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2020 SCC OnLine Bom 750 : (2020) 5 AIR Bom R 500 : (2020) 81
PTC 569

In the High Court of Bombay

(BEFORE S.C. GUPTE, J.)

Sky Enterprise Private Ltd. … Applicant/Plaintiff;

Versus
Abaad Masala & Co. … Defendant.
Interim Application No. 01 of 2019 in Commercial I. P. Suit (L) No.
1124 of 2019
Decided on January 8, 2020
Advocates who appeared in this case:
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.
The Judgment of the Court was delivered by
S.C. GUPTE, J.:— 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 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
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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
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 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
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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 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. v. 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 ‘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
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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. v. Heinz India Private Limited2 and Marico
Limited v. Agro Tech Foods Limited3 . 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
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
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that is alleged in support of such plea in the present case is that the
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. v. 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
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-
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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
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 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
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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 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
(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
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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 Corporation v.
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; 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
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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 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
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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.
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
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
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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.
———
1
2015 (6) PTC 1 [Bom][FB]

2 2010 STPL 14499 Delhi

3 169 (2010) DLT 325.

4
(2004) 5 SCC 257

5 2010 (42) PTC 660 (Del.)

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