Bombay High Court Pulls Up Masala Maker For Only Paying 'Lip Service' To Trademark Injunction

The Bombay High Court has ruled that cosmetic changes to a trademark cannot be used to sidestep an injunction.

Observing that merely paying "lip service" to a court order would undermine its purpose, Justice Somasekhar Sundaresan ruled that Abaad Masala & Co.'s revised branding failed to maintain the required "safe distance" from Sky Enterprise Private Limited's registered marks.

The court observed, "Interim orders can be rendered ineffective if there is lip service to the prohibitions directed, undermining the objective of preservation of the subject matter of the Suit, and rendering them meaningless."

The dispute arose between two branches of the same family. Both are engaged in the masala business.

In January 2020, the high court restrained Abaad Masala & Co. from using the marks "White Chinese Pepper Masala" and "Black Chinese Pepper Masala". It also barred the company from using any identical or deceptively similar combination of those words. The injunction was granted after the court found that the particular combination and order of those words had acquired a distinctive reputation associated with Sky Enterprise Private Limited's "Star Zing" brand.

After the injunction, Abaad replaced the prefix "Star King" with "Frize". It also substituted the word "Chinese" with "Spicy". The products were thereafter sold as "Frize White Spicy Pepper Masala" and "Frize Black Spicy Pepper Masala". Sky Enterprise later approached the court alleging that the revised branding amounted to wilful disobedience of the 2020 order.

While examining the revised branding, the court held that "Chinese" and "Spicy" were phonetically similar when viewed as part of the longer registered marks. Justice Sundaresan referred to the "transposed letter effect".

He explained that the human mind often reads words it expects to see, particularly when the opening words ("White" or "Black") and the ending words ("Pepper Masala") remain unchanged.

The court found that a person of average intelligence with imperfect recollection would not regard the revised marks as distinctly different. Instead, they retained a "striking visual similarity".

According to the court, the revised branding came "as close as possible" to what the 2020 injunction had prohibited. Justice Sundaresan observed that the attempt appeared to test the limits of compliance with the interim order.

Justice Sundaresan also held that the changes were merely "de minimis" fixes. "The changes effected by Abaad are de minimis fixes that do not make any material change to the subject matter of protection in the Interim Order," the court observed.

Although the original plaint did not invoke trade dress, the court observed that it could not ignore the packaging. It noted that substantial features, including colour schemes, font styles, and other packaging elements, appeared to have been retained. In the court's view, those features compensated for the minimal textual changes. Using such trade dress was an indirect way of achieving what the injunction prohibited directly.

The court also rejected Abaad's argument that it operated only in the wholesale market. Justice Sundaresan noted that the products were sold in half-kilogram packs, which are retail-sized packages. The court held that the distinction was "without a difference" and did not inspire confidence.

Another factor that weighed with the court was Abaad's registration of the "Frize White Spicy Pepper Masala" and "Frize Black Spicy Pepper Masala" marks in January 2025. The court noted that the registrations had been obtained after the 2020 injunction. It also noted that the existence of the earlier order had not been disclosed to the registrar.

The registrations, the court held, did not assist Abaad in defending the application.

Justice Sundaresan clarified that the proceedings were being considered under Order XXXIX Rule 2A of the Code of Civil Procedure. They were not being treated as contempt proceedings. The provision, the court explained, is intended to secure compliance with interim orders rather than punish parties for disobedience.

Taking note of the fact that the dispute involved members of the same family, the court chose not to order civil imprisonment or attachment of property. Instead, it exercised its inherent powers to issue remedial directions aimed at securing compliance with the injunction.

The court then restrained Abaad from using the "Frize White Spicy Pepper Masala" and "Frize Black Spicy Pepper Masala" marks.

It, however, permitted the company to sell the unsold inventory under new marks.