Bombay High Court
Sky Enterprise Private Limited vs Abaad Masala And Co on 8 January, 2020
Equivalent citations: AIRONLINE 2020 BOM 1100
Author: S. C. Gupte
Bench: S.C. Gupte
1/18
8-ia 01-2019-comip 1124-19.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO.01 OF 2019
IN
COMMERCIAL I. P. SUIT (L) NO. 1124 OF 2019
Sky Enterprise Private Ltd. .... Applicant/Plaintiff
Versus
Abaad Masala & Co. .... Defendant
...........
Mr. Sanjeev Singh a/w Ms. Shivani Rakesh Bindra and Mr. Shailesh Rai
i/b Ms. Shivaji Rakesh Bindra for Applicant/Plaintiff.
Mr. Vinod Bhagat a/w Ms. Parveen Anand i/b G.S. Hegde & V. A. Bhagat
for Defendant.
CORAM : S.C. GUPTE, J.
DATE : 8 JANUARY 2020
(ORAL JUDGMENT) :
Heard learned Counsel for the parties.
2. This interim application is made in a commercial I.P. suit on a case of infringement of registered trademarks as also the common law right against passing off of goods.
3. The Plaintiff is engaged in the trade and business of processing, manufacturing and marketing of all types of masala Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 2/18 8-ia 01-2019-comip 1124-19.doc powders, spices, condiments, seasonings and other allied and cognate goods. The Plaintiff is a registered proprietor of the trademark 'Star Zing' (both as a label mark and a word mark), as also various other trademarks, with or without the words 'Star Zing', such as "White Chinese Pepper Curry Powder", "White Chinese Pepper Seasoning", "Black Chinese Pepper Curry Powder", "Black Chinese Masala", "White Chinese Pepper Masala", "Black Chinese Pepper Masala" and "White Chinese Masala", in Class 30, all of which are used for marketing different masala powders of the Plaintiff. These registrations have been obtained during the year 2016-2017. It is the case of the Plaintiff that earlier, these words formed part of its label and word marks using the words "Star Zing", e.g. 'Star Zing White Pepper Masala', 'Star Zing Black Chinese Pepper Masala', 'Star Zing Black Chinese Masala', etc., which were registered sometime in the year 2012.
4. It is the case of the Plaintiff that all these marks have acquired a distinctive goodwill and reputation; these have, by their extensive and sustained use, come to be exclusively associated with the Plaintiff's goods. It is submitted that the label and word marks using the words 'Star Zing' such as 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala' were originally registered in the year 2012, after the Plaintiff, for the first time, conceived of, and adopted, them for marketing its goods. Apart from the Plaintiff's use of the words 'Star Zing', the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala', used in the labels by the Plaintiff, are themselves claimed to have acquired a distinctive reputation and Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 3/18 8-ia 01-2019-comip 1124-19.doc association with the Plaintiff's products alone and none others. The Plaintiff has, on that basis, even proceeded to obtain word mark registrations in respect of these latter marks, namely, 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' and others, as described in paragraph 7 of the plaint, in the year 2016-2017. The Plaintiff submits that its goods, marketed extensively under these registered trademarks, are sold all over India and have a number of distributors in India as well as abroad and the trademarks have acquired the status of well known trademarks on account of their extensive promotion and usage. The Plaintiff relies upon particulars of year-wise sales of its products under the various trademarks referred to above, and particularly, of goods marked under the trademarks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' over the last many years, i.e. from 2012 and till date. The Plaintiff submits that it has widely advertised these trademarks through different media and modes such as newspapers, trade magazines, trade literatures and novelties as also on the internet through its website http://www.skyenterpriseindia.com across the world.
5. The Plaintiff's grievance is that the Defendant, who is also engaged in the same business, namely, manufacturing and trading in all types of masala powders and spices, condiments, seasonings and other allied and cognate goods, has adopted identical marks, such as 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' in respect of its goods. It is submitted that such use by the Defendant is dishonest and made only with a view to gain undue benefit out of the reputation Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 4/18 8-ia 01-2019-comip 1124-19.doc and goodwill of the Plaintiff in the particular territory. It is submitted that such use is likely to dilute the goodwill and reputation of the Plaintiff's marks. The Plaintiff submits that originally, i.e. in March 2016, the Plaintiff had noticed the Defendant's use of various identical or deceptively similar trademarks, namely, 'Star King White Chinese Pepper Masala' and 'Star King Black Chinese Pepper Masala', dishonestly copying almost the whole of the Plaintiff's original trademarks, namely, 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala'. Immediately thereafter, the Plaintiff claims to have served a notice on the Defendant. It is submitted that the Defendant, in response, assured the Plaintiff and gave an undertaking that it would not use any mark which was deceptively similar to the Plaintiff's trademarks containing the words 'Star King'. It is submitted that the Defendant, sometime thereafter, proceeded to make use of the trademarks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala', which are also the Plaintiff's trademarks, registered separately from its originally registered trademarks 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala'. After some communications between the parties in that behalf, the Plaintiff, after it learnt of the Defendant having registered trademarks such as 'AMC Frize Black Chinese Pepper Masala' and 'AMC Frize Black Chinese Masala', initiated rectification proceedings. These are pending before the Trademarks Registry.
6. In the premises, the Plaintiff has filed the present suit seeking a perpetual injunction against the Defendant from infringing Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 5/18 8-ia 01-2019-comip 1124-19.doc the Plaintiff's registered trademarks as also passing off of its goods as the goods of the Plaintiff. The Plaintiff prays for ad-interim reliefs in terms of temporary injunctions sought in the interim application.
7. The Defendant opposes the application on various grounds. Learned Counsel for the Defendant, firstly, submits that the Defendant does not use the words 'Black Chinese Pepper Masala' or 'White Chinese Pepper Masala', which are clearly generic or descriptive of the goods marketed, as trademarks, but as description of its goods. Relying on the invoices referred to by the Plaintiff as also the trade dress or packaging material used by the Plaintiff for marketing its goods, learned Counsel submits that the words are not only descriptive of the goods but are even used as such by the Plaintiff itself. It is submitted that no exclusive right can be claimed by the Plaintiff to these descriptive words. Relying on the Full Bench decision of our Court in the case of Lupin Ltd. Vs. Johnson and Johnson1, learned Counsel submits that having regard to the descriptive nature of these words, their registration as trademarks can be said to be ex-facie illegal or fraudulent or shocking to the conscience of the Court. Learned Counsel submits that this Court, in the premises, ought to refuse the injunction sought by the Plaintiff, even though the latter appears to be a registered proprietor of the trademarks 'Black Chinese Pepper Masala' or 'White Chinese Pepper Masala'. Learned Counsel relies on the provisions of Sub-sections (1) and (2) of Section 30 as well as Section 35 of the Trademarks Act, 1999 ("Act"). Learned Counsel submits that the words 'Black Chinese Pepper Masala' and 1 2015(6) PTC 1[Bom][FB] Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 6/18 8-ia 01-2019-comip 1124-19.doc 'White Chinese Pepper Masala' are used by the Defendant in its trade dress, just as in the case of the Plaintiff, for identifying or indicating the kind, quality, and intended purpose of the goods. Learned Counsel further submits that even in the purported registration of the Plaintiff's trademarks, there is a clear disclaimer as regards use of the word 'Chinese', which is part of the trademarks. Learned Counsel submits that the use of the so-called infringing words by the Defendant for describing the character or quality of its goods is bonafide and cannot be interfered with by the Plaintiff on the basis of his proprietorship of the trademarks referred to above. Learned Counsel for the Defendant, in support of this submission, refers to the judgments of Delhi High Court in the cases of Stokely Van Camp, Inc. Vs. Heinz India Private Limited 2 and Marico Limited Vs. Agro Tech Foods Limited 3. Learned Counsel submits that the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala', which form the Plaintiff's registered trademarks, are descriptive words commonly used in the trade. Learned Counsel relies on advertisements and photographs of trade dresses or packaging materials of other manufacturers or traders of similar goods to show that the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' are also used by these other manufacturers or traders in connection with their goods.
8. It is not in dispute that the Plaintiff not only has trademark registrations both for the device and word marks using the words 'Star Zing', such as 'Star Zing White Chinese Pepper Masala' and 'Star Zing 2 2010 STPL 14499 Delhi 3 169 (2010) DLT 325.
Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 7/18 8-ia 01-2019-comip 1124-19.doc Black Chinese Pepper Masala', but even for the word marks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' themselves, as separate and distinct registrations, and as of the date of this interim application, these registrations are very much valid and subsisting. If that is so, the Plaintiff is prima facie entitled to an interim injunction restraining the world at large from using these trademarks in connection with similar goods, unless the registration of these trademarks by the Plaintiffs can be shown to be demonstrably or ex facie illegal or fraudulent or shocking to the conscience of the Court. As noted by our Full Bench in Lupin Limited (Supra), the object of providing for registration of a trademark is to obviate the difficulty in proving in each and every case the plaintiff's title to the trademark; this object is achieved by raising a strong presumption in law as to the validity of the registration and conversely, by casting a heavy burden on the defendant to question such validity or rebut such presumption at the interlocutory stage. It is not sufficient for the Defendant in such a case to show that he has an arguable case in support of invalidity of the registration. Even prima facie satisfaction of the Court for stay of a trial under Section 124 of the Act is not enough to refuse such injunction. There is only a small window for opposing grant of such injunction, in the form of three exceptional circumstances, as noted by the Full Bench in Lupin Limited (Supra), namely, (i) ex facie illegality of registration, or (ii) fraudulent registration or (iii) registration that would shock the conscience of the Court. It is only through this small window that the Defendant can successfully defend his use of the infringing word/s. All that is alleged in support of such plea in the present case is that the Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 8/18 8-ia 01-2019-comip 1124-19.doc marks consist of descriptive words. In the first place, it is not in any and every case, where the words forming part of a trademark are descriptive, that the applicant for registration is not entitled to it. Individual words in a given case may be descriptive, but their peculiar combination may yet create a unique appearance or identity. Secondly, by virtue of a long history of trading, it is quite possible that the mark, though it contains descriptive words, may have come to acquire a distinctive reputation and association with the Plaintiff's product alone and with no others. In all these cases, it is perfectly legitimate to obtain a registration and prevent use of identical or deceptively similar marks by others, in spite of the descriptive words forming part of the Plaintiff's trademark. Indeed, as the Supreme Court has observed in Godfrey Philips India Ltd. vs. Girnar Food and Beverages Pvt Ltd. 4, a descriptive trademark may well be entitled to protection, if it has come to assume a secondary meaning, which identifies a particular product or products as coming from a particular source.
9. In the Plaintiff's case here, each individual word forming part of its registered trademark may well be a descriptive word; it may not be possible to claim any proprietory right over it; but no rival trader can use the particular combination and order in which the Plaintiff uses these words in its registered trademark to distinguish its goods, if the particular combination or order is not generally used in the trade for describing the character or quality of goods. A rival trader, for example, in the present case, may describe his product as 'pepper masala'; he 4 MANU/SC/0541/2004 Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 9/18 8-ia 01-2019-comip 1124-19.doc may describe it as 'Chinese masala', he may even call it 'black masala', if that is the colour of its product; he may even write on the label that the product is a black masala made of pepper and is for Chinese cookery. But he surely cannot describe his goods as 'White Chinese Pepper Masala' or 'Black Chinese Pepper Masala', using the very same combination and order of words, which form the registered trademarks of the Plaintiff. Secondly, the Plaintiff has an arguable claim to registration of these trademarks, though they may be in a broad sense descriptive, on the footing that through their extensive use as trademarks for sale and promotion of its goods, the trademarks have come to acquire a distinctive reputation and association with its goods and no others. There is even material in the plaint to indicate that. The Plaintiff had initially registered its trademarks 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala' as far back as in 2012. Between the years 2012-2013 and 2015-2016, the Plaintiff's goods under the trademarks 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala' were extensively sold in the market, the sales rising progressively and exponentially and finally reaching to the tune of over Rs.12.38 crores in the year 2015- 2016 for 'Star Zing White Chinese Pepper Masala' and in the same year, of over Rs. 4.40 crores for 'Star Zing Black Chinese Pepper Masala'. It is possible to say that by that year, the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' themselves had obtained a secondary meaning and association with the Plaintiff's goods and with no others. In fact, presumably in the light of this circumstance, in the year 2015-2016, the Plaintiff appears to have made an application for Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 10/18 8-ia 01-2019-comip 1124-19.doc registration of word marks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' as separate word marks citing their user since 2012, and indeed, on that basis, even obtained registration from the Trademarks Registry. If that is so, it is permissible to term the words, in their peculiar combination and order, as distinctive, that is to say, as having acquired a secondary meaning and seek their registration as trademarks. Prima facie it is not possible to claim such registration as either ex facie illegal or fraudulent or shocking to the conscience of the Court.
10. Besides the small window available for using of an infringing trademark on the ground of the registration being ex facie and totally illegal or fraudulent or shocking to the conscience of the Court, the only other grounds available to a defendant for opposing the injunction applied for by a registered proprietor of a trademark, so far as they are relevant to the case on hand, are contained in Sub- Sections (1) and (2) of Section 30 and Section 35 of the Act. Having regard to Sub-Sections (1) and (2) of Section 30, nothing in Section 29 of the Act (which provides for the case of infringement of a registered trademark) can be construed as preventing the use of a trademark by a person bonafide for the purpose of identifying his goods or services, provided such use meets with two conditions. The first condition is that such use must be in accordance with honest practices in the industry or commerce, and the second, such use is not with a view to take unfair advantage of, or not detrimental to, the distinctive character or reputation of the registered trademark. The Defendant, here, fails on Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 11/18 8-ia 01-2019-comip 1124-19.doc both counts.
11. The Defendant claims that it uses the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' not as trademarks in themselves, but as descriptions of its goods. Prima Facie that does not appear to be correct as a matter of fact. The manner and the prominence in which these words appear on the packages or trade dress of the goods indicates that they are used as distinct and separate from the words "AMC Frize", which is claimed as the Defendant's trademark; they appear more as trademarks than as description of the goods. Secondly, and at any rate, what is material in a case of infringement is not the Defendant's intention in using the particular words, whether as a trademark or as a description of goods, but how consumers are likely to see them, or, in other words, the likelihood of confusion that the particular use of the words may cause in the minds of the consumers. Going by the manner of use of, and prominence given to, the words, which appear to be quite distinct and separate from the other words "AMC Frize", the consumers are very much likely to see them as trademarks in themselves and be misled into believing the origin of the goods as the Plaintiff company.
12. Secondly, and in any event, it does not prima facie appear that there is any trade practice of using these words to describe the goods or that the words have become publici juris. Learned Counsel for the Defendant, as noted above, has relied on photographs of trade dress Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 12/18 8-ia 01-2019-comip 1124-19.doc or packaging material used and advertisements issued by a few other traders in connection with their goods. In the first place, only in three instances out of these, the particular traders appear to have used the infringing words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala'. The Defendant has not indicated in its reply, or even otherwise, what is the market share of these particular traders or, in other words, whether their alleged use amounts to a significantly extensive use of these words for describing the goods so as to amount to an honest practice in the trade or industry as a whole. These traders may themselves be infringers of the registered trademarks of the Plaintiff. Indeed, in a couple of cases, the Plaintiff has addressed cease and desist notices to these very traders and there appears to be correspondence between them and the Plaintiff, suggesting a possibility of these other traders giving up their purported use of the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala'. (This correspondence is produced by learned Counsel for Plaintiff separately before this Court for its perusal.) The material produced by the Defendant, in connection with the purported use of the infringing words by these rival traders, accordingly, does not either indicate an honest practice in the industry of using the subject words for describing the character or quality of the goods or, in any way, suggest that these words have become publici juris.
13. On the other hand, there is an arguable case, on the part of the Plaintiff, that by using these words, the Defendant is taking unfair advantage of, or causing detriment to, the distinctive character or reputation of the Plaintiff's registered trademarks. Sections 30(1) and Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 13/18 8-ia 01-2019-comip 1124-19.doc (2) as also Section 35 make it clear that the defendant's use of the words, in any event, must be shown to be bonafide. I am afraid, the Defendant does not have a good prima facie case on this count. The Defendant appears to have started using the marks originally, i.e. in the year 2016, as 'Star King White Chinese Pepper Masala' and 'Star King Black Chinese Pepper Masala'. The use of the words 'Star King' in connection with its goods, and in combination of the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala', clearly gives the Defendant away. It prima facie shows that the Defendant has been dishonestly seeking to trade on the reputation and goodwill of the Plaintiff's registered trademarks "Star Zing White Chinese Pepper Masala" and "Star Zing Black Chinese Pepper Masala". Though the Defendant has rightly stopped from using the words 'Star King' in connection with its goods, after giving an undertaking to the Plaintiff, the very fact of its adoption of the words, in combination with the other words, namely, 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' is prima facie suggestive of its dishonest intention of trading on the Plaintiff's reputation and goodwill. It is possible to say that, in keeping with this original dishonest intention, the Defendant continues to use the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' for marketing its goods; it cannot prima facie be termed as a bonafide use by the Defendant, just as the Defendant cannot prima facie establish that the industry has been using these words to describe like goods generally.
14. The judgment of Delhi High Court in Rich Products Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 14/18 8-ia 01-2019-comip 1124-19.doc Corporation & Anr. Vs. Indo Nippon Food Ltd. 5, relied upon by the Defendant, is clearly distinguishable on facts. In that case, Rich Products Corporation (plaintiff) had registered its trademark "RICH 's WHIP TOPPING"; it did not have separate registration for the words "WHIP TOPPING" appearing in its trademark. The defendant's trademark in that case was "BELLS WHIP TOPPING". The plaintiff was claiming proprietorship not only of the whole of the registered trademark "RICH's WHIP TOPPING", but even the words "WHIP TOPPING" forming part of it and on that basis, claiming a perpetual injunction against the defendant from using the words "WHIP TOPPING" in their trademark "BELLS WHIP TOPPING". Delhi High Court did not accept the plaintiff's case. In the first place, it observed that a trademark registration conferred on its proprietor an exclusive right to the use of the trademark as a whole; there was no exclusive right in the proprietor to a part of the whole of such registered trademark, without such part being the subject matter of a separate registration. As we have noted above, in our case, the trademarks 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala' (i.e. the whole) and the trademarks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' (i.e. the parts) are separately registered. What the Delhi High Court held was that "WHIP TOPPING"
was a generic and descriptive expression. It noted that the word "WHIP' meant, in the context of the case before the Court, "a light fluffy desert made with whipped cream made with beaten eggs", whereas the word "TOPPING" meant, in the context, "part of liquid that gathers at the top;
5 2010(42) PTC 660(Del.) Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 15/18 8-ia 01-2019-comip 1124-19.doc froth, etc. or a liquid rich in droplets or particles of dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension, when it is allowed to stand or is centrifuged." The Court, observed that the words "Whip Topping", when juxtaposed, would be "representative of toppings or garnishes for food items which have cream like quality and as such were purely descriptive of the product". These facts are also clearly distinguishable from the facts of our case. In our case, as we have noted above, each of the words forming part of the Plaintiff's registered trademarks may be descriptive, but the particular combination and order in which the words appear in the Plaintiff's trademarks, coupled with the reputation and goodwill built up over years, prima facie lend a distinctive identity to the trademark as a whole, and indicate the source of the goods.
15. In Marico Limited (Supra), the infringing words used on the packages of the defendant's goods, sold under the trademark "Sundrop", were 'Low Absorb Technology' . The plaintiff was using the same words for its products under the name of 'Sweekar'. The Court, after a prima facie consideration at the interlocutory stage, held that the use of the expression by the defendant ought not to be prohibited, since the words were distinctive and described the quality of the defendant's goods unlike a trademark which was meant to identify the origin of the goods. These facts are clearly distinguishable from the facts of our case. In our case, the words are separately registered as a trademark, purportedly on the basis that they have come to acquire a distinct association with the Plaintiff's goods, and cannot be said to be of Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 16/18 8-ia 01-2019-comip 1124-19.doc common use.
16. In Stokely Van Camp (Supra), the offending words 'Rehydrate Replenish Refuel' were found by the Court to be typically used by the trade in connection with 'isotonic drinks' or 'supplements'. Typically, as the Court noted, an isotonic solution was described in the World Book Medical Encyclopedia as "a solution of salts in water that closely resembles body's normal fluids in strength". A sports drink containing isotonic supplements was described in the dictionary as "electrolytes, carbohydrates, and other nutrients, which can be depleted after training or competition; electrolyte replacement promotes proper rehydration". The Court found that for goods such as sports drinks, energy drinks, such like expressions, which were akin to the Plaintiff's mark, were not only common, but perhaps, in a sense, necessary to describe the characteristics or attributes of the product. It is in the light of these observations that the Court held that though there was a registration in favour of the plaintiff, no interim injunction could be granted in respect of the use of the expression 'Rehydrate Replenish Refuel'. The Court did not accept the plaintiff's case that these words had acquired a secondary meaning. In coming to this conclusion, it went by the facts of that case. There is no evidence, on the other hand, in our case that the words are commonly used for describing the characteristics or attributes of products. There is also an arguable case on the part of the Plaintiff here that the words have come to acquire a secondary meaning, suggesting the source of the goods as the Plaintiff.
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17. The balance of convenience in the present case must also weigh in favour of the Plaintiff for claiming a temporary injunction. The Plaintiff not only has a registration for the trademarks "White Chinese Pepper Masala" and "Black Chinese Pepper Masala", but has been actually using these marks for marketing its goods. The Defendant, on the other hand, claims that it uses these words to describe its goods, that is to say, the character or quality of its goods. There are any number of ways of doing so. It may write, as we have noted above, on its trade dress or packaging material that the goods are masala powders; they contain pepper; the colour of the powder is white; and it is meant for Chinese cookery. Restraining the Defendant from using the particular combination and order of the words, which is reflected in the Plaintiff's registered trademarks, cannot accordingly prevent the Defendant from describing the character or quality of its goods. On the other hand, if the Defendant is allowed to use the very same combination and order of the words as the Plaintiff's registered trademarks, that would definitely lead to diluting of the Plaintiff's trademarks and that would imply irreparable damage to the Plaintiff.
18. Accordingly, the Plaintiff has made out a case for leave under Clause XIV of the Letter Patent and an interim injunction. The Leave Petition is allowed. The Defendant is restrained by an interim injunction from advertising or displaying or using directly or indirectly the impugned trademarks 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' or any other identical or deceptively similar trademark or words in their peculiar combination in connection with its Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 ::: 18/18 8-ia 01-2019-comip 1124-19.doc goods. The Defendant is also restrained by an interim injunction from passing-off its goods as those of the Plaintiff by using the words 'White Chinese Pepper Masala' or 'Black Chinese Pepper Masala' or any other identical or deceptively similar trademark/s or words in their peculiar combination. The Interim Application is disposed of accordingly.
19. Learned Counsel for the Defendant prays for stay of this order. Learned Counsel submits that considering the fact that his client has been using these words for quite some time, he should be protected for a limited period to enable him to test this order. Firstly, the Defendant cannot be said to have made any significant sales of its goods by using these words. It is the Defendant's own case that he is actually using the trademark 'AMC Frize' in connection with its goods. In other words, the words are not meant to indicate the source of the goods, but simply as a description of the character or quality of the goods. And, as we have seen above, there is no reason why it should be allowed to use the particular combination of words forming part of Plaintiff's trademark in the order in which they appear for describing its goods. Surely, it can make do with other appropriate words or combinations to describe the characteristics or quality of the goods sold by it under the trademark 'AMC Frize'. In that case, there is no reason for ordering stay of this order, particularly after the matter has been extensively heard and decided by a speaking order. The application is rejected.
( S. C. GUPTE, J. ) Shinde H.R. ::: Uploaded on - 11/02/2020 ::: Downloaded on - 16/03/2020 13:53:07 :::