "SCHEZWAN CHUTNEY" under application no. 2431850
in Class 29 on 22.11.2012, but the same was refused raising an
objection under Section 9 of the Trade Marks Act, 1999 (hereinafter
referred to as „the Act‟). A review has been filed against the said
refusal order, which is pending before the Trade Marks Registry.
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 2 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
5. The plaintiff further submits that in addition to the distinctive and
coined trade mark "SCHEZWAN CHUTNEY", the plaintiff also
possesses a highly distinctive label, which is reproduced herein
below:-
6. The plaintiff submits that the aforesaid label comprises of inter alia
the distinctive trade mark SCHEZWAN CHUTNEY, wherein
SCHEZWAN CHUTNEY is represented in a unique and
distinctive manner in two lines in white lettering on the colour
combination of orange and red, placement of the brand
SCHEZWAN CHUTNEY on the label, unique colour combination
and scheme, and placement and arrangement of all elements.
7. The plaintiff further submits that the aforesaid label has been created
and devised by the in-house design label development department of
the plaintiff. The distinguishing features of the label constitute as an
original artistic work under Section 2 (c) of the Copyright Act,
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 3 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
1957. By virtue of the Copyright Act, the plaintiff is the first owner
of the copyright in the above represented artistic work.
8. The plaintiff asserts that while studying consumer tastes and
preferences, and in bridging international cuisines with local
flavours, the plaintiff created a whole new cuisine in India - „Desi
Chinese', which is a fusion of Indian and Chinese flavours. The
plaintiff submits that it was the first to identify and create the unique
cuisine of „Desi Chinese' that is native to India and universally
loved across various countries. The plaintiff further states that,
today, the plaintiff‟s products are synonymous with the cuisine
„Desi Chinese' in India and across the globe.
9. The plaintiff further asserts that as part of its product innovation in
the Desi Chinese cuisine, in or around the year 2012, the plaintiff
had introduced a dip and spread based product under the trade mark
"SCHEZWAN CHUTNEY". "SZECHUAN" is a province of
South-West China which is known for bold flavours, particularly the
pungency and spiciness resulting from the use of garlic and chilli
peppers. "CHUTNEY" is a spicy condiment of Indian origin, made
of fruits or vegetables with vinegar, spices, and sugar. Accordingly,
the unique and arbitrary combination of the „SCHEZWAN‟ and
„CHUTNEY‟ makes „SCHEZWAN CHUTNEY' a coined and
invented trade mark which is inherently distinctive of the plaintiff.
10. The plaintiff submits that since the adoption of the trade mark
"SCHEZWAN CHUTNEY", the plaintiff‟s products have been
continuously, extensively, and uninterruptedly sold throughout
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 4 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
length and breadth of the country and have acquired goodwill and
reputation. The plaintiff asserts that the net revenue for the brand
"SCHEZWAN CHUTNEY" in India has grown from Rs. 325
Lakhs in 2012-13 to Rs. 8233 Lakhs as in 2019-20. The details of its
annual net revenue have been provided by the plaintiff in paragraph
14 of the plaint.
11. In addition, the plaintiff submits that it has spent large sums of
money towards advertising, promotion and marketing its products
under the mark SCHEZWAN CHUTNEY, increasing from Rs.
4,55,12,914/- in 2012-13 to Rs. 51,63,67,378/- in 2019-2020. The
details of the expenditure incurred in advertising the plaintiff‟s
goods in relation to SCHEZWAN CHUTNEY has been provided
in paragraph 16 of the plaint.
12. The plaintiff gives in the plaint details of its extensive promotion,
advertisement, and marketing campaigns for the said mark.
13. The plaintiff submits that the mark "SCHEZWAN CHUTNEY" is
associated with the plaintiff-company, and that it has acquired a
secondary meaning which is identified with the plaintiff‟s goods.
The plaintiff further states that any reference to "SCHEZWAN
CHUTNEY" in the food industry connotes and denotes to the
plaintiff-company and its goods alone.
14. The plaintiff asserts that in the first week of September 2020, the
plaintiff came across the sale of the impugned product "MRS.
FOODRITE SCHEZWAN CHUTNEY" being sold and offered
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 5 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
for sale by the defendant on the e-commerce website www.amazon.in.
The representation of the impugned product is given below:
15. The plaintiff submits that the aforesaid impugned product bears a
mark which is identical to the plaintiff‟s mark SCHEZWAN
CHUTNEY. The plaintiff asserts that on a bare perusal of the label
of the impugned product SCHEZWAN CHUTNEY, and its
comparison with the plaintiff‟s product SCHEZWAN CHUTNEY,
demonstrates that the defendant has made every effort to
copy/imitate the plaintiff‟s trademark. The plaintiff has provided the
comparison between the two products as below:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 6 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
16. The plaintiff submits that the above two products comprise of the
following similarities:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 7 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
(a) The defendant has adopted the plaintiff‟s coined, registered trade
mark SCHEZWAN CHUTNEY.
(b) The defendant‟s impugned product, bearing SCHEZWAN
CHUTNEY, is packaged/labelled in a trade dress/label which is
deceptively and confusingly similar to the plaintiff‟s
SCHEZWAN CHUTNEY (label). The overall get-up of the
impugned product, such as the packaging style, colour combination
and scheme of the white, orange, and red, placement of
SCHEZWAN CHUTNEY on the impugned label, SCHEZWAN
CHUTNEY represented in two lines in white lettering on the
colour combination of orange and red, and placement and
arrangement of all essential and descriptive elements, have been
copied by the defendant.
17. The plaintiff asserts that during an online inquiry, the plaintiff also
came across the defendant‟s page/listing on www.facebook.com. On
perusal of the said listing, the plaintiff came across another
impugned product „SZECHUAN CHUTNEY‟ which is also
virtually identical to the plaintiff‟s registered trade mark
„SCHEZWAN CHUTNEY'. The screenshots of the same are
reproduced herein below:-
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 8 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 9 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 10 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
18. The plaintiff is aggrieved of the fact that the defendant did not take
the effort to produce its own marketing and advertising content and
has instead slavishly copied the plaintiff‟s advertising material
which is the copyrighted content of the plaintiff.
19. The plaintiff asserts that the adoption of the mark "SCHEZWAN
CHUTNEY or SZECHUAN CHUTNEY" amounts to
infringement of the plaintiff‟s registered trade mark. The plaintiff
further asserts that the defendant is guilty of passing off the goods as
that of the plaintiff‟s.
CASE OF THE DEFENDANT
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 11 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
20. The defendant asserts that it is engaged in the business of
manufacture and sale of food products such as jams, culinary sauces,
Chinese sauces, mayonnaise, pickles, etc.
21. The defendant submits that the defendant‟s products are sold under
the mark "MRS. FOODRITE", "MEAL TIME" and "MRS. RITE
SPICE". The defendant also has applied for and obtained trade mark
registrations for the same in various classes, details of which have
been provided in paragraph 20 of the Written Statement.
22. The defendant asserts that it launched its Schezwan Chutney
products under its mark "MRS. FOODRITE" in the year 2016 and
has been using the same continuously and uninterruptedly ever
since. The defendant states that the Schezwan Chutney is prepared
to suit the Indian taste, and has similar characteristics with
Sichuan/Schezwan/Szechuan style/ cuisine and has a flavour
dominated by ginger and garlic along with the spiciness imparted by
the liberal use of chillies as per the Schezwan/Sichuan cuisine, apart
from use of other ingredients typical of such cuisine such as
soyabean oil, soya sauce, etc.
23. The defendant asserts that it has invested huge amount of financial
and human resources in marketing and promoting its Schezwan
Chutney under its mark. As a result of such long, continuous, and
extensive commercial use, coupled with aggressive brand
promotion, the chutney of the defendant under the mark has been
able to acquire goodwill and reputation amongst the members of the
trade and public at large.
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 12 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
24. The defendant states that the defendant has a good sales turnover in
its Schezwan Chutney products, details whereof have been provided
in paragraph 22 of the Written Statement.
25. The defendant further asserts that the plaintiff cannot claim any
exclusive right to the mark „SCHEZWAN CHUTNEY' as it is
devoid of any distinctive character and is descriptive of the kind,
quality, character, and geographical origin of the goods sold. The
defendant, in effect, pleads that the plaintiff has wrongly been
granted registration in the said mark.
26. On claim of passing off, it is pleaded that the competing goods are
distinguished by their respective trademarks which are "CHING'S
SECRET" of the plaintiff and "MRS. FOODRITE" of the
Defendant. The defendant asserts that there are third parties also
selling their products under the mark "SCHEZWAN CHUTNEY".
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
27. Mr.Rajiv Nayar, the learned senior counsel for the plaintiff, while
reiterating the averments of the plaint, submits that the plaintiff
possesses the proprietary rights in the unique combination of the
words „SCHEZWAN CHUTNEY' as a whole, which has been
arbitrarily coined by the plaintiff. There is no dictionary meaning of
the combination of the two words „SCHEZWAN‟ and
„CHUTNEY‟. The said mark was coined by the plaintiff in the year
2012, whereas the defendant is claiming user since 2016. The
plaintiff submits that the plaintiff had already used the mark for over
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 13 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
four years and had already invested more than Rs. 85 Crores in
promotion of the said trade mark and has sales of over Rs. 77
Crores. The plaintiff had already acquired a reputation and goodwill
in the said trade mark. He further submits that the plaintiff is the
prior adopter of the combination of the mark „SCHEZWAN
CHUTNEY‟ and has acquired distinctiveness and secondary
meaning in the trade. In support, he places reliance on the
judgements passed by this Court in Ishi Khosla v. Anil Aggarwal,
2007 SCC OnLine Del 126; Living Media India Limited v. Jitender
V Jain & Anr, 2002 SCC OnLine Del 605 and Natures Essence
Private Limited v. Protogreen Retail Solutions Private Limited and
Others, 2021 SCC OnLine Del 1538.
28. He further submits that merely because the plaintiff also uses its
house mark „CHING'S' along with the mark „SCHEZWAN
CHUTNEY‟, while the defendant uses its house mark „MRS.
FOODRITE‟, cannot be sufficient to defeat plaintiff‟s claim of
infringement or passing off. In support he places reliance on Meher
Distilleries Private Ltd. v. SG Worldwide Inc & Anr., 2021 SCC
OnLine Bom 2233; Mother Sparsh Baby Care Pvt. Ltd. v. Aayush
Gupta & Ors., 2022 SCC OnLine Del 1061; Hem Corporation Pvt.
Ltd. v. ITC Ltd., MANU/MH/0535/2012; Kishore Kumar v. L.
Chuni Lal Kidarnath & Anr., 2010 SCC OnLine Del 91; and
Colorbar Cosmetics Private Limited v. Faces Cosmetics India
Private Limited & Ors., 2022 SCC OnLine Del 1760.
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 14 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
29. On the plea of the defendant that the trade mark of the plaintiff was
wrongfully registered as the proper procedure was not followed or
because the mark is otherwise descriptive in nature, the learned
senior counsel for the plaintiff submits that the trademark of the
plaintiff has been rightly registered. He submits that such
registration must be given effect to and it is not sufficient for the
defendant to show that it has an arguable case in support of
invalidity of the registration; heavy burden is placed on the
defendant to question the validity of registration and to rebut the
presumption at the interlocutory stage. In support of his submission,
he places reliance on Sky Enterprise Pvt. Ltd. v. Abaad Masala &
Co., 2020 SCC OnLine Bom 750. He submits that as the mark of the
plaintiff stands registered, injunction must follow. In support, he
places reliance on Midas Hygiene Industries (P) Ltd. v. Sudhir
Bhatia & Ors., (2004) 3 SCC 90.
30. He further submits that merely because others are also using the
impugned mark, cannot act as a defence to the infringer of the mark.
He places reliance on the judgment of this Court in Pankaj Goel v.
Dabur India Ltd.,2008 SCC OnLine Del 1744. He submits that
even otherwise the plaintiff has been taking successful legal action
against such third parties.
31. He further submits that the defendant has adopted the mark of the
plaintiff dishonestly and is, therefore, not entitled to be heard in
defence to such adoption or user. In support, he places reliance on
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 15 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
B.K. Engineering Co. v. UBHI Enterprises (Regd.) & Anr., ILR
(1985) 1 Delhi 525.
SUBMISSIONS ON BEHALF OF THE DEFENDANT
32. On the other hand, Mr.Hemant Singh, the learned counsel for the
defendant, submits that Schezwan Chutney is descriptive of the
product, and that the plaintiff itself has used „Schezwan Chutney‟ as
a description of flavour for its „Chutney‟. He submits that
„SCHEZWAN CHUTNEY' conveys the meaning of "what the
product is" whereas „CHING'S SECRET' is the brand which
conveys "where the product comes from". He submits that such
descriptive use by the plaintiff is incapable of conferring any
proprietary right on the plaintiff in law irrespective of whatever has
been the period and volume of such use or its registration.
33. He submits that the plaintiff‟s Trade Mark Application no. 2431850
for Schezwan Chutney as a mark in class 29 has been rejected by the
Registrar of Trade Marks vide order dated 29.03.2016. Hence, if
"Schezwan Chutney" is not registrable for goods under Class 29,
then the same is surely not registrable for goods under Class 30, thus
making the registration invalid. In support he places reliance on
'McCarthy on Trade Marks and Unfair Competition- Third
Edition'; The Gillette Company vs. A.K. Stationery and Ors., 2001
PTC 513 (Del); Marico Limited vs. Agro Tech Foods Limited, 2010
(44) PTC 736 (Del); Johnson and Johnson and Anr v. Christine
Hoden India (P.) Ltd. and Anr. AIR 1988 Delhi 249; McCain
International Limited v. Country Fair Foods Limited and Anr,
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 16 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
(1981) R.P.C 69; ITC Limited v. Nestle India Limited, 2020 SCC
OnLine Mad 5457; and Horlick's Malted Milk Company v.
Summerskill, (1917) XXXIV Supp. R.P.C. 63.
34. He submits that as the defendant is using the impugned mark
SCHEZWAN CHUTNEY in a descriptive manner, it would also be
entitled to the protection of Section 30(2)(a) and Section 35 of the
Act against any action of infringement. In support of the above
averments, the defendant lays reliance on the judgements passed by
this Court in Marico Limited (supra); Nestle India Limited v. Mood
Hospitality Private Limited, 2010 (42) PTC 514 (Del); and Johnson
and Johnson (supra).
35. He further submits that the defendant has been using „Schezwan
Chutney‟ as a product descriptor since 2016 along with its trade
mark "MRS. FOODRITE", therefore, the present suit filed by the
plaintiff is hit by a gross delay.
36. The learned counsel for the defendant submits that the online
records of the Trade Marks Registry pertaining to the plaintiff‟s
trade mark registration no. 2341851 in Class 30 reveals that the
plaintiff has been wrongly granted the registration of the trademark.
He submits that an Examination Report dated 23.06.2014 was issued
by the Trade Mark Registry, with the objection of the mark being
devoid of any distinctive character. The plaintiff did not file its
response to the Examination Report, which resulted in the Trade
Mark Registry passing an order dated 29.03.2016, treating the
application as abandoned. Pursuant to the order, the plaintiff
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 17 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
submitted a letter dated 25.04.2016, requesting the Registry to
reinstate the application asserting that the plaintiff had not received
the Examination Report. The application, though was restored
pursuant to an order passed in a Writ Petition filed by the plaintiff,
the objection in the Examination Report was not answered by the
plaintiff. Without such response, the trade mark application was
wrongfully published in Trade Marks Journal dated 09.01.2017, and
was granted registration on 01.06.2017. He submits that the grant of
the registration of the mark SCHEZWAN CHUTNEY is invalid,
improper, and contrary to the law.
AD-INTERIM ORDER:
37. This Court, on the first date of hearing of the Suit and the present
application, that is on 16.09.2020, declined the grant of an ad
interim order of injunction against the defendant from using the
mark „SCHEZWAN CHUTNEY‟, while at the same time,
restraining the defendant from using the similar trade dress,
packaging, as also reproducing, adopting or imitating the original
works of the plaintiff in respect of its marketing and advertising
content. The Court observed as under:
12. By IA 8147/2020 under Order XXXIX Rule 1
and 2 CPC, the plaintiff seeks ad-interim
injunction not only against the mark SCHEZWAN
CHUTNEY but also the trade dress/packaging and
the reproduction, imitation, copying, adopting of
the original work of the plaintiff used as its
marketing and advertising content. Based on the
documents placed on record and the arguments of
the parties, this Court is of the considered opinion
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 18 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
that the SCHEZWAN CHUTNEY is a descriptive
term and the same has been used by the defendant
along with its trademark Mrs.Foodrite whereas
the plaintiff is also using the mark SCHEZWAN
CHUTNEY along with CHING'S i.e., CHING'S
SCHEZWAN CHUTNEY. The defendant has
placed on record material to show that even prior
to the plaintiff adopting the descriptive term
SCHEZWAN CHUTNEY, there were others who
had adopted the said mark and is thus not a
coined mark. Defendant has also placed on record
documents to show that number of other entities
are also selling Schezwan Chutney with their
marks. Thus, this Court is of the prima facie
opinion that no case is made out for grant of an
ad-interim injunction in respect of the mark
'SCHEZWAN CHUTNEY'. However, since the
plea of the plaintiff is that there is a similarity of
the trade dress, get up and SCHEZWAN
CHUTNEY has been written in a highlighted
manner so as to form a prominent label mark in
red colour and that the defendant has also
reproduced and copied its original works for
marketing and advertising contents, this Court
deems it fit to grant an ad-interim injunction in
terms of prayer (ii) and (iii) of para 67(A) of the
application in respect of the trade
dress/packaging as also reproduction, adoption
and imitation of the original works of the plaintiff
in respect of its marketing and advertising
contents.‖
(Emphasis supplied)
ANALYSIS AND FINDINGS:
38. I have considered the submissions made by the learned counsels for
the parties.
39. The first question to be determined for the present application is
whether the mark „SCHEZWAN CHUTNEY‟ is descriptive of the
product in question. In this regard, the plaintiff‟s own pleadings
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 19 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
may become important. Though the plaintiff states that its mark
„SCHEZWAN CHUTNEY‟ is a coined and invented trade mark,
which is inherently distinctive of the plaintiff and that it has created
a whole new cuisine in India of ‗Desi Chinese', which is a fusion of
Indian and Chinese flavours, the plaintiff also explains the concept
behind the adoption of the above mark as a combination of
„SZECHUAN‟ and „CHUTNEY‟. The plaintiff states that the
„SZECHUAN‟ is a province of South-West China, known for its
bold flavours, particularly the pungency and spiciness resulting from
the use of the garlic and chilli peppers; „CHUTNEY‟ is a spicy
condiment of Indian origin, made of fruits or vegetables with
vinegar, spices and sugar. Paragraph 10 to 12 of the plaint are
worthy of a note, and are reproduced hereunder:-
―10. Over the years, the Plaintiff has been
constantly studying consumer tastes and
preferences and has developed several innovative
products. The Plaintiff bridges international
cuisines with local flavours and offers global
foods and food ingredients with local appeal. As a
result of constant innovation, the Plaintiff created
a whole new cuisine in India - 'Desi Chinese
which is a fusion of Indian and Chinese flavours.
The Plaintiff is the first to identify and create the
unique cuisine of Desi Chinese that is native to
India and universally loved across various
countries. Catering to the ever-growing demand
for Desi Chinese, the Plaintiff manufactures and
offers an array of food products created by Master
Chefs with sophisticated manufacturing facility.
Today, the Plaintiff's products are synonymous
with the cuisine Desi Chinese in India and across
the globe.
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 20 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
11. The Plaintiff is recognized as the leading
provider of Desi Chinese cuisine and food
ingredients, and one of the most famous products
offered by the Plaintiff is SCHEZWAN CHUTNEY
which is exclusively and strongly associated with
the Plaintiff and no one else.
12. As a part of its product innovation in the
Desi Chinese cuisine, in or around the year 2012,
the Plaintiff introduced a dip and spread based
product under the earlier trade mark SCHEZWAN
CHUTNEY. The Plaintiff submits that the trade
mark SCHEZWAN CHUTNEY is an invented and
coined trade mark which was first conceived and
used by the Plaintiff in July 2012 in relation to
dips and spreads. The earlier trade mark
SCHEZWAN CHUTNEY has been uniquely
conceived from "Szechuan" and "Chutney".
"SZECHUAN" is a province of southwest China
which is known for bold flavours, particularly the
pungency and spiciness resulting from the use of
garlic and chili peppers. "CHUTNEY" is a spicy
condiment of Indian origin, made of fruits or
vegetables with vinegar, spices, and sugar.
Accordingly, the unique and arbitrary
combination of the words SCHEZWAN and
CHUTNEY makes SCHEZWAN CHUTNEY a
coined and invented trade mark which is
inherently distinctive of the Plaintiff. Thus, the
Plaintiff is the first and original adopter and user
of the trade mark SCHEZWAN CHUTNEY.‖
40. In McCarthy on Trademarks, the learned author explains the
spectrum of distinctiveness of marks as: „inherently distinctive‟;
„non-inherently distinctive‟; and marks with „no distinctiveness‟.
The learned author places the „suggestive‟ marks in the category of
„inherently distinctive marks‟; while descriptive marks in „non-
inherently distinctive marks‟, for which secondary meaning is
required. The learned author states that the placement on the
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 21 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
spectrum of distinctiveness does not end the inquiry as to the
strength of a mark: it is only the first step; the second step is to
determine the strength of this mark in the market place. The
categorization of a term on the spectrum of distinctiveness is a
factual issue. The learned author further states that the most popular
test with the Court is the „Imagination Test‟. The more imagination
that is required on the customer‟s part to get some direct description
of the product from the term, the more likely the term is
„suggestive‟, not „descriptive‟. A descriptive term directly and
clearly conveys information about the ingredients, qualities or
characteristics of the product or service, whereas the „suggestive‟
term only indirectly suggests these things. Thus, if one must
exercise a reasoning process to determine attributes of the product or
service, the term is suggestive not descriptive. If the mental link
between the word and the product‟s attributes is not almost
instantaneous, this strongly indicates suggestive and not direct
descriptiveness. The second test suggested by the learned author is
"The Competitors‟ Need Test", that is, is the word or words likely to
be needed by the competitive sellers to describe their goods? If the
answer is in the positive, then the word/words are descriptive,
otherwise they may just be suggestive.
41. The learned author further states that the name of a thing cannot
identify a source and is, therefore, the very antithesis of a mark.
There is usually no one, single and exclusive generic name for a
product. The existence of synonyms for a term does not mean the
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 22 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
term is not generic. The learned author further goes on to state as
under:
―12.01(1): The name of the product or service
itself - what it is - is the very antithesis of a mark.
In short, a generic name of a product can never
function as a trademark to indicate origin. The
terms ―generic‖ and ―trademark‖ are mutually
exclusive. As noted previously, the function of a
mark is to identify and distinguish the goods or
services of one seller from those sold by all others.
A mark answers the buyer's questions
―Who are you? Where do you come from?‖
―Who vouches for you?‖ But the name of the
product answers the question ―What are you?‖
Many competitive products will give the same
answer, regardless of source of origin - e.g., a
computer, a box of cigars, a bar of soap. Such
generic designations tell the buyer what the
product is, not where it came from. If the public
chooses to call a product ―Thermos‖ bottle rather
than a ―THERMOS brand vacuum insulated
bottle‖ then ―Thermos‖ is not serving as a mark -
it is used as a generic name, regardless of the
producer's intentions.
xxxxx
The concepts of ―generic name‖ and
―trademark‖ are mutually exclusive. Thus, if, in
fact, a given term is ―generic‖, it can never
function as a mark to identify and distinguish the
products of only one seller. As the Seventh Circuit
observed: ―A generic term is one that is
commonly used as the name of a kind of
goods....Unlike a trademark, which identifies the
source of a product, a generic term merely
identifies the genus of which the particular
product is a species.‖
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 23 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
42. In Marico Ltd. (supra), the Division Bench of this Court held that
the mark „LOW ABSORB‟ is not a coined word and at best is a
combination of two popular English words, which are descriptive of
the nature of the product. Such adoption naturally entails the risk
that others in the field would also be entitled to use such phrase.
Persons who are first of the blocks in using a trade mark which is a
purely descriptive expression pertaining to the subject product ought
to be discouraged from appropriating a descriptive expression or an
expression which is more or less a descriptive expression as found
in the English language for claiming the same to be an exclusive
trade mark. A descriptive word mark bears an indication to the
product‟s kind, quality, use or characteristics, etc. When rights are
claimed over a word mark as a trade mark and which word mark is,
in fact, a mere tweak of a descriptive word indicative of the kind,
quality, intended purpose or other characteristics of the goods, it is
not open to urge that although the respondent is using the
descriptive word mark, in fact, only as a part of sentence as a
description even in itself along with another independent trade mark,
yet the use of descriptive words are to be injuncted against.
43. I need not multiply the authorities on the above proposition of law.
44. As is evident from the pleadings of the plaintiff itself, the mark in
question - „SCHEZWAN CHUTNEY‟, in effect, depicts a
„Chutney‟ (sauce) which has a „SCHEZWAN‟ flavour. There is not
much imagination required to get to the description of the product
itself, that is, a sauce with Schezwan flavour. As rightly contended
by the learned counsel for the defendant, if protection is to be
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 24 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
granted to such a mark then there is no reason why such protection
be also not granted to „Tamarind Chutney‟ or „Tomato Chutney‟, as
they are also combinations of words in English and Hindi. The
words- „SCHEZWAN CHUTNEY‟ also satisfies the second test
suggested by McCarthy, which is "The Competitors‟ Need Test".
The competitors are likely to use these two words to describe their
product, and, in fact, as suggested by the learned counsel for the
defendant, do indeed describe their product using the said words.
45. In this regard, the learned counsel for the defendant has also drawn
my attention to the advertisements of the plaintiff itself to submit
that the plaintiff also uses the mark more in a descriptive sense.
These advertisements are reproduced hereinbelow:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 25 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 26 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 27 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 28 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 29 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
46. The learned counsel for the defendant has further drawn my
attention to various other manufacturers who use „SCHEZWAN
CHUTNEY‟ or „SZECHUAN CHUTNEY‟ as a product descriptor
rather than as a trade mark. The photographs of these products are
reproduced hereinbelow:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 30 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 31 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
47. Though the learned senior counsel for the plaintiff has correctly,
relying upon the judgment of this Court in Pankaj Goel (supra),
submitted that merely because others are infringing the rights of the
plaintiffs, it would not act as a protection to the defendant, at the
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 32 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
same time, the extensive use of the mark „SCHEZWAN
CHUTNEY‟ or „SZECHUAN CHUTNEY‟ by other
manufacturers indicates that the industry recognizes the said mark
as a description of the product. The submission of the learned senior
counsel for the plaintiff that the plaintiff has taken legal action
against certain third parties and there are certain orders of injunction
also passed in its favour, also cannot have a bearing on the outcome
of the present application. It is not the case of the plaintiff that these
orders are final adjudication of its claims or bind this Court or the
defendant in any manner.
48. In Ishi Khosla (supra), the Court found that the goods marketed by
the plaintiff do not subscribe to the dictionary meaning of the word
„Whole Foods‟; on the contrary, the plaintiff therein was dealing
not only in natural foods but also marketing products like roasted
namkeen and even bakery food items, which were not covered by
the ordinary meaning of the word „Whole Foods‟. The Court,
therefore, found that the products marketed by the plaintiff cannot
be said to be descriptive of the meaning of English words „Whole
Foods‟.
49. In Living Media India Limited (supra), the Court held that the mark
„AAJ TAK‟ had acquired distinctiveness due to its prior long
,continuous and regular use. Though in the present case also, the
plaintiff has sought to urge that by its long usage, the mark
„SCHEZWAN CHUTNEY‟ has acquired a secondary meaning and
distinctiveness, in my opinion, the same would require to be
considered on evidence being led by the parties. Mere sale figures
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 33 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
may not be an adequate yardstick to determine whether the mark,
though descriptive in nature, has acquired a secondary meaning by
its usage by the plaintiff. Reference in this regard may be placed on
the judgement of the Division Bench of this Court in IHHR
Hospitality Pvt. Ltd v. Bestech India Pvt Ltd., 2012 SCC OnLine
Del 2713, wherein it has been held as under:
―9. The appellant has chosen to obtain
registration of a word, as its trademark, which is
not only public juris but is a word which is closely
associated by the large mass of people in India as
indicative of, in relation to an abode : a place of
peace where the mind, the body and the soul can
relax and rejuvenate.
10. Being the registered proprietor of the
trademark ‗Ananda', the appellant would have to
show, prima facie evidence that so strong in the
public mind is the mark linked, with reference to it
having achieved secondary distinctiveness, that
upon seeing mark ‗Ananda' in relation to an
abode, it immediately brings to mind the
appellant. This would require prima facie
evidence wherefrom a view could be taken that the
word ‗Ananda' reminds the consumer, without
any further prompting, that the product is that of
the appellant.
11. Now, sales of Rs. 200 crores spread over 10
years would prima facie be insufficient evidence
to establish that the word ‗Ananda', in relation to
an abode, has acquired such secondary meaning
that an ordinary consumer, without thinking any
more, would automatically conclude every abode
with the appellant.
xxxx
13. We simply highlight the fact that the word
‗Ananda' is a word which is public juris. In
relation to abodes, it signifies joy, bliss and
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 34 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
happiness. The sales of the appellant in sum of Rs.
200 crores spread over 10 years have rightly been
opined by the learned Single Judge to not be
indicative of a distinctiveness of the word being
linked to the appellant.‖
50. In People Interactive (India) Private limited v. Vivek Pahwa., 2016
SCC OnLine Bom 7351, the High Court of Bombay, in relation to a
claim of a mark having acquired a secondary meaning, has held as
under:
―15. That takes us directly to the question of
‗secondary meaning' or ‗secondary significance'.
When does an expression acquire a ‗secondary
meaning' and how does it acquire it? Again, this
is a phrase much bandied about, and I do believe
we need to pause to consider what is meant by all
this. What do we mean when we say that an
expression has ‗acquired a secondary meaning'?
This must necessarily mean that the primary
meaning of the expression, the one with which it
began, has been lost. It is left behind. The
expression no longer means what it once did. It
has assumed a new avatar. It has transcended its
original connotation and now references
exclusively in the public mind the claimant's
products, goods or services, i.e., that there is an
identification of the mark with the claimant rather
than with the goods or services in and of
themselves. The claim of a ‗secondary meaning'
posits a priori that the expression once had a
more commonplace, ordinary meaning -- this is
the meaning that is now lost. In its first iteration,
the expression found place lower on the
Indchemie/Miller Brewing scale. It has since
moved upward by acquiring a secondary meaning.
That is the claim.
16. How is the acquisition of a secondary meaning
to be shown or established? Does commercial
success, even a high degree of success, always
result in the acquisition of a ‗secondary
meaning'? I do not believe this can be so. There is
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 35 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
no presumption of secondary meaning acquisition.
That needs proof; and the proof must be of
uninterrupted use of considerable longevity
without a competitor attempting to use it. When a
person uses a common phrase, he runs the risk
that others might also use the same expression or
another very like it. In British Vacuum Cleaner
Company Limited v. New Vacuum Cleaner
Company Limited, on which Dr. Tulzapurkar
relies, Parker J held that there is a distinction
between ordinary descriptive words and a ‗fancy
word', one that does not primarily relate to the
article, but perhaps to the person manufacturing
it. There can be no restraint against the use of
general words. The decision in Office Cleaning
Services Ltd. v. Westminster Window and General
Cleaners Ltd., too, supports Dr. Tulzapurkar's
contention. The expression in dispute was ‗office
cleaning'. The appellants claimed the expression
was identified with their business to such an extent
that any other traders who wished to use the
expression as part of their trade name would have
to differentiate it. Simons J held that where a
trader adopts words in common use for his trade
name, some risk of confusion is inevitable. But
that risk must be run, or else the first user would
be allowed to unfairly monopolise the words. In
matters of this nature, courts accept even the
smallest differences sufficient to avert confusion.
17. As to this question of risk of similar use by
others, the material on record is, in my view,
against the Plaintiff. Annexed to the Affidavit in
Reply is a very long list of rival or competing
marks, at various stages. All use the word shaadi
in some form or the other. Many are opposed by
the Plaintiff. Several use the name of a community
before the word shaadi (agarwalshaadi,
konkanishaadi, patelshaadi and so on). I do not
think Mr. Khandekar's response is of much use; he
says that the Plaintiff has obtained domain name
registrations for a very large number of variants.
This is hardly evidence of exclusivity. In fact, it
points to the contrary, viz., that others have, and
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 36 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
continue to, use the word shaadi almost at will.
The Affidavit in Rejoinder does not further matters
when it says that many of these users have been
issued cease-and-desist notices by the Plaintiff.
The fact is that there are many ventures, including
online ones, that use the word ‗shaadi' as part of
their corporate or trading name or as their
domain names. Paragraph 12 of the Affidavit in
Rejoinder tabulates companies that use the word
‗shaadi' in their names. I do not think it is at all
possible for a claimant to say that there are no
competitors or rival users because the claimant
has moved against or restricted virtually every
rival user. The test in such cases must be whether
rivals have attempted to use the same commonly
descriptive or generic (class 1) expression. If it is
shown that they have, then the claims to
exclusivity and to a secondary meaning must both
fail. This is axiomatic: these rival uses show non-
exclusivity, and establish that there are indeed
many who use the word. This is precisely the risk
the law says an adopter of a generic or commonly
descriptive expression must expect to suffer. The
test of exclusivity, an essential ingredient of the
claim based on a ‗secondary meaning' can hardly
be said to be satisfied.
18. Exclusivity claims based on secondary
meaning acquisition must be established by cogent
material. References to sales and promotional
expenses may be used to establish the acquisition
of reputation and goodwill, i.e., to show the
popularity of a mark. Mere use and statements of
sales and expenses do not, of their own, establish
the acquisition of a secondary meaning. That
proof is always required of goods or services in
the second category, ‗merely descriptive'
expressions; for these are not ordinarily
registrable without such proof. That proof must be
directed to establishing that the ‗merely
descriptive' expression in question is now firmly
established in the public imagination with the
claimant and its goods and services. High sales
and expenses will not do; the claimant must show
from carefully neutralized market surveys, etc.,
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 37 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
that this is indeed how the public perceives the
mark -- not as a mere description, but a pointed
reference to the origin, viz., the claimant. Use
itself does not establish distinctiveness. The extent
to which a mark has lost its primary meaning and
the extent to which it has acquired a secondary
one are conclusions to be drawn from evidence.
That evidence, showing the displacement of the
primary meaning by the secondary meaning, must
be of the members of the public as well, not
merely those specially placed to attest to its
uniqueness.‖
51. In Natures Essence Pvt. Ltd. (supra), the Court found the
defendants mark therein to be visually and phonetically deceptively
similar to the plaintiff‟s mark. It further held that merely because
the word „nature‟ is descriptive, it cannot be said that its
combination with other words like „Inc.‟ or „Essence‟ would not
make the mark distinctive. In the present case, in my prima facie
opinion, the combination of the two words does not take away the
descriptive nature of the words as they still continue to describe the
nature and quality of the product in question. In fact, it is together
that they become descriptive.
52. I may also note that from the advertisement campaigns adverted to
by the plaintiff in the plaint, it appears that the words
„SCHEZWAN CHUTNEY‟, though used prominently, are used by
the plaintiff to describe the product, and the mark which identifies
its source is, in fact, „Ching's Secret‟. Though the learned senior
counsel for the plaintiff submitted that the mere use of the house
mark by the parties, in the present case „Ching's‟ for the plaintiff
and „MRS. FOODRITE‟ for the defendant, is not sufficient to
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 38 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
defeat the plaintiff‟s claim of infringement or passing off, in my
opinion, it is use of these house marks that distinguish the source of
the goods, while the words „SCHEZUAN CHUTNEY' identifies
the nature of the product.
53. In Mother Sparsh Baby Care Pvt. Ltd. (supra), the Court found that
the defendant itself was using the mark as a trade mark and not as a
description of the product, and had even applied for seeking
registration of the said mark. The Court held that such conduct
itself estopped the defendants from claiming the mark to be
descriptive of the product. The same cannot, however, be said for
the defendant herein.
54. In Meher Distilleries Pvt. Ltd. (supra), the High Court of Bombay
found that the mark „ASᾹVA‟ was not descriptive of the product
and was used in aid of distinguishing the goods in question. It was
in that light that the High Court of Bombay further held that merely
because the defendant no.2 therein was using „Rampur‟ along with
the mark in question, it could not be said that they constitute one
mark. The said judgment would, therefore, have no application to
the facts of the present case.
55. In Hem Corporation Pvt. Ltd. (supra), the plaintiff therein was the
registered proprietor of the marks „MADHUR GULAB‟,
„MADHUR‟ and the word „MADHUR‟ written in devanagari script.
The defendant therein was using the word „Madhur‟, though
claiming it as a description of the characteristic of the product. The
Court, however, found that the use of the said mark by the defendant
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 39 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
was as a trade mark and not merely as description of the product.
The said judgment is, therefore, distinguishable on facts.
56. In Kishore Kumar (supra), the Court found that the plaintiff therein
has established special elements to show its prior adoption, user, and
registration and, therefore, was entitled to grant of an injunction.
The said judgment therefore, was on the peculiar facts of that case.
57. In Colorbar (supra), the Court found that the defendant therein had
applied for registration of the same mark and therefore, was
estopped from claiming it to be descriptive in nature. As noted
hereinabove, the said disqualification does not attract to the
defendant herein.
58. This now brings me to the rights claimed by the plaintiff on account
of the registration of the subject mark: „SCHEZWAN
CHUTNEY‟. Apart from the fact that such registration is in
challenge by not only the defendant herein but also third parties,
once the Court prima facie finds that the mark is descriptive of the
quality and intended purpose of the goods, the defendant would be
entitled to seek protection against an action of infringement by
placing reliance on Section 30(2)(a) and Section 35 of the Act,
which are reproduced hereinbelow.
Section 30(2)(a) and Section 35
―Section 30. Limits on effect of registered trade
mark.
(2) A registered trade mark is not infringed
where--
(a) the use in relation to goods or services
indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 40 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
production of goods or of rendering of services or
other characteristics of goods or services;
xxxx
Section 35. Saving for use of name, address or
description of goods or services.
Nothing in this Act shall entitle the proprietor or a
registered user of a registered trade mark to
interfere with any bona fide use by a person of his
own name or that of his place of business, or of
the name, or of the name of the place of business,
of any of his predecessors in business, or the use
by any person of any bona fide description of the
character or quality of his goods or services.‖
59. This Court in Marico Ltd. (supra) held that while considering an
application seeking an ad interim protection, the Court may look
into the aspect of the prima facie validity of the registration of the
trade mark. The Court further held as under:
―19. Our conclusion is that we have in fact totally
failed to appreciate the argument as raised on
behalf of the appellant. Surely, when rights are
claimed over a word mark as a trademark and
which word mark is in fact a mere tweak of a
descriptive word indicative of the kind, quality,
intended purpose or other characteristics of the
goods, it is not open to urge that although the
respondent is using the descriptive word mark in
fact only as a part of sentence as a description
(and even assuming for the sake of argument only
the descriptive word mark in itself) alongwith
another independent trademark, yet the use of
descriptive words are to be injuncted against.
How can it at all be argued that though the
respondent is in fact shown to be using the
disputed word(s) only with a descriptive
intendment, yet, such use should be taken not in a
descriptive manner but as a trademark. If we
permit such an argument to prevail then what will
happen is that what cannot be directly done will
be indirectly done i.e., whereas the appellant is
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 41 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
not entitled to succeed in the infringement action
because the use by the respondent is in
furtherance of its statutory rights of the user of the
words which are descriptive of the kind, quality,
intended purpose or characteristic of the goods,
yet, merely because the appellant states that the
respondent is using the same as a trademark, the
same should be taken as infringement of the
trademark of the appellant. Not only the plaintiff
has no exclusive rights whatsoever to the
trademarks because they are such which fall
within the mischief of Section 30(2)(a), the
respondent/defendant is always fully justified
and entitled to use the descriptive words in any
and every manner that it so chooses and pleases
to do. If there are no rights of the plaintiff to
exclusive user of the trademark then where does
arise the question of disentitlement of a defendant
to use the trademark of the appellant inasmuch as
any person who adopts a descriptive word mark
does so at its own peril in that any other person
will also be fully entitled to use the same in view
of a specific statutory rights thereto, and there are
various other statutory rights including that
under Section 30(2) (a), and which is what is
being done by the respondent in the facts of the
present case and its rights being further stronger
because of the use alongwith the simultaneous use
of its trademark "Sundrop".
In the facts and circumstances of the present
case, Section 30(2)(a) clearly applies in entitling
the respondent to use the expression "WITH LOW
ABSORB TECHNOLOGY" because that is only a
descriptive use by normal English words in the
English language indicative of the kind, quality,
intended purpose of characteristic of the goods.
There is no use of the expression "bonafide"
in Section 30(2)(a) as is found in Section 35, and
we do not propose to import in Section
30(2)(a) the expression "bonafide" because the
subject matters of the two Sections i.e. Section
32(a) and Section 35 are though common on
certain limited aspects, however the two sections
do in fact operate in separate fields. Also looking
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 42 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
at the issue in another way, "bonafide" aspect can
in a way be said to be very much included
in Section 30(2)(a) because the use of words
which indicate their relation to the goods for the
kind, quality, intended purpose or other
characteristics etc. of the goods, is clearly only a
bonafide user of the same and which
"bonafideness" does not have to be additionally
proved. In fact, there is ordinarily not only no lack
of bonafides in using the normal descriptive word,
and on the contrary there is in fact malafides of a
plaintiff in adopting otherwise a descriptive word
mark and for which adaption there is ordinarily
an absolute ground for refusal of registration of
the trademark. There is no malafides of the
respondent as alleged by the appellant because
the respondent is using the expression "LOW
ABSORB" as part of a sentence in a descriptive
manner and the respondent is also prominently
using its own trademark "Sundrop", an aspect we
have repeatedly referred to otherwise in this
judgment. Merely because the respondent used
"TM" earlier after the expression "LOW ABSORB
TECHNOLOGY" is not such as to wipe out
statutory rights/defences of the respondent.
We are also of the opinion that once the person,
against whom a suit is filed on the ground of
infringement of a trademark which is in fact a
descriptive word, then, if a defendant is using his
own word mark as a trademark prominently in
addition to the descriptive word mark which the
plaintiff claims to be his trademark, nothing
further is required to show the bonafides of the
defendant against whom infringement of a
registered trademark is alleged. In the facts of the
present case, we have already adverted to in
detail the prominent use by the respondent of its
independent trademark "Sundrop", and, the fact
that the expression "LOW ABSORB" is being used
only as part of the sentence which reads "WITH
LOW ABSORB TECHNOLOGY".‖
60. The Court further held as under:
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 43 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
―21. The following conclusions thus emerge:-
(i) A mark which is sought to used as a trade
mark, if, is one falling under Section 9(1)(a) to (c),
then the same ordinarily ought not to be afforded
protection as a trade mark.
(ii) Before the marks which fall under Section
9(1) (a) to (c) are given protection as a trade
mark, the distinctiveness must of an undisturbed
user of a very large/considerable number of years,
with the emphasis being on discouragement on
appropriation of such marks which fall
under Section 9(1) (a) to (c).
(iii) A civil court in a suit filed for infringement of
a registered trade mark is entitled (if there is no
earlier judgment which has achieved finality in
cancellation proceedings) to consider the validity
of registration for the purpose of passing an
interlocutory order including of grant or refusal
of an interim injunction- once the objection as to
invalidity of registration is taken up in the
pleading/written statement.
(iv) A trademark which falls under Section
9(1) (a) to (c) cannot be registered on proposed to
be used basis. Evidence on distinctiveness with
respect to trade marks falling under Section 9(1)
(a) to (c) should be the evidence of user
evidencing distinctiveness as on the date of
application for registration or at the best of
evidence up to the date of registration.
(v) In infringement actions the court is entitled to
consider the evidence of distinctiveness up to the
date of registration for the purpose of passing any
interlocutory order and not evidence showing
distinctiveness post registration. However, in
cancellation proceedings evidence of
distinctiveness post registration of the trade mark
can also be considered.
(vi) Even if there is finality to registration of a
trade mark, yet the defendant in infringement
Signature Not Verified
Digitally Signed By:RENUKA
NEGI
Signing Date:13.01.2023CS(COMM) 379/2020 Page 44 of 45
11:39:03
Neutral Citation Number 2023/DHC/000224
action can take statutory defences under Sections
30 to 35 to defeat the infringement action.‖
61. At the present stage, it cannot be held that the adoption of the mark
„SCHEZWAN CHUTNEY‟ by the defendant is dishonest, thereby
disentitling the defendant from the protection against a claim of
infringement. The judgment of this Court in B.K. Engineering Co.
(supra) and of the Supreme Court in Midas Hygiene Industries (P)
Ltd. (supra) would therefore, not be applicable to the facts of the
present case.
RELIEF:
62. In view of the above, the claim of the plaintiff for grant of an
interim injunction against the defendant from using the mark
„SCHEZWAN CHUTNEY‟ or „SZECHUAN CHUTNEY‟ is
rejected. However, the ad interim order dated 16.09.2020 is made
absolute and shall operate during the pendency of the present suit.
63. It is clarified that any observation made by this Court in this order is
only prima facie in nature and shall not influence or be binding on
this Court while considering the Suit on its merit.
64. The application is disposed of in the above terms.
CS(COMM) 379/2020
65. List for completion of pleadings before the learned Joint Registrar
(Judicial) on 13th March, 2023.
NAVIN CHAWLA, J.
JANUARY 11, 2023/RN/Ais/KP Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:13.01.2023CS(COMM) 379/2020 Page 45 of 45 11:39:03