The battle for ‘Tikhalal’

By Deepika Srivastav and Pallavi Paul

Introduction

The Hon’ble High Court of Bombay recently granted an interim injunction in favor of Everest Food Products Private Limited, restraining Shyam Dhani Industries Pvt. Ltd & Ors.[1] from manufacturing, using and selling the impugned product ‘Shyam Tikha Lal’. The Court held that the impugned product infringed Everest’s registered trademark ‘Tikhalal’ and observed that simply inserting a space between ‘Tikha’ and ‘Lal’ does not render the mark sufficiently distinctive or different from Everest’s trademark.

Brief Facts of the Case

In 2002, Everest Food Products Private Limited (hereinafter referred to as the plaintiff) coined the distinctive word mark ‘Tikhalal’ to be used for chilli powders manufactured and sold under their brand name Everest. The plaintiff applied for and secured trademark registration for the word mark ‘Tikhalal’ and device mark  in Class 30. Trademark registrations of plaintiff for the ‘Tikhalal’ marks are tabulated below:

The dispute originated in 2019 when the plaintiff discovered that Shyam Dhani Industries Pvt. Ltd & Ors. (hereinafter referred to as the defendants) were manufacturing and selling chili powder under the name ‘Shyam Tikha Lal’ despite the plaintiff’s established statutory and common law rights over the mark ‘Tikhalal’ which they had also been using extensively. Upon further enquiry, it was found that the defendants had also obtained trademark registration for a device mark containing the impugned trademark ‘Tikha Lal’ under Class 30. The plaintiff filed a rectification application with the Register of Trade Marks, seeking cancellation of the said registration. Details of the defendant’s application under Class 30 is mentioned below:

The plaintiff also issued a cease and desist notice to the defendants, but having received no response, proceeded to file the present suit against them before this Hon’ble Court.

Contentions of Parties:

Plaintiff

• The plaintiff adopted the arbitrary word ‘Tikhalal’ for its own goods and the defendant’s trademark ‘Tikha Lal’ is visually, phonetically and deceptively similar to the plaintiff’s registered mark. A minor change like adding a space between the words Tikha and Lal do not make the marks distinctive.
• The defendants cannot claim safe harbour under the provisions of Section 30(2)(a) as they are using the word/mark ‘Tikha Lal’ as a trade mark and not for describing the quality of goods being sold.
• The defendants’ use of an identical trademark for chili powder- a product covered under the plaintiff’s trademark registrations, is likely to mislead the public and create confusion. This constitutes trademark infringement under Section 29(2)(c) in conjunction with Section 29(3) of the Act.
• The plaintiff is the registered proprietor of the trademark ‘Tikhalal’ since 2002, and therefore, the defendants’ registration of a similar mark ‘Tikha Lal’ in respect of identical goods violates Sections 09 and 11 of the Trade Marks Act and therefore, invalid.
• The defendant has submitted fabricated sale invoices to mislead the Hon’ble Court and falsely demonstrate use of the trademark ‘Tikhalal’. It is noted that between 2019 and 2020, the defendants filed several trademark applications for unrelated marks, including some incorporating the word ‘SHYAM’. To support their use claims, they had submitted alleged sale invoices dated April 01, 2006 under the name ‘SHYAM’. Notably, the alleged invoice depicted sale of chili powder by the defendant under the name ‘Mirch’. Interestingly, the alleged invoice dated April 01, 2006 submitted in the defendants’ affidavit in the present case, appears to be identical to the sales invoice submitted before the Trade Mark Registry, except for some glaring discrepancies in the description of the goods wherein chili powder is mentioned as ‘Mirch Tikha Lal’.
• The plaintiff relying on the principles laid down in Lupin Ltd. vs. Johnson and Johnson[2] invoked the Court’s intervention at the interim stage to look into the validity of the defendants’ registration, especially in view of the defendants’ dishonest conduct as well as their awareness of the plaintiff’s prior rights.

Defendants

• According to Section 30(2)(a)[3] of the Trademarks Act, 1999, the defendants’ use of the term ‘Tikha Lal’ cannot be deemed an infringement because it refers to chili powder which is the characteristic of the goods.
• Even if any party plans to use the word ‘Tikha Lal’ as a trademark, its use in relation to goods, namely, chili powder, indicates the characteristics of goods, and therefore, Section 30(2)(a) of the Act shall apply.
• The defendants have been using the registered trademark Shyam Tikha Lal continuously and uninterruptedly since 2015 for their chili powders and preventing them from using the words that describe the kind and/or quality of the goods will harm their entire business.
• The invoices depicting sale of ‘Mirch Tikha Lal’ as ‘Mirch’ in the invoices as pointed out by the plaintiff is due to a misprint caused by the error of computer software.
• The plaintiffs have only relied on the statutory provisions regarding ‘likely to cause confusion’ and have not produced a single instance of consumer confusion between the contested marks.
• Assuming arguendo, even if the case of plaintiff is accepted, they cannot be granted a relief for infringement in accordance with Section 28(3)[4] of the Act;
• Nevertheless, the defendants are ready to amend the word ‘Tikha Lal’ to ‘Tikha Tej’ or ‘Tikha Tikha’ depending upon the outcome of the suit.

Findings of the Court

The Hon’ble High Court provided the following reasoning while granting an injunction in favor of the plaintiff and restraining the defendants from infringing the ‘Tikhalal’ trademark:

• The Court found the defendant’s conduct to be dishonest noting that they had deliberately fabricated sales invoices and submitted them in Court to falsely demonstrate use of the ‘Tikha Lal’ mark. Due to this dishonest behaviour, the Court held that the defendants were not entitled to any relief in the interim application, and the plaintiff was entitled to an injunction on this ground alone.
• The Court rejected the defendants’ argument under Section 30(2)(a) of the Trade Marks Act, stating that the defendants use of the mark ‘Tikha Lal’ was not in a descriptive manner, but rather as a trademark. This was evident from both the branding on their goods and their attempt to register the device mark incorporating the impugned name.
• The Court dismissed the defendants’ contention that the plaintiff has not shown any actual instance of confusion while relying on the Hon’ble Supreme Court’s decision in the case of Laxmikant V. Patel vs. Chetanbhai Shah[5] which held that mere likelihood of confusion is sufficient and the plaintiff need not prove actual confusion.
• Referring to the case of L.F. Nirmal Industries (P) Ltd. v. K.L.F. Nirmal Industries (P) Ltd.[6] the Court also declined to accept the alternative trademarks suggested by the defendants, finding them inappropriate in light of the defendants’ dishonest adoption of the mark ‘Tikha Lal’.
• The Court further held that the defendants’ continued use of the impugned mark ‘Tikha Lal’ would dilute the distinctiveness of the plaintiff’s trademark and cause harm to their goodwill and reputation.

Additionally, the Hon’ble Court also imposed a cost of INR 2,00,000/- for their dishonest conduct of filing fabricated invoices.

Concluding Remarks

This judgment reaffirms the principles of trademark protection highlighting that the mere presence of deceptive similarity is enough to warrant relief, even without proof of actual confusion, especially when coupled with dishonest conduct.

Additionally, by taking a firm stance against such dishonest practices, the court reinforces the importance of integrity and fairness in legal proceedings.

[1] COMMERCIAL IPR SUIT NO.178 OF 2021

[2] 2014 SCC OnLine Bom 4596

[3] A registered trade mark is not infringed where 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 services

[4] Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor

[5] (2002) 3 SCC 65

[6] 2023 SCC OnLine Bom 2734