Delhi District Court
Mr Sunit Shah vs Sunshine Food Products on 12 August, 2024
IN THE COURT OF SHRI ARVIND KUMAR :
DISTRICT JUDGE (COMMERCIAL COURT-01)
EAST DISTRICT
KARKARDOOMA COURTS : DELHI
CS (COMM) No. 126/2022
Sunit Shah
Proprietor of M/s Shah Namkeen
83, Indra Park
Near Chander Nagar
Delhi - 110051 ...... Plaintiff
Versus
M/s Sunshine Food Products
Having office at:-
F-88-89, Bichhwal Industrial Area
Bikaner - 334006, Rajasthan ...... Defendant
Date of institution : 27.04.2022
Date of reserving judgment : 24.07.2024
Date of judgment : 12.08.2024
JUDGMENT:
1. The plaintiff has filed the present suit against the defendants seeking permanent injunction, restraining infringement and passing off of trademark/copyright/label, damages, rendition of account, delivery up etc.
2. It is averred in the plaint that the plaintiff is a sole proprietorship firm namely M/s Shah Namkeen and is engaged in the business of manufacturing and marketing of namkeens, puffs, biscuits, cakes, spices, bread, confectionery goods included in Digitally signed CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products ARVIND by ARVIND KUMAR Page No.1 of 26 KUMAR Date: 2024.08.12 17:10:27 +0530 Class 30 since the year 1977. It is averred that the plaintiff adopted the trademark/label SHAH/SHAH NAMKEEN/SHAH HOT MIX (Label) and the original artistic work in the year 1977 and has been continuously, extensively and openly using the same. It is averred that on 01.07.1982, the plaintiff entered into partnership with his brother namely Mr. Vinit Shah in the said firm which was reduced into writing on 11.03.1983 and on 02.02.1984, they applied for registration of trademark SHAH vide application No.417009 and they became the registered proprietor of trademark SHAH vide Certificate No.164666 dated 31.08.1989. However, on 08.06.1995, the said partnership firm got dissolved and the plaintiff became its sole proprietor and continued the above said business under the trademark SHAH/SHAH NAMKEEN/SHAH HOT MIX (LABEL). On 03.04.2012, plaintiff applied for registration of trademark/label SHAH HOT MIX vide application No.2309592 with respect to namkeens, coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices, ice falling in Class 30 and the same was registered vide Certificate No.1926472.
3. It has been averred that the plaintiff is the original conceiver, adopter and user of the artistic work SHAH HOT Digitally signed by ARVIND CS (Comm) No. 126/2022 ARVIND KUMAR Sunit Shah vs Sunshine Food Products Page No.2 of 26 KUMAR Date:
2024.08.12 17:10:46 +0530 MIX/SHAH and is having legal rights over it. It has further been averred that the plaintiff maintains high standards of manufacture, trade and invests enormous amount of money and efforts on research and development activities and its products under the trademark/name SHAH HOT MIX/SHAH (Label) and has acquired valuable and immense goodwill and reputation in the market amongst its consumers in Delhi, NCR and other parts of the country. The said trademark/label/artistic work SHAH HOT MIX/SHAH has become distinctive of the said goods manufactured and sold by the plaintiff and has become an intellectual property of the plaintiff and plaintiff is the exclusive owner of the said trademark alongwith its lettering style, layout, colour combination, patterns etc. It is stated that plaintiff has obtained necessary approvals, permissions and certificates from concerned authorities including Commercial Taxes Department, Department of Value Added Taxes and Income Tax Department.
4. It is alleged that defendant is a partnership firm and is engaged in the identical business of identical goods as that of plaintiff and is overlapping the business of plaintiff. It is stated that in the first week of April 2022, the sales person of the plaintiff came across the impugned goods of the defendant and discovered that someone is online selling the Namkeen under the identical trademark/packaging/label/artistic work HOT MIX which are identical and deceptively similar to the overall trade Digitally signed by ARVIND CS (Comm) No. 126/2022 ARVIND KUMAR Sunit Shah vs Sunshine Food Products KUMAR Date:
2024.08.12 Page No.3 of 26 17:10:35 +0530 name of the product of plaintiff. It has further been alleged that upon further inquiry, it was revealed that the defendant started the use of identical packaging under the similar trademark/label on very large scale in various States of India including Delhi and East Delhi. It has been alleged that the trademark used by the defendant is phonetically, visually, structurally, deceptively and confusingly similar to that of the plaintiff's brand name SHAH HOT MIX/SHAH (Label). It has further been averred that the conduct of the defendant has caused immense loss and damages to the plaintiff business and its impugned products are instruments of fraud in the market and could also injure the customers who purchase their products assuming them to be of same quality and standards as that of the plaintiff and that the defendants with their inferior products are also ruining the plaintiff's market credibility. It is stated that the use of impugned trademark/label/artistic work by defendant constitutes infringement and passing off of trademark/label/artistic work of plaintiff for the reasons as under:-
i. Plaintiff's and defendant's goods are namkeen etc. Falling in Class 30.
ii. Consumers of these products are identical. iii. The channels of trade are identical. iv. A connection in trade exists between the plaintiff and the defendant.
v. Similarity in both the trademarks and similarity in Digitally signed by ARVIND CS (Comm) No. 126/2022 ARVIND KUMAR Sunit Shah vs Sunshine Food Products Page No.4 of 26 KUMAR Date:
2024.08.12 17:10:57 +0530 major features of packaging of both the products. vi. The plaintiff, the prior user of the trademark/label/artistic work SHAH HOT MIX has not given any consent, permission to the defendant to use the impugned trade mark/label, its similar expressions and similar artistic work.
5. Hence vide the present suit, plaintiff has prayed for an order of perpetual injunction restraining infringement of trademark/label/artistic work/passing off/delivery up SHAH HOT MIX and has also prayed for a decree of damages and further to restrain the defendant, its proprietor, partner, associates, sister concerns, dealers, distributors through itself and through servants, agents, assigns and representatives and all others acting for and on behalf of defendant, from processing, selling, offering to sell, advertising directly or indirectly dealing in impugned goods included in Class-30 or any other trademark/label as may be identical or deceptively similar to plaintiff's trademark/label/artistic work, rendition of accounts of defendant and further to pass a decree of damages of Rs.50,00,000/-.
6. In the written statement, the defendant raised a preliminary objection with regard to the maintainability of the suit on the ground that the suit has been filed basing claim over a descriptive and common trade-name and further, the suit of the plaintiff suffers from delay and latches and that the plaint has not Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.5 of 26 KUMAR Date:
2024.08.12 17:11:05 +0530 been signed by any authorized person of the plaintiff. It has been claimed that the word 'HOTMIX' refers to a kind and characteristic of Bhujia , Namkeen and snacks which is being used by the defendant for more than two decades and even HOTMIX is used by several manufacturers of such products. It is stated that objections have been raised to the applications filed by plaintiff for registration of trademark HOT MIX in class 30 in respect of snacks foods, preparation made from cereals, noodles, bread and biscuits, pastry, confectionery including bhujia, namkeen, murmure, puff, papads, chips, chocolates, sweets, khatti mithi goli.
7. Defendant denied that the trademark/label SHAH HOT MIX, subject matter of application no. 2309592 was used by plaintiff since 01.04.1977 and it is stated that the registration certificate in respect of the said application is subject to disclaimer "No exclusive right over the descriptive matters appearing on the label" and as such plaintiff has no right over the word 'HOT MIX' being descriptive in nature and indicating the kind and characteristics of goods.
8. Further, it is stated that defendant has raised objections to similar other applications of plaintiff under Section 9(1)(a) of Trade Mark Act, 1999. It is alleged that Hot Mix is one of the variant of namkeen and description HOT MIX is given Digitally signed by ARVIND CS (Comm) No. 126/2022 ARVIND KUMAR Sunit Shah vs Sunshine Food Products KUMAR Date:
2024.08.12 Page No.6 of 26 17:11:13 +0530 because of its red chilly contents, which describes its kind and characteristics. Defendant further alleged that defendant's trade mark BC and its various labels are duly registered and has immense goodwill and reputation in respect of namkeen and sweets since 28.08.1984 and the trademark BC is neither similar nor identical to the trademark SHAH of plaintiff. It is submitted that description HOT MIX is not associated with plaintiff. It is further alleged that the labels of both plaintiff and defendant have their own distinctive feature with common contents HOT MIX with glaring and material differences and no one of average intelligence can be misled or confused due to word HOT MIX with label SHAH by plaintiff and label BC by defendant as the writing style of HOT MIX is altogether different. Other allegations have been denied specifically and categorically.
9. The plaintiff also filed replication to the written statement of the defendant, reiterating the contents of the plaint and denying the counter allegations.
10. From the pleadings of the parties, following issues were framed on 20.12.2022 :
1) Whether the plaintiff is entitled for a decree of permanent injunction against the defendants for restraining it from selling, offering to sell, advertising, using the artistic work in the impugned goods under class-30 with trademark label 'Hotmix' or any other identical or deceptively similar Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.7 of 26 KUMAR Date:
2024.08.12 17:11:30 +0530 trademark? OPP
2) Whether the plaintiff is entitled for delivery up of all the impugned goods, packaging material, advertising material, stationery, account books and other incriminating material in possession of the defendant with directions for destruction of the same? OPP
3) Whether the plaintiff is entitled for a decree of rendition of accounts against the defendant? OPP
4) Whether the plaintiff is entitled for damages of Rs.50 lacs or any other amount against the defendant? OPP
5) Whether the present suit has been filed without any cause of action? OPD
6) Whether the word 'Hotmix' has no trademark and is a generic word? OPD
7) Relief.
11. At the trial, Shri Nitish Kumar - LDC from the Office of The Registrar (Trademark) was examined as PW1. He had brought the legal certified copy of the Trademark No. 2309592 in Class-30 and proved the same Ex.PW1/A which was verified and certified by Shri Vikas Punia - Head of Office, Trade Marks Registry, New Delhi. He deposed that as per their records, the restriction was imposed on the words 'Namkeen' and 'since Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.8 of 26 KUMAR Date:
2024.08.12 17:11:36 +0530 1977' as they were found to be descriptive words and other part of the applied trademark were approved. PW1 admitted that it is not written in Ex.PW1/A that any restriction was imposed on the words 'namken' & 'since 1977' and volunteered that their authority do not give trademark to the descriptive and general words like 'namkeen' & 'since 1977' and he had no knowledge of any evidence of claim of user by the applicant since 1977.
12. Shri Pankaj Kumar Pandey was examined as PW2. He was the Examiner of Trademark and GI posted in Corporate office, Office of The Registrar (Copyright) Sector-14, Dwaraka, New Delhi. He had brought the legal certified copy of the Copyright Registration No.A-63634/2003 dated 24.02.2003 and proved the same, Ex.PW2/A which has been verified and certified by Shri Hemant Khosla - Deputy Registrar of Copyrights.
13. Shri Ankit Shah, son/Attorney Holder of the plaintiff was examined as PW3. He deposed that his father Shri Sunit Shah is the proprietor of M/s Shah Namkeen. He further deposed that Mr. Sunit Shah has authorized him vide Special Power of Attorney dated 04.03.2022. PW3 stated the facts as stated in the plaint. He tendered in evidence the following documents:-
Photocopy of Special Power of Attorney dated 04.3.2022 executed by the plaintiff in his favour as Ex.PW3/1. (Page 179 to 180).
The Declaration under Order 9 Rule 6 (3) of the Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.9 of 26 KUMAR Date:
2024.08.12 17:11:43 +0530 Commercial Courts Act as well as Certificate under Section 65-B of the Indian Evidence Act as Ex.PW3/2 (Page 182 to 183) bearing his signatures at point X and Y. Copy of Partnership Deed dated 11.3.1983 as Ex.PW3/3. (Page 18 to 22) Copy of Registration Certificate bearing No.164666 with latest status report as Ex.PW3/4 (colly). (Page 3 to
14) Copy of Dissolution Deed as Ex.PW3/5. (Page 23 to 28) Print-out of Trademark Registration Certificates of trademark/label SHAH HOTMIX alongwith latest status report as Ex.PW1/A. Print-out of the receipt issued by the Trademark Registry towards filing of the application for LPC as well as the LPC as Ex.PW3/7 (colly) (Page 15, 15A and 15B) Print-out of Trademark Registration Certificates of trademark/label HOTMIX/SHAH alongwith latest status report has been mentioned as Ex.PW1/8 (colly). Same was de-exhibited as the same was not on record.
Copies of Copyright Registration Certificates issued in favour of the plaintiff as Ex.PW2/A (colly.) Copy of Delhi Sales Tax Registration Certificate as Ex.PW3/10 (colly) (Page 29 to 35) Copy of Central Sales Tax Registration Certificate as Ex.PW3/11 (colly) (Page 36 to 39) The Small Scale Certificate in favour of the plaintiff as Mark B (Page 40) The FSSAI Certificate as Ex.PW3/13 (colly) (Page 41 to 42) Digitally signed CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products ARVIND by ARVIND KUMAR Page No.10 of 26 KUMAR Date: 2024.08.12 17:11:50 +0530 Copy of GST Registration Certificate as Ex.PW3/14. (Page 43 to 44) The Annual Sales figure duly certified by Sumit Shashi & Co. Chartered Accountant as Ex.PW3/15. (Page
45) The annual advertising expenses as Ex.PW3/16. (Page 46) The ITR for the year 2009-2010 to 2020-2021 as Ex.PW3/17 (colly)(Page 47 to 57) Copy of online business status of the plaintiff obtained from different websites as Ex.PW3/18 (colly) (Page 58 to 71) Copies of selected sale bills/invoices raised by the plaintiff as Ex.PW3/19 (colly) (Page 72 to 109 and also Page 1 to 53 of additional documents).
The purchase bills/invoices towards the advertisement as Ex.PW3/20 (colly) (Page 110 to 132) Colour print-out/copies of advertisement material of the plaintiff as Ex.PW3/21 (colly)(Page 133 to 147) Copy of the websites, as mentioned in para 15 of his affidavit, through which the defendant is doing online business as Ex.PW3/22 (colly) (Page 148 to 153) Packaging material of the plaintiff's product as Ex.PW3/23 (colly)(PAGE 1) Packaging material of the defendant's product as Ex.PW3/24 (colly) (Page 2) Print-out of the status report of one trademark application of the defendant as Ex.PW3/25 (colly)(Page 154 to 155) Digitally signed by ARVIND CS (Comm) No. 126/2022 ARVIND KUMAR Sunit Shah vs Sunshine Food Products Page No.11 of 26 KUMAR Date:
2024.08.12 17:11:56 +0530 PW3 was cross-examined by Ld. Counsel for defendant.
14. The defendant examined Shri Hari Ram Agarwal -
partner of defendant firm as DW1 who deposed by way of affidavit Ex.DW1/A, the facts as stated in the written statement. He tendered in evidence the following documents :
Copy of his Firm Registration Certificate with the Registrar of Firms, Bikaner as Mark D1.
Registration Certificate issued under the GST as Ex.DW1/2. (Page 97-99) Copy of his firm registered with Govt of Rajasthan with District Industries Centre, Bikaner under No. 0318 dated 13.3.2007 as Ex.DW1/3. (Page 8) Certificate dated 08.5.2019 vide which his firm was certified ISO 22000-2018 for maintaining Food Safety Management system as Ex.DW1/4. (Page 9) Registration Certificate vide which his firm was granted registration and license to work a factory on 17.1.2018 vide Registration No. RJ/17408, valid up to 31.3.2027 as Ex.DW1/5 (colly.). (Page 10 and 11) Copy of Trademark Registration Certificate vide which his trademark BHIKARAM CHANDMAL with label BC was registered, as Ex.DW1/6 (colly.). (Page 12-
35) Copy of International Registration Certificate as Ex.DW1/7 (Page 36-40).
Sales Invoices as Ex.DW1/8 (colly.) (Page 59-96) Details of various variants used by his firm in Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.12 of 26 KUMAR Date:
2024.08.12 17:12:03 +0530 respect of Namkeen and Bhujia as Ex.DW1/9 (colly.). (Page 100-101) Packagings of various manufacturers, as available on the online sale portal and manufacturers website as Ex.DW1/10 (colly.). (Page 102-119).
Declaration by way of affidavit in compliance of Order 9 Rule 6(3) which is Ex.DW1/B bearing his signatures at point B1 and B2. (Page 30 to 33) Certificate under Section 65-B of the Indian Evidence Act in support of computer generated documents which is Ex.DW1/C, bearing his signatures at point C1. (Page 34) This witness was cross-examined by Ld. Counsel for plaintiff.
15. I have heard Shri Satish Kumar - Ld. Counsel for the plaintiff, Shri PK Jain - Ld. Counsel for defendant and have also gone through the written submissions filed by both the parties as well as records of the case.
Contentions of the Counsels for the parties:-
16. It is submitted by Ld. Counsel for the plaintiff that the plaintiff is the registered user of the trademark SHAH HOT MIX (Label) and has been using it since 01.04.1997 and on account of usage of the said trade mark for long period, it has acquired distinctiveness and secondary meaning and therefore even if it is a descriptive in nature, it has acquired distinctiveness Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.13 of 26 KUMAR Date:
2024.08.12 17:12:10 +0530 and secondary meaning. Reliance was placed on the Trademark Registration Certificate Ex.PW1/A wherein the registration is for the trademark SHAH HOT MIX (Label).
17. It is further contended that the word Hot Mix cannot be termed as descriptive as it does not identify any characteristic or nature of the product to which this mark belongs. It is also submitted that the trademark Shah Hot Mix was granted with a disclaimer with regard to descriptive words. However, the words 'Namkeen' and 'Since 1977' can be said to be descriptive and not the work 'Hot Mix'. It is also contended that the plaintiff has filed fresh application for registration of the word Hot Mix which have been accepted and published in Journal without any disclaimer which suggests that the work Hot Mix is not a descriptive mark.
18. Ld. Counsel for plaintiff contended that the word 'HOT MIX' cannot be called a generic word and the same is not descriptive of Namkeen or Bhujia and it cannot be said to be solely associated to food products, but the same is associated with different classes of goods and services. Ld. Counsel further contended that the word 'HOT MIX' is also associated with asphalt mix, mixing of songs and mixing of plant variations. He further contended that in terms of asphalt mixing, Hot Mix refers to Hot Mix Asphalt which is a combination of approximately 95% stone, sand, or gravel bound together by asphalt cement, a Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.14 of 26 KUMAR Date:
2024.08.12 17:12:17 +0530 product of crude oil. In the area of music and songs, HOT MIX is used for a two decade long running Indian music show. He further contended that in America, the HOT MIX is a mix show running for over three decades now. It is also contended that even if word HOTMIX is considered as descriptive word, it has remained associated with plaintiff and has attained secondary meaning. Ld. Counsel for the plaintiff has relied upon judgments delivered in Sanofi India Ltd. vs Universal Neutraceuticals Pvt. Ltd. CS(OS) No. 1808/2014; Duke Fashions (India) PVt. Ltd. vs Girish Hosiery & Ors. MANU/DE/1679/2010; United Biotech Pvt. Ltd. vs Orchid Chemicals and Pharmaceuticals Ltd. & Ors. MANUDE/2526/2012; Sona BLW Precision Forgings Ltd. and Anr. vs Sona Mandhira Pvt. Ltd. and Ors. CS(Comm) 277/2020. 2023 SCC OnLine Delh 1118; Sona Mandhira Pvt. Ltd. and Anr. vs Sona BLW Precision Forgings Ltd. and Ors. FAO(OS)(COMM) 40/2023. 2023 SCC OnLine Del 2184.
19. The defendant contends that it is also selling similar products but under the trademark 'BC' (Bhikaram Chandmal) for the last about two decades and is also having registration in its name. Defendant further submits that the said trademark of the defendant is also registered in Class - 30 not only in India but in other countries as well. It is submitted that the Trade Mark of plaintiff SHAH HOT MIX is different in style, CS (Comm) No. 126/2022 Digitally signed Sunit Shah vs Sunshine Food Products Page No.15 of 26 ARVIND by ARVIND KUMAR KUMAR Date: 2024.08.12 17:12:23 +0530 colour combination, lettering etc. and is clearly distinguishable from BC HOTMIX and there is no chance of any deception to consumers. It is submitted that defendant is using Trademark BC and HOTMIX is a descriptive word describing nature of namkeen and no exclusivity can be claimed regarding the word HOTMIX.
It is submitted by Ld. Counsel for the defendant that various manufacturers of Bhujia and Namkeen are using the word HOT MIX with their products, for example, Samrat Snacks Hot Mix, Satmola Namkeen Hot Mix, PK Hot Mix, Deep Hot Mix, Umanya Mixture Hot Mix etc. Hence, it was emphasized that there can be no exclusivity over the name HOT MIX which is not only a generic name but is also descriptive and reference was made to the provisions of Section 30 and 36 of the Trademark Act. Ld. Counsel for the defendant has relied upon judgments delivered in ITC Ltd. vs Nestle India Ltd., OSA No. 170 of 2020 Madras High Court DB; Lotus Herbals Pvt. Ltd. vs DPKA Universal Consumer Ventures Pvt. Ltd. & Ors. CS(Comm) 454/2023 pronounced on 25.01.2024; and Superon Scheqeisstechnik India Ltd. vs Modi Hitech India Ltd. 2018(47) PTC 61 Delhi CS(Comm) No. 750/2018 decided on 02.04.2018.
ISSUE No. 1 & 6:
20. It is not in dispute that plaintiff has got the trademark SHAH HOT MIX (label) registered and according to plaintiff, same is being used since 1995. The said mark was Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.16 of 26 KUMAR Date:
2024.08.12 17:12:30 +0530 applied for registration on 03.04.2012 with user w.e.f. 01.04.1977. Further the trademark of the defendant 'BC' BHIKARAM CHANDMAL is also registered in Class-30 in India as well as in other countries as well. The defendant stated to have been using trademark/label BC HOTMIX for the last two decades.
21. The trademark of plaintiff and defendant are as under:-
PLAINTIFF DEFENDANT
22. The trade dress of Trademark of both the parties show that both are totally different from each other, both are of different style and packaging and there can be no deception amongst the customers as regards the aforesaid two products are concerned. There is no dispute regarding the use of the CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products Page No.17 of 26 Digitally signed ARVIND by ARVIND KUMAR KUMAR Date: 2024.08.12 17:17:36 +0530 word/trademark/label 'BC' by the defendant. PW3 has admitted during cross-examination that they are putting the mark HOTMIX alongwith SHAH on label separately and they have never used the mark HOTMIX without the word SHAH on packaging. PW3 has also stated that in the packaging of the plaintiff, word SHAH has been used whereas in the packaging of defendant, word BC is used. He also stated that font and style of writing HOTMIX is different in the two packagings and trade-
dress is also different. The plaintiff has not objected to the use of the trademark BC by the defendants. The dispute in the present matter is over the words 'HOT MIX'.
23. The registration of the trademark of the plaintiff 'SHAH HOT MIX' is with a disclaimer. Now it is to be seen what is the descriptive word. It is clear from the reading of the label of the plaintiff that neither the word 'SHAH' nor 'Namkeen' or the year 'Since 1977' can be said to be descriptive. As per the plain meaning, descriptive means anything which stands to describe the nature of the thing or product. Thus, HOT MIX describes the nature of the namkeen contained in the packet, that is to say, that it contains a spicy mixture. The term HOT MIX suggests that it is used for a spicy mixture or namkeen and thus, describes the taste and nature of the product and therefore, the disclaimer would only be in respect to the said word HOT MIX. Thus, no exclusivity can be claimed upon the said word HOT CS (Comm) No. 126/2022 Digitally signed Sunit Shah vs Sunshine Food Products by ARVIND Page No.18 of 26 ARVIND KUMAR Date:
KUMAR 2024.08.12
17:24:50
+0530
MIX which is the bone of contention in the present case and that too, when several other manufacturers are using the said words for their products to describe the contents and nature of their products. It has come in the testimony of defendant DW1 that the word HOTMIX is descriptive and common to trade of Bhujia, Namkeen and snacks and Expression HOT MIX is used by various manufacturers of Bhujia, Namkeen and snacks with their respective trade mark such as Samrat Snacks Hot Mix (Chavana- Tikha), Kemchho Namkeen-Spicy Hot Mix, Wah G Namkeen Hot Mix, Satmola Namkeen Hot Mix, P K Hot Mix, Snack Rack- Hot Mix, Deep Hot Mix, Thakkar Bros Hot Mix, Kolis Hot Mix, Umanya Mixture Hot Mix.
24. Since the word HOTMIX is a generic as well as descriptive term, the plaintiff cannot claim protection of word HOTMIX in view of the provisions contained in Section 30 of the Trademark Act. Section 30(2)(a) of the Trademark Act reads as under:-
(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 production of goods or of rendering of services or other characteristics of goods or service;
25. It is submitted by Ld. Counsel for plaintiff that fresh CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products Digitally signed Page No.19 of 26 ARVIND by ARVIND KUMAR KUMAR Date: 2024.08.12 17:24:44 +0530 applications were filed by the plaintiff for registration of the trademark/label HOT MIX which have been accepted and published in the journal without any disclaimer suggesting that the word HOT MIX is not descriptive as claimed by the defendant and have filed the copies of the said registrations. Firstly, these publications are subsequent to the filing of the present suit which were published in the journal on 14.11.22 and secondly, even if there is no disclaimer in these publications, the word HOT MIX would not cease to be descriptive for the reasons as aforesaid.
26. Ld. Counsel for the plaintiff relied upon the judgment in Sanofi India Limited Vs. Universal Neutraceuticals Pvt. Ltd. (MANU/DE/2670/2014) where reliance was placed on the judgment of Duke Fashions (India) Pvt. Ltd. Vs. Girish Hosiery & ors. (MANU/DE/1679/2010) wherein it was held that disclaimer does not affect the significance which a mark conveys to others when used in the course of trade; disclaimers do not go into the market place, and the public generally have no notice of them.
27. In the matter in hand 'Shah' & 'BC' are different trademarks and the comparison of trade-dress, packaging, style, colour coding are different from each other and there is no chance of any deception to the consumers. Even difference in writing style of word 'HOTMIX' by plaintiff and defendant makes both CS (Comm) No. 126/2022 Digitally signed Sunit Shah vs Sunshine Food Products by ARVIND Page No.20 of 26 ARVIND KUMAR KUMAR Date:
2024.08.12 17:24:39 +0530 the products clearly distinguishable to the consumers and no chance of any deception to the customers. Further, Section 30(2) of the Trademark Act clearly provides that a registered trademark will not be infringed where the use is in relation to goods or services indicates kind, quality etc. It has already been observed earlier that the word HOTMIX only described the nature of the product. Thus, in view of the above, the aforesaid judgment is not applicable to the facts of the present case.
28. Reliance was placed by the Ld. Counsel for the plaintiff on the judgment in United Biotech pvt. Ltd. vs Orchid Chemicals and Pharmaceuticals and Ors. Ltd. (MANU/DE/2526/2012) wherein it was opined that the words contained in a label/mark are also worthy of protection. However, in the instant case, the disclaimer was initially for the word HOT MIX in the label itself and once it is held that it is a descriptive word, is not entitled to protection. In the said case, the protected word in the label was ORZID which is not a descriptive word.
29. Ld. Counsel for defendant next relied on the judgment in Greaves Cotton Ltd. vs Mohd. Rafi & Ors. 2011 SCC Online Del 2596 wherein it was observed that neither deletion of a part of a registered trademark nor the prefix or suffix of another word to it would validate the use of a trademark by an unlicensed user. Again, this judgment has to be differentiated Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products Page No.21 of 26 ARVIND KUMAR Date:
KUMAR 2024.08.12
17:24:33
+0530
with the facts of this case as the trademark 'BC' and 'SHAH' are different and discernible and on the same analogy that the word HOT MIX is descriptive and is being used by several other manufacturers of the same product as detailed above.
30. Ld. counsel for the defendant has also referred to the judgment in Sona BLW Precision Forgings Ltd. and Ors. 2023 SCC OnLIne Del 2184. This judgment is also not applicable since in the plaintiff's and defendant's trademark 'Shah' and 'BC' are predominant trademark and HOTMIX is descriptive of the contents i.e. namkeen.
31. In the judgment ITC Ltd. vs Nestle India Ltd. 10.11.2020 (OFA No. 170/2020), Court held that 'Magic Masala' is only descriptive term and no trademark can be claimed upon it. In the word 'Magic Masala'/'Magical Masala' are laudatory in character and no exclusivity can be claimed by anyone. It is held that plaintiff is a prior user of word 'Magic Masala' for instant noodles can hardly be a reason to accord protection to the plaintiff to use the same as trademark and maintain a passing off action against the respondent.
32. Another contention of Ld. Counsel for plaintiff is that the word HOTMIX has been associated with the product of the plaintiff and has attained secondary meaning. Descriptive Digitally signed CS (Comm) No. 126/2022 by ARVIND Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.22 of 26 KUMAR Date:
2024.08.12 17:24:27 +0530 marks can become distinctive only if they attain secondary meaning which means that the marks though seems descriptive on its face, consumers begin to associate a trademark with a certain product overtime. Secondary meaning is a concept that recognizes that words with a regular and distinctive meaning can become associated with a specific product. The mark must have been identifiable as a brand for specific services and/or goods from just one source to be considered a trademark that has gained secondary meaning.
33. It has come in the testimony of DW1 that various manufacturers are using the word 'HOT MIX' with their products such as Samrat Snacks Hotmix, Satmola Namkeen Hotmix, PK Hotmix, Deep Hotmix, Umanya Mixture Hotmix, etc. The word 'HOT MIX' being a descriptive word, used by several manufacturers cannot be given exclusivity.
34. PW3 admitted that certificate Ex.PW3/15 shows the overall turnover of all products of Shah Namkeen and not exclusively of SHAH HOTMIX and same is with advertisement expenses Ex.PW3/16. The ITR Ex.PW3/17 also did not reflect anything about SHAH HOTMIX. PW3 has admitted that in the invoice Ex.PW3/19 various products/variants namely TANATAN/HOTMIX/DAL MOONG/TASTY/PUNJABI SEV are mentioned and similarly different variant products are CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products Digitally signed Page No.23 of 26 ARVIND by ARVIND KUMAR KUMAR Date: 2024.08.12 17:24:21 +0530 mentioned in different invoices. PW3 also admitted that as per the trademark registration certificate at page 9, part of Ex.PW3/4 various products are mentioned in Class 30 in which their trademark is registered which include tea/coffee/biscuit etc. PW3 also admitted that he did not place on record any document to suggest that the product of the defendant are of inferior quality as compared to that of plaintiff.
35. It is also noted that the plaintiff is manufacturing other type of namkeen also with the tradename Shah Namkeen and the description of the product is given on the label for separate products such as Moong Dal, Khatta Meetha, Navratan, Aloo Bhujia etc. It shows that the trademark is Shah Namkeen whereas the other name appearing under it only describe the product or the nature of the said product inside the packet or container. It cannot be said that the word 'HOT MIX' is exclusively associated with the trade name of the plaintiff or has acquired secondary meaning.
36. The plaintiff has failed to prove that word HOTMIX has been used extensively and consumers have come to associate the name with a particular product or service. Admittedly, said word HOTMIX has been used by number of other manufacturers of Namkeen etc. Digitally signed CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products ARVIND by ARVIND KUMAR Page No.24 of 26 KUMAR Date: 2024.08.12 17:24:14 +0530
37. The plaintiff has failed to establish that the work HOT MIX is exclusively associated with the plaintiff or it has attained secondary meaning. Thus, both these issues are decided against the plaintiff and in favour of defendant.
ISSUES NO. 2 TO 4 :-
38. Having held that the plaintiff is not entitled to protection of the word HOT MIX and is not entitled for any restraint order or permanent injunction in respect of the word HOT MIX, the issue no. 2 is decided against the plaintiff and in favour of the defendant.
ISSUE NO. 5 :-
39. It has clearly been held that there is no passing off of goods of the defendant as that of plaintiff as there is significant difference in the trademark SHAH HOT MIX and the goods sold by defendant with the trademark BC HOT MIX and that plaintiff is not entitled for protection of the word HOT MIX, no cause of action has arisen against the defendant and thus, this issue is decided in favour of defendant and against the plaintiff.
ISSUE NO. 7/RELIEF :-
40. In view of the findings on the above issues, it is held that the plaintiff is not entitled for any injunction as claimed for restraining the defendant for passing off or for a decree of CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products Digitally signed Page No.25 of 26 ARVIND by ARVIND KUMAR KUMAR Date: 2024.08.12 17:24:07 +0530 rendition of accounts, damages etc. The suit of the plaintiff is hereby dismissed. No order is passed as to costs.
File be consigned to Record Room.
ANNOUNCED IN OPEN COURT ON 12th day of August 2024 (ARVIND KUMAR) District Judge (Commercial Court-01) East District Karkardooma Courts, Delhi Digitally signed by ARVIND CS (Comm) No. 126/2022 Sunit Shah vs Sunshine Food Products ARVIND KUMAR Page No.26 of 26 KUMAR Date:
2024.08.12 17:23:59 +0530