Delhi High Court: In a case, wherein an application was filed for the grant of an ad interim injunction restraining Radiant Indus Chem (P) Ltd. from manufacturing, selling, offering for sale, marketing, retailing, supplying, distributing, exhibiting, advertising, promoting, displaying, dealing in and / or using, in any manner whatsoever, the products bearing the marks “SCHEZWAN CHUTNEY” and “SZECHUAN CHUTNEY”, a Single Judge Bench of Navin Chawla, J. rejected Capital Foods (P) Ltd.'s plea and held that “SCHEZWAN CHUTNEY” was a mere descriptive term and not something unique and coined by Capital Food (P) Ltd. Itself.
Background
The plaintiff was one of the leading food companies in India, engaged in manufacturing and marketing a wide variety of dips, spreads, condiments, sauces, noodles, soups, pastes, dressings, ready-to-eat food products and other food preparations, and was the first to coin and independently invent a distinctive trade mark “SCHEZWAN CHUTNEY” in relation to dips and spreads. The defendant was engaged in the business of manufacture and sale of food products such as jams, culinary sauces, Chinese sauces, mayonnaise, pickles, etc. The defendant submitted that the defendants’ products were sold under the mark “MRS. FOODRITE”, “MEAL TIME” and “MRS. RITE SPICE” and the defendants had obtained trade mark registrations for the same in various classes.
In 2020, the plaintiff came across the sale of the impugned product “MRS. FOODRITE SCHEZWAN CHUTNEY” being sold and offered for sale by the defendant on the e-commerce website www.amazon.in. Further, the plaintiff submitted that the defendant's product had a mark identical to the plaintiff's mark “SCHEZWAN CHUTNEY” and it demonstrated that the defendant had made every effort to copy/imitate the plaintiff's trade mark.
Submissions on behalf of the Plaintiff
The plaintiff submitted that the plaintiff's product and defendant's product comprised of the following similarities:
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The defendant had adopted the plaintiff's coined and registered trade mark “SCHEZWAN CHUTNEY”.
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The defendant's impugned product, bearing “SCHEZWAN CHUTNEY”, was packaged/labelled in a trade dress/label which was deceptively and confusingly similar to the plaintiff's “SCHEZWAN CHUTNEY”.
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The overall get-up of the impugned product, such as the packaging style, colour combination and scheme of the white, orange, and red, placement of “SCHEZWAN CHUTNEY” on the impugned label, “SCHEZWAN CHUTNEY “represented in two lines in white lettering on the colour combination of orange and red, and placement and arrangement of all essential and descriptive elements, had been copied by the defendant.
The plaintiff also came across the defendant’s page/listing on www.facebook.com and another product “SZECHUAN CHUTNEY” which was also identical to the plaintiff’s registered trade mark “SCHEZWAN CHUTNEY”. The plaintiff submitted that the defendant did not make the effort to produce its own marketing and advertising content and had instead slavishly copied the plaintiff’s advertising material which was the copyrighted content of the plaintiff. Therefore, the adoption of the mark “SCHEZWAN CHUTNEY” or “SZECHUAN CHUTNEY” amounted to infringement of the plaintiff’s registered trade mark. The plaintiff further asserted that the defendant was guilty of passing off the goods as the plaintiffs.
Submissions on behalf of the Defendant
The defendant asserted that it launched its Schezwan Chutney products under its mark “MRS. FOODRITE” in the year 2016 and had been using the same continuously and uninterruptedly ever since. The defendants further asserted that the plaintiff could not claim any exclusive right to the mark “SCHEZWAN CHUTNEY” as it was devoid of any distinctive character and was descriptive of the kind, quality, character, and geographical origin of the goods sold. The defendant pleaded that the plaintiff had wrongly been granted registration in the said mark.
Further, the defendant submitted that the competing goods were distinguished by their respective trade marks which were “CHING'S SECRET” of the plaintiff and “MRS. FOODRITE” of the defendant. The defendant asserted that there were third parties who were also selling their products under the mark “SCHEZWAN CHUTNEY”.
Analysis, Law, and Decision
The issue for consideration before this Court was “whether the mark “SCHEZWAN CHUTNEY’ was descriptive of the product in question?”.
The Court opined that ““SCHEZWAN CHUTNEY” depicted “CHUTNEY” (sauce) which had a “SCHEZWAN” flavour and if protection was to be granted to such a mark, then similar protection should also be granted to ‘Tamarind Chutney' or ‘Tomato Chutney' as they were also combinations of words in English and Hindi. The words “SCHEZWAN CHUTNEY” also satisfied the second test suggested by ‘McCarthy on Trade Marks', which was “The Competitors Need Test” which meant that the competitors were likely to use these two words to describe their product”.
The Court noted that from the plaintiff's advertisements, it appeared that the words “SCHEZWAN CHUTNEY”, though used prominently, were used by the plaintiff to describe the product, and the mark which identified its source was, in fact, “Ching's Secret” and even though the plaintiff submitted that the mere use of the house mark by the parties, in the present case “Ching's” for the plaintiff and “MRS. FOODRITE” for the defendant, was not sufficient to defeat the plaintiff's claim of infringement or passing off, still, the Court opined that it was use of these house marks that distinguish the source of the goods, while the words “SCHEZUAN CHUTNEY” identified the nature of the product.
The Court held that the adoption of the mark “SCHEZWAN CHUTNEY” by the defendant could not said to be dishonest and therefore, the claim of the plaintiff for grant of an ad interim injunction against the defendant from using the mark “SCHEZWAN CHUTNEY” or “SZECHUAN CHUTNEY” was rejected. However, the Court held that the ad interim order passed in Capital Food (P) Ltd. v. Radiant Indus Chem (P) Ltd., CS (COMM) 379 of 2020 was made absolute and would operate during the pendency of the suit.
The matter would next be listed on 13-3-2023.
[Capital Foods (P) Ltd. v. Radiant Indus Chem (P) Ltd., 2023 SCC OnLine Del 118, decided on 11-1-2023]
Advocates who appeared in this case :
For the Plaintiff: Senior Advocate Rajiv Nayar
Advocate Nancy Roy
Advocate Aastha Kakkar
Advocate Prakriti Varshney
Advocate Manjira
For the Defendant: Advocate Hemant Singh
Advocate Abhijeet Rastogi
Advocate Antara Pachauri
*Simranjeet Kaur, Editorial Assistant has reported this brief
