In this case between Mr. Sunit Shah and M/s Sunshine Food Products (jointly “Parties”), the District Court at Delhi dealt with a trademark and passing-off dispute involving the use of the term “HOT MIX.” The Plaintiff, Mr. Sunit Shah, proprietor of M/s Shah Namkeen, claimed that the Defendant, Sunshine Food Products, was infringing his trademark “SHAH HOT MIX.” Shah Namkeen had been using the SHAH trademarks, including “SHAH HOT MIX,” in relation to snacks and namkeen (Class 30) since 1977, and Mr. Shah stated that this mark had gained goodwill and distinctiveness over time.
Mr. Shah, through this suit, sought an order of perpetual injunction restraining infringement of trademark, label, artistic work, passing off, and delivery up against Sunshine Food. He also sought for rendition of accounts and damages amounting to Rs. 50,00,000/-
Plaintiff’s Contentions
It was Mr. Shah’s contentions that:
- Both the Parties sold Namkeen and related products (Class 30).
- Consumers for both their products were the same.
- Both their products were sold through the same channels.
- There was a trade connection between the Parties.
- The trademarks and packaging of both their products were similar.
- He, as the prior user of “SHAH HOT MIX,” did not give permission to Sunshine Food to use it or its similar elements.
Defendant’s Contentions
Whereas, Sunshine Food contended that:
- “HOT MIX” is a generic and descriptive term used in the food industry.
- It used its registered trademark “BC” (Bhikaram Chandmal) in conjunction with “HOT MIX” since 1984. The said trademark was registered in India as well as other countries.
- Multiple other manufacturers also use the term “HOT MIX.”
- No one can claim exclusive rights over “HOT MIX” as it describes product contents.
- The suit is not maintainable, as there was a delay in filing the suit and the plaint was not signed by an authorized signatory.
- Shah’s trademark application includes a disclaimer “No exclusive right over the descriptive matter appearing on the label” and that he has no rights over “HOT MIX” as it is descriptive.
Parties’ Trademarks
Court’s Observations
The Court noted that,
- Shah failed to prove that “HOT MIX” is exclusively associated with his trade name or has acquired any secondary meaning.
- Many other manufacturers use “HOT MIX,” and Mr. Shah hasn’t shown that consumers associate it specifically with his products or services.
- Shah cannot claim exclusive protection of “HOT MIX” as it’s not unique to his brand and is used by others.
- There was no evidence of Sunshine Food passing off its goods as that of Mr. Shah’s.
- The difference in trademarks (“SHAH HOT MIX” vs “BC HOT MIX”) and the presence of Sunshine Food’s own brand (“BC”) were considered significant enough to avoid confusion.
- Thus, Mr. Shah’s request for an injunction against Sunshine Food should be dismissed.
Conclusion
The Court examined the trade dress and packaging of both Parties and found significant differences between them, noting that there was no likelihood of confusion among consumers. The term “HOT MIX” was held to be descriptive of the nature of the product, which typically contains a spicy mixture, and thus, no one could claim exclusive rights over it.
Therefore, the Court ruled against the plaintiff, Mr. Shah holding that “HOT MIX” was a descriptive term that could not be exclusively owned. He could not restrain Sunshine Food from using “HOT MIX” as it was a generic term commonly used in the trade and there was no likelihood of confusion between the two products. Consequently, the suit was dismissed, and Mr. Shah was not awarded any damages or injunction.
Citation: Sunit Shah v. Sunshine Food Products, CS (Comm) No. 126/2022, Before Hon’ble D.J. Comm. Ct., East Delhi on 12th August, 2024, Available on https://indiankanoon.org/doc/154726624/
Authored by Kavya Sadashivan, IP Innovation, Consulting & Strategy Team, BananaIP Counsels.
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