Introduction:

In a significant order, the Bombay High Court granted a temporary injunction in favour of Everest Food Products Private Limited, a well-known spice brand, to prevent trademark infringement of its popular “Tikhalal” chilli powder product. The plaintiff, Everest Food, accused Shyam Dhani Industries Pvt. Ltd. and others of infringing its trademark by marketing and selling chilli powder under the brand name “Shyam Tikhalal.” The case revolved around trademark rights, fabricated evidence, and claims of deception in the market, leading to public confusion. Justice R.I. Chagla ruled in favour of Everest Food, highlighting the defendants’ dishonest conduct and granting interim relief to safeguard the plaintiff’s goodwill and reputation.

Arguments of Both Sides:

Everest Food, represented by Mr Hiren Kamod and his legal team, argued that it had secured the trademark “TIKHALAL” in 2002 and had since built substantial goodwill and market reputation for its chilli powder under the brand. It stated that the defendants’ product, “Shyam Tikhalal,” was deceptively similar to its trademark and could confuse consumers. The plaintiff highlighted the defendants’ dishonest conduct by submitting fabricated sales invoices to the court. These invoices, Everest argued, were designed to falsely claim prior use of the trademark “Tikhalal.” Furthermore, the plaintiff contended that the defendants’ claim of using “Tikhalal” as a descriptive term for their chilli powder lacked merit. They asserted that the visual representation of the defendants’ packaging indicated that “Shyam Tikhalal” was used as a trademark and not merely as a descriptor.

The defendants, represented by Senior Counsel Mr Harshit Tolia, countered that their use of the term “Tikhalal” was descriptive and referred to the characteristics of their chilli powder. They invoked Section 30(2)(a) of the Trademarks Act, arguing that no infringement could occur as the term was generic and merely described their product. They also claimed that discrepancies in the invoices resulted from a computer software error and were unintentional. The defence team further submitted that their trademark registration for “Shyam Tikhalal” was valid and should protect their use of the term. They attempted to justify their actions by stating that they were not using the mark to deceive or mislead consumers.

Court’s Judgement:

Justice R.I. Chagla examined the evidence and arguments presented by both sides. The court observed that Everest Food had established a prima facie case for the grant of a temporary injunction, noting that the plaintiff’s trademark “Tikhalal” had acquired substantial goodwill and reputation over the years. The judge emphasized that the defendants’ actions appeared dishonest, especially their submission of fabricated sales invoices. The court found glaring discrepancies in the invoices, which the defendants failed to explain adequately. This conduct, the court held, undermined their defence and supported the plaintiff’s claim of deliberate trademark infringement.

The court rejected the defendants’ argument that “Tikhalal” was a generic descriptor, noting that their trademark application for “Shyam Tikhalal” contradicted this claim. By applying for trademark registration, the defendants themselves acknowledged that “Shyam Tikhalal” was used as a brand name rather than a descriptive term. The court further noted that the defendants’ product packaging and marketing materials indicated an intention to use “Shyam Tikhalal” as a trademark, creating confusion among consumers and damaging Everest Food’s goodwill.

Justice Chagla also dismissed the defendants’ defence under Section 30(2)(a) of the Trademarks Act, as they could not prove that “Tikhalal” was used merely to describe their product. Instead, the court concluded that the use of “Shyam Tikhalal” was likely to cause confusion and deception among consumers, leading them to believe that the defendant’s product was associated with or endorsed by Everest Food. The judge also took note of the fraudulent nature of the defendant’s trademark registration and their misleading conduct, which he deemed shocking and unacceptable.

In light of these findings, the court granted a temporary injunction restraining the defendants from using the term “Tikhalal” or any deceptively similar mark on their products. The defendants were prohibited from manufacturing, packaging, selling, or advertising any product under the name “Tikhalal” until the final resolution of the main suit. Additionally, the court imposed a cost of ₹2,00,000 on the defendants for their dishonest conduct, payable to Everest Food within four weeks.