Unique Combination Of Descriptive Words Is Protected As Trademark

The Bombay High Court vide its order dated January 08, 2020 in the case titled Sky Enterprise Private Ltd. (plaintiff) vs. Abaad Masala and Co. (defendant) restrained the defendant from using the same combination and order of words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’, both of which were the registered trademarks of the Plaintiff. The court observed that each individual word forming part of registered trademarks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ may be a descriptive word for masala powder but it was held that 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 as the particular combination or order is not generally used in the trade for describing the character or quality of goods. The competitors may be allowed to describe its product as ‘pepper masala’; ‘Chinese masala’, or ‘black masala’ and they may even write on the label that the product is a black masala made of pepper and is for Chinese cookery but they cannot be allowed to use the same combination as of the plaintiff.

The Plaintiff claimed to be engaged in the trade and business of processing, manufacturing and marketing of all types of masala powders, spices, condiments, seasonings and other allied and cognate goods and it also obtained trademark registrations for the mark ‘Star Zing’ as also various other trademarks, with or without the words ‘Star Zing’, including for “White Chinese Pepper Curry Powder”, “White Chinese Pepper Seasoning”, “Black Chinese Pepper Curry Powder”, “Black Chinese Masala”, “White Chinese Pepper Masala”, “Black Chinese Pepper Masala” and “White Chinese Masala”, in Class 30, all of which are used for marketing different masala powders. It claimed that its marks have acquired a distinctive goodwill and reputation and by extensive and sustained use, come to be exclusively associated with the Plaintiff’s goods.

It was the plaintiff’s case that the Defendant, who is also engaged in the same business, has adopted identical marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ and such adoption was only with a view to gain undue benefit out of the reputation and goodwill of the Plaintiff. In its defense, Defendant relied upon the generic and descriptive nature of the words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’, and submitted that no exclusive right can be claimed by the Plaintiff to these descriptive words. It relied on the Full Bench decision of the Court in the case of Lupin Ltd. Vs. Johnson and Johnson and submitted that the Plaintiff’s registration as trademarks can be said to be ex-facie illegal or fraudulent or shocking to the conscience of the Court. It was submitted that the words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’ are used by the Defendant in its trade dress for identifying or indicating the kind, quality, and intended purpose of the goods.

The court noted that the trademark registration for the marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ are valid and subsisting and the Plaintiff is prima facie 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 the Plaintiffs can be shown to be demonstrably or ex facie illegal or fraudulent or shocking to the conscience of the Court. The court noted that Individual words in the present case may be descriptive, but their peculiar combination may create a unique appearance or identity. Moreover, by virtue of a long history of use, the marks have come to acquire a distinctive reputation and association with the Plaintiff’s product alone and with no others.

The Defendant’s claim that it uses the words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ not as trademarks but as descriptions of its goods was not accepted by court as the words are used as distinct and separate in the packaging which looks more as trademarks than as description of the goods. Accordingly, the Defendant was restrained by an interim injunction from using the impugned trademarks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ or any other identical or deceptively similar trademark or words in their peculiar combination.

This judgment supports the legal principle that a trademark which is unique combination of descriptive words which has also acquired reputation through use is eligible for protection.


Unique combination of descriptive words is protected as trademark by Omesh Puri.

https://www.mondaq.com/india/Intellectual-Property/903110/Unique-Combination-Of-Descriptive-Words-Is-Protected-As-Trademark

Article was 1st published in Mondaq.

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