Does the combination of the words ‘SCHEZWAN’ and ‘CHUTNEY’ makes it arbitrary and justifies the claim for exclusive use?  This is the crux of the issue in the instant dispute before the Delhi High Court. The Plaintiff Capital Food Pvt. Ltd (Capital Food) has filed the suit against the Defendant, Radiant Indus Chem Pvt. Ltd, (Radiant) alleging trademark infringement, passing off, and to restrain the latter from using ‘SCHEZWAN CHUTNEY’ and ‘SZECHUAN CHUTNEY’. This note discusses the contentions raised by the parties and the order passed by the Court refusing to grant injunction against Radiant.

Capital Food in the suit states:

1. It is one of the leading food companies in India, engaged in manufacturing and marketing a wide variety of dips, spreads, condiments, ready-to-eat food products for more than 25 years and having presence in U.S.A., Canada, Australia, U.K., Singapore, etc.
2. In or around the year 2012, they introduced a dip and spread based product under the trade mark ‘SCHEZWAN CHUTNEY’. After studying consumer tastes and preferences they created a whole new cuisine in India-‘Desi Chinese’, which is a fusion of Indian and Chinese flavours.
3. The unique and arbitrary combination of the ‘SCHEZWAN’ and ‘CHUTNEY’ makes it a coined and invented trade mark which is exclusively assocaited with them. They have made extensive sales of the products named ‘SCHEZWAN CHUTNEY’ and also spent considerable amounts for promoting the brand and has acquired distinctiveness and secondary meaning in the trade.
4. The mark ‘SCHEZWAN CHUTNEY’ is registered in Class 30, including sauce, since the year 2012. Though rectification petitions have been filed against the said registration, the mark is still valid and subsisting. The application for the same mark in Class 29 was refused against which a review petition has been filed.
5. They also use a label represented in a unique and distinctive colour combination and scheme, placement and arrangement of all elements and owns the copyright in the said artistic work.
6. In September 2020, they came across the sale of the impugned product ‘Mrs. FOODRITE SCHEZWAN CHUTNEY’ being offered for sale by Radiant. Inquiries revelaed that Radiant was also dealing with ‘SZECHUAN CHUTNEY’ which is virtually identical to the registered trade mark ‘SCHEZWAN CHUTNEY’. Radiant’s adoption and use of the impugned marks is not in good faith and amounts to infringement and passing off.

Radiant counters the injunction application on the following.

• They are engaged in the business of manufacture and sale of food products such as jams, culinary sauces, Chinese sauces, pickles, etc. and the products are sold under the marks ‘Mrs. FOODRITE’, ‘MEAL TIME’ and ‘Mrs. RITE SPICE’.
• They launched Schezwan Chutney products under its mark ‘Mrs. FOODRITE’ in the year 2016 and has been using the same continuously and uninterruptedly since then. They have invested huge amount in marketing and promoting its Schezwan Chutney branded products. On account of long, continuous, and extensive use, they have acquired goodwill and reputation amongst the members of the trade and public.
• Capital Food cannot claim any exclusive right to the mark ‘SCHEZWAN CHUTNEY’ as it is devoid of any distinctive character and is descriptive of the kind, quality, character, and geographical origin of the goods sold. The grant of registration for the mark ‘SCHEZWAN CHUTNEY’ is invalid, improper, and contrary to the law.
• The rival products are distinguished by their respective trademarks ‘CHING’S SECRET’ and ‘Mrs. FOODRITE,’. Moreover, there are several third parties selling products under the mark ‘SCHEZWAN CHUTNEY’

After considering the pleadings, arguments and case laws the court held as follows:

• The primary question in the instant matter is is whether the mark ‘SCHEZWAN CHUTNEY’ is descriptive of the product in question. From the pleadings it is evident that the mark ‘SCHEZWAN CHUTNEY’, depicts a ‘Chutney’ (sauce) which has a ‘SCHEZWAN’ flavour.
• Documents on record evidence that various other manufacturers also use ‘SCHEZWAN CHUTNEY’ or ‘SZECHUAN CHUTNEY’ as a product descriptor rather than as a trade mark. The extensive use of the mark ‘SCHEZWAN CHUTNEY’ or ‘SZECHUAN CHUTNEY’ by third party manufacturers indicates that the industry recognizes the said mark as a description of the product.
• As rightly contended by Radiant, if protection is granted to such a mark then there is no reason why such protection be also not granted to ‘Tamarind Chutney’ or ‘Tomato Chutney’, as they are also combinations of words in English and Hindi. The competitors are likely to use these two words to describe their product.
• The contention that ‘SCHEZWAN CHUTNEY’ on account of extensive use by Capital Food has acquired secondary significance ought not to succeed at this time.
• References to sales and promotional expenses may be relied on to establish reputation and goodwill, however, to claim exclusivity based on secondary meaning acquisition must be established by cogent material. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one is conclusions to be drawn from evidence.
• Materials on record evince that though ‘SCHEZWAN CHUTNEY’, is used prominently by Capital Food the mark which identifies its source is, in fact, ‘Ching’s Secret’. With regard to statutory protection sought by Capital Food for the mark ‘SCHEZWAN CHUTNEY’ it has to be considered that such registration is in challenge by not only Radiant but also third parties. Thus, once the Court prima facie finds that the mark is descriptive of the quality and intended purpose of the goods Radiant would be entitled to use the same to describe its product.
• In the instant case it cannot be held that Radiant’s adoption of the mark ‘SCHEZWAN CHUTNEY’ is dishonest, disentitling it from the protection against an infringement claim.

In light of the above the Court refused to grant injunction restraining Radiant from using the mark ‘SCHEZWAN CHUTNEY’ or ‘SZECHUAN CHUTNEY’