202004.09
16

Chinese Spice Mix or Masala battle reaches Bombay High Court

The parties in the suit are at odds over brand names of spice mixture popularly known as ‘masala’ sold under the name ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’. Sky Enterprise (Sky), Plaintiff filed a suit before the Bombay High Court restraining Abaad Masala (AM), Defendant  from using the marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’. The primary issue in the case was whether exclusive rights can be claimed by Sky in the combination of descriptive words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’. Both parties are in the trade of manufacturing and marketing all types of masala powders, spices, condiments, seasonings and other allied and cognate goods. Sky claims to be the registered proprietor of the marks ‘Star Zing White Chinese Pepper Masala’ and ‘Star Zing Black Chinese Pepper Masala’ (both as logo and word mark) since 2012. Sky also claims to have obtained registrations for the marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ (without the word ‘Star Zing’) since the year 2016-2017.

Sky’s contentions:

  1. Their registrations for the trademarks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ have acquired a distinctive goodwill and reputation and by virtue of their extensive use come to be exclusively associated with Sky’s goods. Further, Sky is also the prior registered proprietor of the said marks in India.
  2. AM’s adoption of identical marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ is dishonest and only with a view to gain undue benefit from Sky’s reputation and goodwill.
  3. In March 2016, Sky first noticed AM’s use of identical/deceptively similar trademarks ‘Star King White Chinese Pepper Masala’ and ‘Star King Black Chinese Pepper Masala’ and immediately served notice upon AM to stop such misuse.
  4. On receipt of notice AM stopped use of term ‘Star King’ from its trademarks, however, continued to use the marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’. Inquiries between the parties also revealed that the AM had registered the marks ‘AMC Frize White Chinese Pepper Masala’ and ‘AMC Frize Black Chinese Masala’. Sky had initiated rectification proceedings against AM’s registrations which are pending before the Trademarks Registry.

AM’s contentions:

  1. They are not using the words ‘Black Chinese Pepper Masala’ or ‘White Chinese Pepper Masala’, as trademarks, but as description of its goods.
  2. Having regard to the descriptive nature of these words, their registration by Sky as trademarks can be said to be ex-facie illegal or fraudulent or shocking to the conscience of the Court.
  3. AM submitted that the words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’ are used by them in its trade dress for identifying or indicating the kind, quality and intended purpose of the goods.
  4. The term ‘Black Chinese Pepper Masala’ or ‘White Chinese Pepper Masala’ are also used by these other manufacturers or traders in connection with their goods.

Court observation and decision:

The court after hearing the parties’ arguments held as follows:

  1. The court noted that the trademark registration for the marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ are valid and subsisting and Sky is 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 Sky can be shown to be ex facie illegal or fraudulent or shocking to the conscience of the Court. 
  2. Each words forming part of the Sky’s registered trademarks may be descriptive but the particular combination and order in which the words appear in the Sky trademarks coupled with the reputation and goodwill built up over years, lend a distinctive identity to the trademark as a whole, acquired a secondary meaning and indicate the source of the goods. The particular combination is not public juris.
  3. AM may describe his product as ‘pepper masala’ or ‘Chinese masala’ or ‘black masala’, or may even write on the label that the product is a black masala made of pepper and is for Chinese cookery. However, AM cannot describe its goods using the same combination and order of words which form the registered trademarks of Sky.
  4. AM’s claims that it uses the words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ not as trademarks but as descriptions of its goods was rejected by court.

The court thus restrained AM from using ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ and/or any other identical or deceptively similar trademark or words in their peculiar combination. AM was also restrained from passing off its goods under the said marks as that of the Sky’s.