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May 12, 2020

Unique Combinations Of Descriptive Words Protected As Trademarks

Author: Sunidhi Bansal

In the matter of Sky Enterprise Private Ltd. vs. Abaad Masala and Co. [Interim Application No. 01 of 2019 in Commercial I.P. Suit (L) No. 1124 of 2019], the Bombay High Court, vide its order dated January 8, 2020, granted an interim injunction restraining the Defendant’s use of the marks “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”.

The Plaintiff is the registered proprietor and user of various marks including but not limited to “Black Chinese Pepper Curry Powder”, “Black Chinese Masala”, “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”, in Class 30, in respect of different masala powders.

The Defendant, who is also engaged in a similar business, had adopted identical marks such as “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”. The Defendant contended that the Plaintiff cannot enjoy exclusivity over these marks as they are generic and descriptive, and that it is using the said marks only as descriptions for its goods.

The Court rejected the Defendant’s arguments that the marks were generic and that they were used in a descriptive sense. The Court while granting the temporary injunction in favour of the Plaintiff held that “…each individual word forming part of its registered trademark may well be a descriptive word; it may not be possible to claim any proprietary right over it; but no rival trader can use the particular combination and order in which the Plaintiff uses these words in its registered trademark to distinguish its goods, if the particular combination or order is not generally used in the trade for describing the character or quality of goods. A rival trader, for example, in the present case, may describe his product as ‘pepper masala’; he may describe it as ‘Chinese masala’…he may even write on the label that the product is a black masala made of pepper and is for Chinese cookery. But he surely cannot describe his goods as ‘White Chinese Pepper Masala’ or ‘Black Chinese Pepper Masala’, using the very same combination and order of words, which form the registered trademarks of the Plaintiff.”

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