Mumbai: The Bombay High Court has issued a temporary injunction in favour of Everest Food Products Private Limited, restraining Shyam Dhani Industries Pvt. Ltd. from using the trademark “TIKHA LAL” for their chili powder products. Everest, a prominent spice manufacturer, registered the “TIKHALAL” trademark in 2002 and has since built substantial goodwill and reputation under this brand.
In 2019, Everest discovered that Shyam Dhani Industries was marketing chili powder under the “SHYAM TIKHA LAL” label. Upon investigation, Everest found that the defendant had secured a trademark for this label.
Everest filed a Rectification Application with the Registrar of Trade Marks to cancel the defendant’s registration; which is still pending. Additionally, Everest issued a cease and desist notice to the defendant, which went unanswered, prompting Everest to initiate a lawsuit alleging trademark infringement and passing off.
During the interim application, Everest accused the defendant of attempting to mislead the court by submitting fabricated sales invoices to falsely demonstrate prior use of the “TIKHA LAL” trademark.
Justice Riyaz Chagla observed, “The Defendants’ conduct in the present case has been nothing but dishonest… [they] have deliberately fabricated Sales Invoices… to falsely show their use of the impugned trademark ‘TIKHA LAL’ to mislead this Court.”
The defendant contended that “Tikhalal” described a characteristic of chili powder and was not used as a trademark, arguing that such descriptive use is permissible under Section 30(2)(a) of the Trademark Act. However, the court noted that the defendant’s application for the “SHYAM TIKHALAL” trademark contradicted this claim, indicating an intent to use the term as a brand identifier rather than a mere descriptor.
The court concluded that the defendant’s use of “TIKHA LAL” was likely to cause confusion among consumers and harm the goodwill associated with Everest’s “TIKHALAL” trademark. Consequently, the court granted a temporary injunction, restraining Shyam Dhani Industries from using “TIKHA LAL” or any similar mark pending the final resolution of the lawsuit.“
Plaintiff has been able to make out an overwhelming prima facie case for grant of injunction against the Defendants. The Plaintiff has valuable statutory and common law rights in the trade mark and goods bearing the same,” Justice Chagla said.
Additionally, the court imposed a fine of Rs2 lakh on the defendant for submitting fabricated evidence, payable to Everest within four weeks.
