Safiya Malik

The Bombay High Court, on January 2, 2025, issued an interim order restraining Shyam Dhani Industries Pvt. Ltd. from using the trademark “Tikha Lal,” which the plaintiff Everest Food Products Private Limited alleged to be deceptively similar to its registered trademark “Tikhalal.” The Court also imposed costs of Rs. 2,00,000 on the defendants for fabricating evidence, including false claims of prior use since 2006. The matter pertained to allegations of trademark infringement and passing off under the Trade Marks Act, 1999.

The plaintiff, Everest Food Products Private Limited, contended that the trademark “Tikhalal” was coined in 2000-2001 and registered in January 2002 for its chili powder products. The plaintiff submitted that the mark had been used continuously and extensively since its registration, accruing substantial goodwill and reputation. The plaintiff argued that the defendants’ adoption of “Shyam Tikha Lal” was aimed at causing confusion among consumers and misappropriating the plaintiff’s goodwill.

In 2019, the plaintiff discovered the defendants’ product bearing the name “Shyam Tikha Lal” and subsequently issued a cease-and-desist notice. Upon receiving no response, the plaintiff initiated the present suit seeking an injunction. Advocate Hiren Kamod, representing the plaintiff, submitted that the defendants had fabricated evidence, including invoices, to falsely claim prior use of the impugned mark. The plaintiff also pointed to inconsistencies in the affidavits filed by the defendants, asserting that these further demonstrated their dishonest intent.

The defendants, represented by Senior Advocate Harshit S. Tolia, argued that the term “Tikha Lal” was descriptive, referring to the spiciness and red color of chili powder, and could not be monopolized by the plaintiff. They cited Section 30(2)(a) of the Trade Marks Act, 1999, to contend that their use was descriptive and permissible. The defendants also challenged the Court's territorial jurisdiction and claimed continuous and bona fide use of the mark since 2006.

Justice R.I. Chagla, while adjudicating the matter, observed that the plaintiff had established a prima facie case of trademark infringement. The Court found that the rival marks, “Tikhalal” and “Tikha Lal,” were phonetically and visually similar, creating a likelihood of confusion among consumers. The Court held that the defendants’ use of the impugned mark constituted infringement under Section 29(2)(c) of the Trade Marks Act, 1999.

The Court further held that the defendants’ actions amounted to passing off, as their use of “Shyam Tikha Lal” was likely to mislead consumers and harm the goodwill associated with the plaintiff’s trademark. The Court noted that the plaintiff’s statutory and common law rights in the mark “Tikhalal,” coupled with its long-standing use, warranted judicial protection.

Justice Chagla rejected the defendants’ claim that “Tikha Lal” was descriptive, observing that the defendants were using the term as a trademark and not in a descriptive manner. The Court remarked, “The defendants have failed to plead any explanation for adopting the impugned trade mark. The use of the impugned trade mark would dilute the distinctiveness of the plaintiff’s trade mark and cause injury to the plaintiff’s goodwill and reputation.”

The Court granted an interim injunction restraining the defendants from using the mark “Tikha Lal” or any deceptively similar mark in connection with their products. Additionally, the Court imposed costs of Rs. 2,00,000 on the defendants, directing that the amount be paid within four weeks. The Court also rejected the defendants’ territorial jurisdiction argument, holding that it did not preclude the relief sought by the plaintiff.

Case Title: Everest Food Products Private Limited v. Shyam Dhani Industries Pvt. Ltd. & Ors.
Case Number: Interim Application No. 1628 of 2021 in Commercial IPR Suit No. 178 of 2021
Bench: Justice R.I. Chagla

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