The Bombay High Court has restrained one company namely Shyam Dhani Industries Pvt. Ltd. from using the trademark of famous Masala and Spice brand Everest’s ‘Tikhalal’ Trademark. It also imposed a cost of Rs. 2 lakhs on the said company for filing a false case of user since 2006.

The Court was deciding an Interim Application filed by Everest Food Products Private Limited, seeking injunction against the aforesaid company for infringement of its registered trademarks and for passing off.

A Single Bench of Justice R.I. Chagla observed, “The Defendants have failed to plead any explanation for adopting the impugned trade mark. Further, the Defendants use of the impugned trade mark is likely to cause confusion and / or deception against the members of the general public and trade. The Defendants’ use of impugned trade mark would dilute the distinctiveness of the Plaintiff’s trade mark and would lead to injury to the Plaintiff’s goodwill and reputation. Unless the reliefs prayed for which are granted, the Plaintiff will suffer irreparable injury which cannot be compensated in terms of money.”

The Bench said that the balance of convenience is in favour of Everest as it is a registered Proprietor of its trade mark since 2002 and has been openly, continuously, and extensively using the trade mark “TIKHALAL” in respect of Chilly Powder since that year. It added that Everest has valuable statutory and common law rights in the trade mark and goods bearing the same.

Advocate Hiren Kamod appeared for the Applicant/Plaintiff while Senior Advocate Harshit S. Tolia appeared for the Defendants.

Factual Background -

The Plaintiff was earlier operating as a Partnership firm in the name and style of M/s. S. Narendrakumar & Co. registered under the Indian Partnerships Act, 1932. In 2020, the said firm was converted and incorporated into the Plaintiff. In or around the year 1961, M/s. Vadilal Champaklal & Co. (Plaintiff’s predecessor in interest) commenced and carried on the business of manufacture and sale of mirchi, masalas, spices and dry fruits under the trade mark “EVEREST”. In the year 1989, the Plaintiff’s predecessor in interest granted a license to M/s. S. Narendrakumar & Co. (now converted into the Plaintiff) to use the mark “EVEREST” by way of a Deed of License. Thereafter by Deed of Assignment, the Plaintiff’s predecessor in interest assigned the trade mark ‘EVEREST’ and the goodwill attached thereto in favour of the M/s. S. Narendrakumar & Co. As such, the Plaintiff was the proprietor of the trade mark “EVEREST” and was exclusively entitled to the same.

In or around 2000-2001, the partner of the said partnership firm and currently the Director of the Plaintiff coined the unique word mark “TIKHALAL” to be used and applied to chilli powders manufactured / sold under the Plaintiff’s brand “EVEREST”. The Plaintiff secured trade mark registrations for ‘TIKHALAL’ and since 2002, it was continuously using the same and acquired significant goodwill and reputation. In 2019, the Plaintiff came across a packet of the Defendants’ “SHYAM TIKHA LAL” Chilli Powder. On conducting enquiries, it was revealed that they had secured the trademark registration. Despite receiving notice from the Plaintiff, the Defendants did not respond to the same and hence, the Plaintiff filed a Suit and Interim Application before the High Court.

The High Court in the above regard, remarked, “The Defendants have themselves understood that the impugned trade mark “SHYAM TIKHALAL” is being used by them as a trade mark. The impugned trade mark “TIKHA LAL” forms a leading essential and prominent feature of the Defendants’ trade mark registration bearing No. 2960690 in Class 30 for the device mark. The Defendants by the act of applying for registration of the said device mark cannot contend to the contrary i.e. the impugned trade mark “TIKHALAL” is used to describe the characteristic of the goods. The decision of this Court in Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd. (supra) is apposite.”

The Court further noted that the use of the Defendants’ mark “TIKHA LAL” which is identical with the Plaintiff’s registered trade mark TIKHALAL in respect of Chilly Powder which is covered by the Plaintiff’s trade mark registrations is likely to cause confusion on the part of the public, and/or association with the Plaintiff’s registered trademark, thereby leading to infringement of the Plaintiff’s registered trademarks under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999.

“In my prima facie view, the Plaintiff has established that it has acquired immense goodwill and reputation in its trade mark “TIKHALAL” and the goods bearing the same. This is evident from the fact that the Plaintiff has registered its trade mark “TIKHALAL” on 24th January, 2002. Since January 2002, the Plaintiff has been openly, continuously and extensively using the trade mark “TIKHALAL” in respect of its goods and has acquired tremendous goodwill and reputation in the goods bearing the same”, it added.

The Court observed that, there is likelihood of injury to the goodwill and reputation that has been painstakingly acquired by the Plaintiff in its said trade mark “TIKHALAL” and the goods bearing the same.

“It is settled law that the Defendants’ trade mark registration will not come in the way of the Court granting relief of injunction in terms of passing off against the Defendants. … I do not find any merit in contention on behalf of the Defendants with regard to this Court having no territorial jurisdiction in view of Section 28(3) of the Act being applicable”, it also said.

The Court was of the view that this case is one of such case where the Court is required to go behind the validity of the Defendants’ trade mark registration at the interim stage.

“Thus, I find that the Plaintiff has been able to make out an overwhelming prima facie case for grant of injunction against the Defendants. … The Defendants shall pay costs to the Plaintiff in the sum of Rs.2,00,000/- (Rupees Two Lakh only) for filing a false case of user since 2006 as borne out by the fabricated Sales Invoice and discrepancies in the Affidavits filed by the Defendants. This shall be paid within a period of four weeks from the date of uploading of this Judgment and Order”, it concluded and directed.

Accordingly, the High Court disposed of the Interim Application and granted interim relief to the Plaintiff by restraining the Defendants from using its trademark.

Cause Title- Everest Food Products Private Limited v. Shyam Dhani Industries Pvt. Ltd. & Ors. (Neutral Citation: 2025:BHC-OS:17)

Appearance:

Plaintiff: Advocates Hiren Kamod, Kavita Srivastav, Manorama Mohanty, and Mittal B. Nor.

Defendants: Senior Advocate Harshit S. Tolia, Advocates Rushvi N. Shah, Amit Mehta, Hitesh Mishra, Zahid K. Shaikh, Javvad Z. Shaikh, Riya D. Dani, Amit Mehta, and Ramawtar Agarwal.

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