Mr. Sunit Shah Proprietor Of M/S. Shah Namkeen vs M/S. Jabsons Foods Pvt. Ltd.
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
BEFORE
HON’BLE MR. JUSTICE PURUSHAINDRA KUMAR KAURAV
# CNR No. DLHC010463472024
+ CS(COMM) 641/2024, I.A. 35178/2024 & I.A. 1561/2025
MR. SUNIT SHAH
PROPRIETOR OF M/S. SHAH NAMKEEN
83, INDRA PARK,
NEAR CHANDER NAGAR,
DELHI-110051 .....Plaintiff
( Through: Mr. Umesh Mishra with Mr. Mr. Divyanshu Rai,
Advocates. )
versus
M/S. JABSONS FOODS PVT. LTD.
PLOT NO. A-2, A’2, A’1, A’1, D-3,
D-4 & D-5, BHOLAV UDYOG,
(GUJARAT) .....Defendant
( Through: Mr. Sandeep Ranjan with Ms. Bhuvi Mishra & Mr.
Navin Kumar, Advocates.)
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% Reserved on: 14.10.2026
Pronounced on: 28.10.2026
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JUDGMENT
INDEX
I. FACTS OF THE CASE .......................................................................... 2
II. SUBMISSIONS ON BEHALF OF THE PLAINTIFF ......................... 6
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 1 of 34
III. SUBMISSIONS ON BEHALF OF THE DEFENDANT .................... 8
IV. ANALYSIS ........................................................................................ 11
a. The objection of suppression ............................................................ 11
b. The rights of the plaintiff .................................................................. 12
c. The condition of disclaimer .............................................................. 14
d. Whether HOT MIX is a coined expression or a descriptive one? .... 16
e. The plea of use of HOT MIX by third parties ................................... 23
f. Comparison of the rival marks and infringement ............................. 25
g. Passing off and the adoption of the impugned mark ........................ 31
h. Balance of convenience and irreparable injury ............................... 33
V. CONCLUSION ................................................................................... 33
I.A. 35178/2024 (under Order XXXIX Rules 1 and 2 of CPC) & I.A.
1561/2025 (under Order XXXIX Rule 4 of CPC)
I. FACTS OF THE CASE
By way of I.A. 35178/2024, filed under Order XXXIX Rules 1 and
2 of the Code of Civil Procedure, 1908 (“CPC”), plaintiff seeks an
interim injunction restraining the defendant from using the mark HOT
MIX (“impugned mark”), which, according to plaintiff, is identical
with the essential feature of, and deceptively similar to, its registered
trade mark SHAH HOT MIX (LABEL). By way of I.A. 1561/2025,
filed under Order XXXIX Rule 4 of CPC, the defendant seeks vacation
of the ex parte ad interim injunction granted in favour of the plaintiff
vide order dated 02.08.2024. Since both the applications arise out of
the same set of facts, hence are being decided by this common
judgment.
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Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 2 of 34
2. The case set up in the plaint, in brief, is that the plaintiff is the sole
proprietor of M/s Shah Namkeen, and is engaged in the business of
manufacturing and marketing namkeen, puffs, biscuits, cakes, spices,
bread and confectionery goods falling in Class 30. Plaintiff claims to
have commenced the said business in Delhi in the year 1977, and to
have adopted, in that very year, the trade marks/labels SHAH, SHAH
NAMKEEN and SHAH HOT MIX (LABEL), along with the artistic
work associated therewith.
3. On 01.07.1982, the plaintiff and his brother constituted a
partnership firm under the name M/s Shah Namkeen, which was
reduced into writing on 11.03.1983. The partners applied for
registration of the trade mark SHAH in Class 30 on 02.02.1984
(application No. 417009), claiming user since 01.04.1977, and the
same was registered vide Certificate No. 164666 dated 31.08.1989. On
08.06.1995, the partnership was dissolved, and the plaintiff continued
the business as its sole proprietor.
4. The plaintiff is also the registered proprietor of the label mark
SHAH HOT MIX (LABEL), registered under No. 2309592 in Class
30, in respect of namkeen and other goods, on an application filed on
03.04.2012, claiming user since 01.04.1977. The registration certificate
bears No. 1926472 dated 20.07.2018, and the registration is valid till
03.04.2032. The registration is subject to the condition that the plaintiff
shall have “no exclusive right over the descriptive matter appearing on
label”. The registered label is reproduced as under:
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 3 of 34
5. The plaintiff has also applied for registration of the word mark
HOT MIX (application No. 5363709) and of device marks comprising
HOT MIX (application Nos. 5363710, 5363711 and 5363712) in Class
30 on 09.03.2022, claiming user since 01.04.1995. The said
applications have been advertised in the Trade Marks Journal No. 2078
dated 14.11.2022 and, as per the record, are under opposition. The
plaintiff also holds copyright registration No. A-63634/2003 dated
24.02.2003 in respect of the artistic work SHAH HOT MIX.
6. It is the case of the plaintiff that, on account of the quality of its
goods and their long and continuous sale, the mark SHAH HOT
MIX/HOT MIX has been exclusively associated with the plaintiff. As
per the certificate of the Chartered Accountant and the statement of
gross turnover placed on record, the annual sales of plaintiff have
grown from ₹1.39 crores in the financial year 2009-10 to ₹9.22 crores
in the financial year 2021-22, and stood at ₹8.20 crores in the financial
year 2023-24 (pp. 38 and 40 of the plaintiff’s documents). The plaintiff
claims to have promoted its goods through newspapers, magazines,
sponsorships, display boards and online platforms.
7. The plaintiff also asserts that it has been vigilant in protecting its
rights, and has instituted proceedings against several third parties who
had adopted marks comprising HOT MIX or packaging similar to its
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 4 of 34
own, namely, CS(COMM) 124/2022 against M/s Trilok Foods Pvt.
Ltd., CS(COMM) 345/2022 against Mr. Sanjeev Rajpal, CS(COMM)
392/2022 against v M/s SSG Pharma Pvt. Ltd. and CS(COMM)
439/2023 against Mr. Ashwani Garg before this Court, as also CS
(COMM) Nos. 89/2022, 90/2022 and 126/2022 against M/s Sheetla
Trading Company, Mr. Pawan Kandoi and M/s Sunshine Food
Products, respectively, before the learned District Judge (Commercial
Court), East District, Karkardooma Courts, Delhi.
8. According to the plaintiff, in the last week of June, 2024, its
salesperson, during a routine market survey in Delhi, came across
namkeen packets bearing the mark HOT MIX along with the house
mark JABSONS, and on enquiry, it was learnt that the same were
being manufactured and sold by the defendant. The present suit came
to be instituted thereafter, and vide order dated 02.08.2024, this Court
granted an ex parte ad interim injunction in favour of the plaintiff in
the following terms:
“37. Accordingly, till the next date of hearing, the defendant, its
proprietor, partners, agents, assigns, representatives, heirs,
servants, dealers, distributors, franchisees and/or anyone acting
for and on its behalf, are restrained from using the
trademark/label HOT MIX or any other mark/label, which is
identical or deceptively/confusingly similar to the plaintiff‟s
trademark/label „SHAH HOT MIX‟ for the goods i.e. Namkeen
etc. included in Class 30, or other similar goods, in any manner
whatsoever, so as to result in infringement/passing off, of the
registered trademark/label/ artistic work, of the plaintiff.”
9. The defendant has filed its written statement and a reply to the
plaintiff’s application, besides I.A. 1561/2025 seeking vacation of the
said order. The plaintiff has filed its replication and rejoinder. The
issues in the suit have since been framed on 30.03.2026. The parties
Signature Not Verified
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 5 of 34
have also filed their written submissions pursuant to the order dated
14.11.2025.
II. SUBMISSIONS ON BEHALF OF THE PLAINTIFF
10. Mr. Satish Kumar, learned counsel appearing on behalf of the
plaintiff, submits that the plaintiff is the original conceiver, the prior
adopter and a continuous user of the mark SHAH HOT MIX/HOT
MIX, and is also the registered proprietor of SHAH HOT MIX
(LABEL), besides holding copyright in the artistic work SHAH HOT
MIX. It is submitted that HOT MIX constitutes the prominent,
dominant and essential feature of the plaintiff’s label, as it is written in
large and bold letters which far exceed the word SHAH in size, and
that the essential features of a mark are to be ascertained by the ocular
test.
11. It is contended that though the words HOT and MIX, when seen
separately, may carry their dictionary meanings, the combination HOT
MIX, as used by the plaintiff, has no dictionary meaning and is a
product of the plaintiff’s own intellect. It is, therefore, a coined
expression which deserves the highest degree of protection. It is
pointed out that, as per the Trade Marks search report (pp. 354 to 360
of the plaintiff’s documents), no person other than the plaintiff holds a
subsisting registration or a pending application for HOT MIX in Class
30. It is further submitted that, in any event, by virtue of its long,
continuous and extensive use, the mark has acquired distinctiveness
and a secondary meaning, and is associated by the consumers with the
plaintiff alone.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 6 of 34
12. As regards the condition of disclaimer, it is submitted that the
registration nowhere specifies that HOT MIX constitutes the
descriptive matter appearing on the label. It is further submitted that a
disclaimer does not travel to the market place, and that, for the purpose
of comparison, the marks are to be considered as a whole, including
the disclaimed matter, if any.
13. Learned counsel contends that the defendant has adopted the
identical expression HOT MIX for identical goods, and in an identical
manner, i.e., in large and bold letters placed at the centre of the pack,
with the house mark placed above it in a smaller size. The mere
prefixing of the house mark JABSONS does not alter the overall
impression, since the defendant has copied the key, dominant and
essential part of the plaintiff’s mark. The goods, the consumers and the
trade channels being identical, the likelihood of confusion is more, and
the case falls within Sections 29(2) and 29(6) of the Trade Marks Act,
1999 (“Act”). Reliance is also placed on Section 34 of the Act.
14. It is further submitted that the defendant has offered no
explanation for the adoption of the impugned mark, nor has it placed
on record any material to show its use prior to that of the plaintiff. It is
thus contended that the adoption is dishonest and is calculated to ride
upon the goodwill of the plaintiff, and that an injunction must,
therefore, follow. As regards I.A. 1561/2025, it is submitted that the
defendant has not been able to point out any material fact which was
suppressed by the plaintiff.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 7 of 34
15. Reliance is placed on S. Syed Mohideen v. P. Sulochana
1
Bai , South India Beverages (P) Ltd. v. General Mills Marketing
2 3
Inc. , Greaves Cotton Ltd. v. Mohammad Rafi , Enterprise Holdings
4
Inc. v. Enterprise Auto Rentals , Wow Momo Foods (P) Ltd. v. Wow
5 6
Burger , Wipro Enterprises (P) Ltd. v. Himalaya Wellness Co. ,
7
Under Armour Inc. v. Anish Agarwal , Midas Hygiene Industries (P)
8 9
Ltd. v. Sudhir Bhatia , Parle Products (P) Ltd. v. J.P. & Co. and ITC
10
Ltd. v. Golden Tobacco Ltd.
III. SUBMISSIONS ON BEHALF OF THE DEFENDANT
16. Per contra , Mr. Navin Kumar, learned counsel appearing on
behalf of the defendant, submits that the defendant is an established
manufacturer of a wide variety of edible snacks, including roasted
nuts , namkeen , bhujia , chikki and gajak , and traces its origin to a
family business founded in the year 1910 under the name
“ JairamdasBhagchand and Sons ”. The defendant was incorporated in
the year 1984 as Jabsons Cottonseed Industries Pvt. Ltd., and its name
was changed to Jabsons Foods Pvt. Ltd. on 23.07.2018. The house
mark JABSONS, a contraction of the name of the family business, is
stated to have been in use since 1994, and the defendant holds several
registrations thereof, including Nos. 988553 and 1307361 in Class 29
1
(2016) 2 SCC 683
2
2014 SCC OnLine Del 1953
3
2011 SCC OnLine Del 2596
4
2014 SCC OnLine del 1096
5
2025 SCC OnLine Del 6545
6
2024 SCC OnLine Del 6859
7
2025:DHC:4243-DB
8
(2004) 3 SCC 90
9
(1972) 1 SCC 618
10
2018 SCC OnLine Mad 2437
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Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 8 of 34
and Nos. 1924816 and 1924817 in Class 30. It is submitted that the
defendant offers more than 270 snacking options, is HACCP certified
since the year 2008, and has received several awards and recognitions.
17. It is contended that the plaintiff obtained the ex parte ad interim
order dated 02.08.2024 by making misrepresentations and by
suppressing material facts, and is, therefore, not entitled to any
equitable relief.
18. On merits, learned counsel submits that the registration of SHAH
HOT MIX (LABEL) is subject to an express condition that no
exclusive right shall vest in the plaintiff over the descriptive matter
appearing on the label, and HOT MIX, being such descriptive matter,
does not enjoy any statutory exclusivity. In terms of Section 17(2)(b)
of the Act, the registration of a composite mark does not confer any
exclusive right in a part thereof which is common to the trade or is
otherwise non-distinctive. It is urged that HOT MIX describes the kind
and characteristics of a spicy namkeen or bhujia on account of its red
chilli content, and that its bona fide use in that sense is protected by
Section 30(2)(a) of the Act. It is also pointed out that the plaintiff’s
applications for registration of HOT MIX are under opposition, and
that the plaintiff has made inconsistent claims of user, i.e., since 1977
and since 1995.
19. Placing reliance on Pernod Ricard India (P) Ltd. v. Karanveer
11
Singh Chhabra , it is submitted that the marks have to be compared
as a whole, and that a common descriptive element cannot form the
basis of the comparison. Applying the dominant feature test, SHAH, in
11
2025 SCC OnLine SC 1701
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 9 of 34
the case of the plaintiff, and JABSONS, in the case of the defendant,
are the dominant and source-identifying features, whereas HOT MIX
merely denotes the product type. It is submitted that the rival
packaging, colour scheme, font, logo and the overall get-up are entirely
different. Learned counsel draws an analogy with large manufacturers
such as Haldiram, Bikaji, Britannia and Bikano, which describe their
products as “Aloo Bhujia”, “Moong Dal Mix”, “Bourbon” and
“Navratan Mix”, and contends that, in this trade, products are
purchased by reference to the brand and not the description.
20. It is further contended that a descriptive mark is inherently weak
and can be protected only upon proof of a secondary meaning, which
the plaintiff has failed to establish. HOT MIX, it is urged, is an
expression which every manufacturer of namkeen requires in order
todescribe a spicy snack mixture, and is used by several other
manufacturers, as is evident from the packaging of third parties placed
on record (pp. 564 to 574 of the defendant’s documents). The plaintiff,
therefore, cannot monopolize the same.
21. Lastly, it is submitted that the house marks SHAH and
JABSONS, being distinct, rule out any possibility of confusion, and
that the balance of convenience lies in favour of the defendant, which
has suffered loss on account of the ex parte injunction. Reliance is
placed on Godfrey Phillips India Ltd. v. Girnar Food & Beverages
12 13
(P) Ltd. , Sanjha Chulha v. Sanjha Chulha , Soothe Healthcare (P)
14
Ltd. v. Dabur India Ltd. , Bhole Baba Milk Food Industries Ltd. v.
12
(2004) 5 SCC 257
13
FAO (COMM) 128/2022, decided on 02.11.2022
14
2022:DHC:2550-DB
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Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 10 of 34
15
Parul Food Specialities (P) Ltd. , Yatra Online Ltd. v. Mach
16
Conferences and Events Ltd. , Capital Food (P) Ltd. v. Radiant
17
Indus Chem (P) Ltd. and L.T. Overseas North America Inc. v.
18
KRBL Ltd.
IV. ANALYSIS
a. The objection of suppression
22. Since the defendant has, by way of I.A. 1561/2025, assailed the
order dated 02.08.2024 on the ground of misrepresentation and
suppression, it would be apposite to deal with the said objection at the
outset. There can be no quarrel with the proposition that a party which
seeks a discretionary relief must approach the Court with clean hands.
At the same time, the suppression, in order to disentitle a party to
relief, must be of a material fact. The Supreme Court in Arunima
19
Baruah v. Union of India has held as under:
“12. It is trite law that so as to enable the Court to refuse to
exercise its discretionary jurisdiction suppression must be of
material fact. What would be a material fact, suppression
whereof would disentitle the appellant to obtain a discretionary
relief, would depend upon the facts and circumstances of each
case. Material fact would mean material for the purpose of
determination of the lis, the logical corollary whereof would be
that whether the same was material for grant or denial of the
relief. If the fact suppressed is not material for determination of
the lis between the parties, the Court may not refuse to exercise
its discretionary jurisdiction. ...”
23. The defendant, both in its application and in its written
submissions, has made only a general allegation of suppression,
15
2011:DHC:5334-DB
16
2025:DHC:7167
17
2023 SCC OnLine Del 118
18
2023 SCC OnLine Del 1121
19
(2007) 6 SCC 120
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 11 of 34
without specifying the material fact which the plaintiff is said to have
withheld. A perusal of the plaint shows that the plaintiff had disclosed
that its registration for SHAH HOT MIX (LABEL) was subject to a
disclaimer in respect of the descriptive matter appearing on the label
(para 7 of the plaint), and had also tabulated the status of its
applications for HOT MIX as pending. The said table was, in fact,
reproduced in the order dated 02.08.2024. The general averment that
some of the applications of the plaintiff had proceeded to registration
could not, therefore, have misled the Court as to the status of the
applications for HOT MIX.
24. The plaint also disclosed the proceedings initiated by the plaintiff
against third parties, including CS (COMM) No. 126/2022 against M/s
Sunshine Food Products, the status of which was shown as pending.
The said suit came to be dismissed by the District Judge (Commercial
Court), East District, Karkardooma Courts, Delhi on 12.08.2024, i.e.,
after the institution of the present suit and the passing of the order
dated 02.08.2024. The plaintiff has assailed the said judgment in
RFA(COMM) 457/2024, which is pending before the Division Bench
of our Court, and has itself referred to the said decision in its list of
witnesses. No case of suppression of a material fact is, therefore, made
out. Even otherwise, the plaintiff’s application has now been heard
afresh, with the pleadings and the documents of both the parties on
record, and is being decided on its merits.
b. The rights of the plaintiff
25. On the aspect of merits, the plaintiff is admittedly the registered
proprietor of SHAH HOT MIX (LABEL) under No. 2309592 in Class
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 12 of 34
30. The registration subsists, and in terms of Section 31(1) of the Act,
the registration of a trade mark is prima facie evidence of its validity.
Nothing has been brought to the notice of this Court to show that the
said registration has been assailed by the defendant.
26. A bare perusal of the registered label, shows that the expression
HOT MIX, written in large, bold and stylised letters across two lines,
occupies the greater part of the label and is its most prominent and
memorable feature. The word SHAH, along with the words SINCE
1977 and NAMKEEN, appears in a comparatively small box at the top.
Judged by its visual and phonetic prominence as well as its placement,
HOT MIX is the essential and dominant feature of the registered label.
This is also borne out by the manner in which the plaintiff uses its
mark on its packaging, where SHAH appears at the top as a house
mark, and HOT MIX constitutes the name by which the product is
identified and asked for.
27. The plaintiff has also placed on record material to show its use of
the mark over a long period. This includes its invoices (pp. 71 to 167
of the plaintiff’s documents), which reflect the sale of HOT MIX by
the plaintiff over the years, including in the years 2006 and 2008 and
thereafter, and an advertisement published in the March, 1997 issue of
the magazine “Business Star”, which depicts the HOT MIX packet of
the plaintiff amongst its varieties of namkeen (p. 253 of the plaintiff’s
documents), besides the figures of its sales noticed hereinabove.
Whether the use of the mark by the plaintiff commenced in 1977, as
claimed in respect of the label, or in 1995, as claimed in the subsequent
applications, is a matter for trial. Even on the later of the two dates, the
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 13 of 34
use of HOT MIX by the plaintiff precedes that of the defendant by
nearly three decades.
28. On the other hand, the defendant has not claimed any user of the
impugned mark prior to that of the plaintiff. The invoices filed by the
defendant itself (pp. 153 to 325 of its documents), which span from the
year 2007 onwards and record the sale of several namkeen “mix”
variants of the defendant, such as Rajwadi Mix, Sabudana Mix,
Navratan Mix, Gujarati Mix and Garlic Mix, refer to “Hot Mix” only
from October, 2023 onwards. The defendant is, thus, a recent entrant
so far as the impugned mark is concerned.
c. The condition of disclaimer
29. The defendant has laid considerable emphasis on the condition
subject to which the plaintiff’s label stands registered. The condition,
however, does not identify HOT MIX as the descriptive matter
appearing on the label. It is couched in general terms, and the label also
contains the words NAMKEEN and SINCE 1977, which are, on the
face of it, descriptive of the goods and of the year of adoption. It is
pertinent to note that, in CS (COMM) No. 126/2022, the official of the
Trade Marks Registry, examined as PW-1, is recorded to have deposed
that the restriction was imposed on the words “Namkeen” and “since
1977”, which were found to be descriptive, and that the other parts of
the mark were approved (para 11 of the judgment dated 12.08.2024 in
that suit). The plaintiff’s applications for HOT MIX per se have also
been advertised in the Trade Marks Journal. Prima facie , therefore, the
condition cannot be read as a disclaimer of HOT MIX.
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 14 of 34
30. Even otherwise, a disclaimer operates only to limit the rights
which flow from the registration, and does not detract from the rights
which the proprietor may have acquired by user. The Supreme Court in
20
Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. explained
the purpose and effect of a disclaimer as under:
“ 13. ……The real purpose of requiring a disclaimer is to define
the rights of the proprietor under the registration so as to
minimise, even if it cannot wholly eliminate, the possibility of
extravagant and unauthorised claims being made on the score of
registration of the trade marks.
14. The last feature of Section 13 is its proviso. That proviso
preserves intact any right which the proprietor may otherwise
under any other law have in relation to the mark or any part
thereof. The disclaimer is only for the purposes of the Act. It does
not affect the rights of the proprietor except such as arise out of
registration. That is to say, the special advantages which the Act
gives to the proprietor by reason of the registration of his trade
mark do not extend to the parts or matters which he disclaims. In
short, the disclaimed parts or matters are not within the
protection of the statute. That circumstance, however, does not
mean that the proprietor's rights, if any, with respect to those
parts or matters would not be protected otherwise than under the
Act. If the proprietor has acquired any right by long user of those
parts or matters in connection with goods manufactured or sold
by him or otherwise in relation to his trade, he may, on proof of
the necessary facts, prevent an infringement of his rights by a
passing off action or a prosecution under the Penal Code.
Disclaimer does not affect those rights in any way.”
31. Further, a disclaimer does not bear upon the question whether the
impugned mark, compared with the registered mark as a whole, is
deceptively similar thereto. In Wow Momo Foods (P) Ltd. (supra), the
Division Bench of our Court has held as under:
“ 52. The learned Single Judge has also referred to the fact that
some of the marks registered in favour of the appellant carried a
disclaimer that the appellant would not seek any exclusivity in
respect of the individual words used in the mark. The finding is,
with respect, tangential to the issue at hand. The disclaimer
20
(1955) 1 SCC 655
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By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:28.10.2026
18:53:36
CS(COMM) 641/2024 Page 15 of 34
cannot affect the issue of whether, seen as whole marks, the
respondent‟s WOW BURGER mark does, or does not, infringe
the appellant‟s registered trade marks.”
32. For the same reasons, Section 17 of the Act does not come to the
aid of the defendant. The plaintiff does not claim exclusivity over the
word HOT or the word MIX in isolation. Its claim is to the composite
expression HOT MIX, which is the essential feature of its registered
label and the name under which its goods have been sold for decades.
Section 17(2)(b) would preclude such a claim only if the expression
were shown to be common to the trade or otherwise non-distinctive,
which, as discussed hereinafter, the defendant has not been able to
show even prima facie .
d. Whether HOT MIX is a coined expression or a descriptive one?
33. The principal contention of the defendant is that HOT MIX is a
descriptive expression which merely denotes a spicy namkeen, and that
the plaintiff cannot claim exclusivity thereon. The plaintiff, on the
other hand, asserts that the expression was coined by it. The question,
therefore, merits a closer examination.
34. It is trite that the distinctiveness of a mark lies on a spectrum. At
one end lie invented or coined marks, which are inherently distinctive
and command the highest degree of protection, and at the other lie
generic and descriptive expressions, which can be protected only upon
proof of acquired distinctiveness. The Supreme Court in Pernod
Ricard (supra), on which the defendant itself relies, has observed as
under:
“ 31.4. The strength of a trademark lies in its inherent
distinctiveness or the distinctiveness acquired through use.
Invented or coined marks – such as Kodak or Solio – are
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inherently distinctive and command the highest degree of
protection. These marks immediately signify the commercial
origin of the goods or services. In contrast, descriptive marks –
such as Air India, Mother Dairy, HMT, Windows, Doordarshan,
LIC, and SBI – are not inherently distinctive and must acquire
secondary meaning in the minds of the public to qualify for
protection. That is, the public must come to associate the mark
with a particular source. Similarly, geographical terms like
Simla or Liverpool, or generic trade terms, are generally not
registrable unless they have acquired distinctiveness through
long and exclusive use.The more distinctive a mark – whether
inherently or through acquired reputation – the stronger its
position in infringement or passing off actions.”
35. Between the two ends of the spectrum lie suggestive marks,
which only indirectly suggest a quality of the goods, and are regarded
as inherently distinctive. The tests for distinguishing a suggestive mark
from a descriptive one were noticed by this Court in Capital Food (P)
Ltd. (supra), also relied upon by the defendant, in the following terms:
“ 40 . In McCarthy on Trademarks, the learned author explains
the spectrum of distinctiveness of marks as:„inherently
distinctive‟; „non-inherently distinctive‟; and marks with „no
distinctiveness‟.The learned author further states that the most
popular test with the Court is the „Imagination Test‟. The more
imagination that is required on the customer‟s part to get some
direct description of the product from the term, the more likely
the term is „suggestive‟, not „descriptive‟. A descriptive term
directly and clearly conveys information about the ingredients,
qualities or characteristics of the product or service, whereas the
„suggestive‟ term only indirectly suggests these things. Thus, if
one must exercise a reasoning process to determine attributes of
the product or service, the term is suggestive not descriptive. If
the mental link between the word and the product‟s attributes is
not almost instantaneous, this strongly indicates suggestive and
not direct descriptiveness. The second test suggested by the
learned author is “The Competitors‟ Need Test”, that is, is the
word or words likely to be needed by the competitive sellers to
describe their goods? If the answer is in the positive, then the
word/words are descriptive, otherwise they may just be
suggestive.”
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36. It is also trite that the distinctiveness of a composite expression
has to be judged with reference to the expression as a whole, as
conceived and used by the plaintiff, and not by splitting it into its
constituent words and examining whether each of them, standing
alone, is a dictionary word. In Wow Momo Foods (P) Ltd. (supra), the
Division Bench of our Court, while dealing with the marks WOW
MOMO and WOW DIMSUMS, held as under:
“ 39. The idea of combining an exclamation with the mundane
reference to the food item is inventive and, consequently,
distinctive. To our mind, the learned Single Judge has
concentrated on whether WOW, seen as a standalone expression,
is, or is not, distinctive, and has, in the process, overlooked the
fact that, when used in conjunction with the name of the food
item, the combined mark becomes distinctive in nature.
*
42. ... The aspect of distinctiveness, in any expression has to be
assessed not by seeing the expression “standalone” but keeping
in mind the manner in which the expression has been used by the
plaintiff. WOW as a standalone expression may not be
distinctive. When, however, it is used in combination with the
name of a food item, so as to convey the quality of that food item,
it acquires distinctiveness.”
37. Tested on the aforesaid touchstone, the Court finds merit in the
submission of the plaintiff. The expression HOT MIX is not to be
found in any dictionary as the name of a namkeen, nor has the
defendant placed on record any material, be it a dictionary, culinary
literature or trade literature, to show that, when the plaintiff adopted it,
HOT MIX was the recognised name of any particular variety of
namkeen. In this respect, HOT MIX stands on a footing entirely
different from expressions such as “Aloo Bhujia”, “Moong Dal” or
“Navratan Mix”, cited by the defendant, which are names by which
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traditional preparations have been known for generations, and which
identify the ingredients or the nature of the preparation.
38. The individual words HOT and MIX are each capable of several
meanings. The word HOT may denote temperature, pungency or even
popularity, whereas MIX may refer to a mixture of any conceivable
kind. The combination does not, by itself, convey to a purchaser what
the product is, what it is a mixture of, or how it is prepared. Its
application to a packet of namkeen requires a degree of imagination.
At the highest, therefore, HOT MIX is suggestive, and not descriptive,
of the plaintiff’s goods. The juxtaposition of the two words, for use as
the name of a namkeen, was the plaintiff’s own idea, much like the
combination of WOW with the name of a food item in Wow Momo
Foods (P) Ltd. (supra).
39. The material on record also supports the claim of the plaintiff to
be the originator of the expression in the trade. The defendant has not
shown the use of HOT MIX by any person prior to the plaintiff. The
Trade Marks search report on record (pp. 354 to 360 of the plaintiff’s
documents) shows that the only third-party applications for marks
comprising HOT MIX in Class 30, filed in the years 2003, 2011 and
2019, stand removed or abandoned, and that the plaintiff alone holds a
subsisting registration of which HOT MIX is the essential feature.
40. The “competitors’ need test” also yields an answer in favour of
the plaintiff. As noticed hereinabove, the defendant itself sold a large
number of namkeen “mix” variants for over fifteen years without ever
having used the expression HOT MIX, and adopted it only in October,
2023. The packaging filed by the defendant itself shows a spicy
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namkeen marketed under its house mark as “HOT N’ SPICY” (p. 575
of the defendant’s documents). Several traders who had adopted HOT
MIX formative marks and were sued by the plaintiff, chose to sell their
goods under other names. In the settlement dated 27.01.2023 arrived at
in CS(COMM) 124/2022, M/s Trilok Foods Pvt. Ltd. acknowledged
the plaintiff to be the owner of all intellectual property pertaining to
HOT MIX/SHAH HOT MIX (LABEL), and agreed to use the mark
HOTKING MIXTURE. Likewise, in CS(COMM) 439/2023, the
defendant therein agreed to use the mark MOTA MIXTURE, and this
Court, while decreeing the suit on 11.12.2023, recorded that “ the
Defendant has acknowledged the rights of the Plaintiff pertaining to
the marks „HOT MIX‟/ „SHAH HOT MIX‟ ”.
41. These settlements though do not bind the defendant herein. They
do, however, demonstrate that a trader desirous of conveying that its
namkeen is spicy has numerous expressions available to it, and does
not need to appropriate the expression HOT MIX. These circumstances
demerits the contention that HOT MIX is a common descriptive
expression which every trader in namkeen necessarily requires to
describe its goods.
42. Even if it were to be assumed that HOT MIX has some
descriptive connotation, the same would not, by itself, disentitle the
plaintiff to protection. The Supreme Court in Godfrey Phillips India
Ltd. (supra), relied upon by the defendant, held as under:
“ 4. ... A descriptive trade mark may be entitled to protection if it
has assumed a secondary meaning which identifies it with a
particular product or as being from a particular source. ...”
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43. In the present case, the plaintiff has used HOT MIX as the name
of its namkeen at least since the mid-1990s, continuously and on a
considerable scale, as is reflected from its sales figures, invoices and
advertisements. The expression has been consistently asserted by the
plaintiff against others, and the plaintiff alone holds a registration of
which it forms the essential feature. The plaintiff has also placed on
record a web story of a news portal, featuring HOT MIX and the
founder of Shah Namkeen (p. 242 of the plaintiff’s documents), which
indicates the association of the expression with the plaintiff in public
perception. Prima facie , therefore, HOT MIX, as applied to namkeen,
has come to denote the goods of the plaintiff. The final determination
of the question of acquired distinctiveness shall, of course, abide by the
evidence led at the trial.
44. The reliance placed by the defendant on Pernod Ricard (supra)
does not advance its case. In that case, the only element common to
BLENDERS PRIDE and LONDON PRIDE was the word PRIDE,
which the Supreme Court found to be a laudatory expression
extensively used in the liquor trade, as evidenced by marks such as
McDowell’s Pride, Highland Pride, Royal Pride and Pride of India, and
the leading words of the rival marks were entirely different. The
Supreme Court, at the same time, clarified that the dominant feature of
a mark may be accorded greater weight where it overshadows the rest
of the mark, and that the imitation of even a component lacking
inherent distinctiveness may amount to infringement where it
constitutes an essential feature of the mark. The relevant observations
read as under:
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“ 33.1 . The principles of the anti-dissection rule and the dominant
feature test, though seemingly in tension, are not mutually
exclusive. Identifying a dominant feature can serve as an
analytical aid in the holistic comparison of marks. In certain
cases, an infringing component may overshadow the remainder
of the mark to such an extent that confusion or deception
becomes virtually inevitable. In such instances, courts – while
maintaining a contextual and fact-specific inquiry – may
justifiably assign greater weight to the dominant element. ...
*
42. While comparing rival marks, Courts must assess the marks
in their entirety, rather than dissecting composite trademarks
into isolated components. The dominant feature of a mark may
assist in crossing the preliminary threshold of analysis, but the
ultimate inquiry must focus on the overall impression created by
the mark – especially in the context of the relevant goods, trade
channels, and target consumers. The proper test is not to place
the two marks side by side to identify dissimilarities, but to
determine whether the impugned mark, when viewed
independently, is likely to create an impression of association or
common origin in the mind of the average consumer. Even if a
particular component of a mark lacks inherent distinctiveness, its
imitation may still amount to infringement if it constitutes an
essential and distinctive feature of the composite mark as a
whole.”
45. The other decisions relied upon by the defendant are also
distinguishable on facts. In Soothe Healthcare (P) Ltd. (supra), the
expression SUPER was found to be a laudatory word in wide use; in
Bhole Baba Milk Food Industries Ltd. (supra), the mark KRISHNA
was the name of a deity associated with milk and milk products; in
Yatra Online Ltd. (supra), the word YATRA was a generic word
which stood specifically disclaimed in the registrations of the plaintiff
therein; and in Capital Food (P) Ltd. (supra), the expression
SCHEZWAN CHUTNEY was found to describe a known style of
preparation. None of these decisions is an authority for the proposition
that an expression adopted by a trader decades ago, not shown to have
been in use by anyone else at the time of its adoption, and associated
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with that trader ever since, can be freely appropriated by a later entrant.
In Sanjha Chulha (supra), the Division Bench declined to accept the
user claimed by the appellant therein in the absence of documentary
support, whereas, in the present case, the documents on record prima
facie establish the use of the mark by the plaintiff for nearly three
decades. The plaintiff, therefore, satisfies the test of prima facie case in
its favour.
e. The plea of use of HOT MIX by third parties
46. The defendant has next contended that HOT MIX is used by
several other manufacturers. In support thereof, the defendant has
placed on record the photographs of the packaging of certain third
parties, bearing the names SATMOLA, Anshul, Dakshyn, Deep,
Kemchho, Thakkar Bros., Wah, Thakar, Kolis, Snack Rack and Samrat
(pp. 564 to 574 of the defendant’s documents). Apart from the
packaging, nothing has been placed on record to show when these
parties commenced the use of the expression, the extent of their sales,
or their presence in the Indian market. The plaintiff, on the other hand,
has shown that it has taken action against several users of HOT MIX
formative marks, including the user of SATMOLA HOT MIX, which
finds mention in the defendant’s own list.
47. The law on the subject is well settled. The Supreme Court in Corn
21
Products Refining Co. v. Shangrila Food Products Ltd. held as
under:
“ 16. The series of marks containing the common element or
elements therefore only assist the applicant when those marks
21
1959 SCC OnLine SC 11
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are in extensive use in the market. The onus of proving such user
is of course on the applicant, who wants to rely on those marks.
... Now of course the presence of a mark in the register does not
prove its user at all. It is possible that the mark may have been
registered but not used. It is not permissible to draw any
inference as to their user from the presence of the marks on the
register. ...”
48. A Division Bench of our Court in Pankaj Goel v. Dabur India
22
Ltd. , while repelling a similar plea that the mark MOLA was
common to the trade, held as under:
“ 21. As far as the Appellant‟s argument that the word MOLA is
common to the trade and that variants of MOLA are available in
the market, we find that the Appellant has not been able to prima
facie prove that the said „infringers‟ had significant business
turnover or they posed a threat to Plaintiff‟s distinctiveness. In
fact, we are of the view that the Respondent/Plaintiff is not
expected to sue all small type infringers who may not be affecting
Respondent/Plaintiff business. The Supreme Court in National
Bell v. Metal Goods,(1970) 3 SCC 665 : AIR 1971 SC 898 has
held that a proprietor of a trademark need not take action
against infringement which do not cause prejudice to its
distinctiveness. ...
22 . In fact, in Dr. Reddy Laboratories v. Reddy Pharmaceuticals,
(2004) 29 PTC 435 a Single Judge of this Court has held as
under:--
„...the owners of trade marks or copy rights are not
expected to run after every infringer and thereby remain
involved in litigation at the cost of their business time. If
the impugned infringement is too trivial or insignificant
and is not capable of harming their business interests, they
may overlook and ignore petty violations till they assume
alarming proportions. If a road side Dhaba puts up a
board of “Taj Hotel”, the owners of Taj Group are not
expected to swing into action and raise objections
forthwith. They can wait till the time the user of their name
starts harming their business interest and starts misleading
and confusing their customers.‟”
22
(2008) 38 PTC 49 (DB)
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49. Relying upon the aforesaid decision, coordinate Bench of our
Court in Glaxosmithkline Pharmaceuticals Ltd. v. Horizon
23
Bioceuticals Pvt. Ltd. has held as under:
“ 30. ….On the defendant, pleading that the part of the brand
name, common to the product of the plaintiff and the defendant,
is publici juris, is cast the onus to establish the assertion. This,
according to Express Bottlers Services and Pankaj Goel,
requires the defendant to show (i) substantial use, by the
proprietors of the marks cited by it, (ii) the extent of trade in
products bearing the said marks and (iii) that the said marks
pose a threat to the distinctiveness of the mark asserted by the
plaintiff. Else, would not be possible for this Court to return a
finding that the mark of the plaintiff, or the part thereof which,
according to the defendant, is common to the trade, is indeed
so.”
50. Tested on the aforesaid principles to the facts of the present case,
the defendant has failed to discharge the onus which lay upon it. The
mere filing of photographs of the packaging of a few third parties,
without any material as to the extent of their use or their position in the
market, is insufficient to hold that HOT MIX is common to the trade.
The existence of other infringers, if any, is no defence available to the
defendant. The defendant, on its own showing, is a large manufacturer
offering more than 270 products and supplying its goods across several
States, and its adoption of the impugned mark poses a far greater threat
to the distinctiveness of the plaintiff’s mark than that posed by other
users.
f. Comparison of the rival marks and infringement
51. That brings this Court to the comparison of the rival marks. The
rival products and marks may be compared as under:
23
2023 SCC OnLine Del 2065
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Plaintiff Defendant
Product
Mark SHAH HOT MIX (LABEL) JABSONS HOT MIX
SHAH, within a box at the top
of the pack, in comparatively
small size
JABSONS, within its logo at
the top of the pack, in
comparatively small size
House mark
and its
placement
At the centre of the pack, in
large and bold capital letters, in
two lines, HOT above MIX
At the centre of the pack, in
large and bold capital letters, in
two lines, HOT above MIX
Presentation
of HOT
MIX
Namkeen depicted in the lower
half, with green chillies
Namkeen depicted in the lower
half, with red chillies
Other
features
Red Dark (black and maroon)
Background
colour
None for the impugned mark
Registration No. 2309592 in Class 30 for
SHAH HOT MIX (LABEL);
application Nos. 5363709 to
5363712 for HOT MIX
Since October, 2023
User Claimed since 1977; documents
on record since the 1990s
Goods Namkeen Namkeen
52. A bare perusal of the above would show that the defendant has
adopted the expression HOT MIX in its entirety, and uses it as the
most prominent feature of its pack, in the same manner in which it
appears on the pack of the plaintiff, i.e., in large and bold letters across
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two lines at the centre of the pack, with the house mark placed above it
in a comparatively smaller size, and the namkeen depicted below.
Phonetically, the expressions are identical. The goods in question are
identical, and are sold to the same class of consumers through the same
trade channels.
53. The nature of the goods and the class of purchasers are also
relevant considerations, as held by the Supreme Court in para 35 of
24
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. Namkeen is
an item of everyday consumption, purchased by persons of all strata of
society, including children, often over the counter in small grocery
shops, and usually by asking for the product by its name. The
defendant’s own invoices show the impugned product being sold in 30-
gram packs bearing a maximum retail price of ₹10. A purchaser of
such goods does not pause to study the get-up of the pack, and would
ordinarily ask for “Hot Mix”. In such circumstances, the likelihood of
confusion is real. The Supreme Court in Parle Products (P) Ltd.
(supra) held as under:
“9. It is therefore clear that in order to come to the conclusion
whether one mark is deceptively similar to another, the broad
and essential features of the two are to be considered. They
should not be placed side by side to find out if there are any
differences in the design and if so, whether they are of such
character as to prevent one design from being mistaken for the
other. It would be enough if the impugned mark bears such an
overall similarity to the registered mark as would be likely to
mislead a person usually dealing with one to accept the other if
offered to him. ... After all, an ordinary purchaser is not gifted
with the powers of observation of a Sherlock Holmes . ...”
[Emphasis supplied]
24
(2001) 5 SCC 73
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54. The defendant’s contention that the comparison must be confined
to SHAH and JABSONS, by excising HOT MIX from both the marks,
cannot be accepted. While the marks are to be compared as a whole,
the principle of anti-dissection does not preclude the Court from
according greater weight to the dominant feature of a mark. A Division
Bench of our Court in South India Beverages (P) Ltd. (supra) held as
under:
“ 19. Though it bears no reiteration that while a mark is to be
considered in entirety, yet it is permissible to accord more or less
importance or „dominance‟ to a particular portion or element of
a mark in cases of composite marks. Thus, a particular element
of a composite mark which enjoys greater prominence vis-a-vis
other constituent elements, may be termed as a „dominant mark‟.
*
23. It is also settled that while a trademark is supposed to be
looked at in entirety, yet the consideration of a trademark as a
whole does not condone infringement where less than the entire
trademark is appropriated. It is therefore not improper to
identify elements or features of the marks that are more or less
important for purpose of analysis in cases of composite marks.”
55. In Under Armour Inc. (supra), the Division Bench of our Court,
while setting aside an order which had excised the common word
ARMOUR from the rival marks for the purposes of comparison, held
as under:
“ 50. ... If it is found that much of the similarities between the
competing marks stem from the word „ARMOUR‟ being a part of
the competing marks, the same cannot be disregarded. It would
be erroneous to ignore the similarity of the overall commercial
impressions of the competing marks, viewed as a whole, merely
because the similarity may be attributable to the fact that parts of
the competing marks are identical or lend similarity to the
trademarks when viewed as a whole.
51. ... In our view, this is clearly contrary to the anti-dissection
rule, which compels us to evaluate the composite competing
marks as a whole, but at the same time does not restrict us from
taking into account the portions of the marks, which contribute to
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the overall similarities between the competing trademarks when
viewed as a whole. A strong registered mark with a distinctive
portion, may be infringed if a part of the later mark, which
dominates the commercial impression of the said mark is
identical to the distinctive portion of the earlier mark. ...”
56. In the present case, HOT MIX dominates the commercial
impression of both the marks. The essential feature of the plaintiff’s
registered label has been reproduced in its entirety by the defendant. In
such a situation, the differences in the colour scheme and the get-up of
the packs, and the addition of the house mark JABSONS, are of no
consequence in an action for infringement. The Supreme Court in
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
25
Laboratories held as under:
“ 28. ... In an action for infringement, the plaintiff must, no doubt,
make out that the use of the defendant‟s mark is likely to deceive,
but where the similarity between the plaintiff‟s and the
defendant‟s mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff‟s rights are violated. Expressed in another way, if the
essential features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which
he offers his goods for sale show marked differences, or indicate
clearly a trade origin different from that of the registered
proprietor of the mark would be immaterial; whereas in the case
of passing off, the defendant may escape liability if he can show
that the added matter is sufficient to distinguish his goods from
those of the plaintiff.”
57. Similarly, in Ruston & Hornsby Ltd. v. Zamindara Engineering
26
Co. , the Supreme Court held that the addition of the word INDIA to
the mark RUSTAM made no difference, in the following words:
25
AIR 1965 SC 980
26
(1969) 2 SCC 727
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“ 8. In the present case the High Court has found that there is a
deceptive resemblance between the word „RUSTON‟ and the
word „RUSTAM‟ and therefore the use of the bare word
„RUSTAM‟ constituted infringement of the plaintiff‟s trade mark
„RUSTON‟. The respondent has not brought an appeal against
the judgment of the High Court on this point and it is, therefore,
not open to him to challenge that finding. If the respondent‟s
trade mark is deceptively similar to that of the appellant the fact
that the word „INDIA‟ is added to the respondent‟s trade mark is
of no consequence and the appellant is entitled to succeed in its
action for infringement of its trade mark.”
58. The defence under Section 30(2)(a) of the Act is also not
available to the defendant. The said provision protects the use of a
mark which “indicates the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services”. As
held by this Court in Mankind Consumer Products Private Limited v.
27
Alaina Healthcare Private Limited , the protection under the said
provision is available only where an expression is used in its
descriptive sense, and not as a trade mark, and whether the defence is
attracted must, therefore, be tested on the manner in which the
expression is actually used by the defendant.
59. Examined thus, the material on record prima facie indicates that
the defendant uses HOT MIX to name its product, and not merely to
describe it. On the pack, HOT MIX is the largest and the most
prominent text, and is the very name of the product. The defendant’s
invoices identify the product as “Namkeen-Hot Mix”. Also, the
defendant, in para 4 of its reply to the present application, has itself
stated that its trade mark is JABSONS HOT MIX. Having so stated, it
27
CS(COMM) 280/2026, decided on 16.10.2026
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By:PURUSHAINDRA
KUMAR KAURAV
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SHARMA
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is not open to the defendant to contend that it uses HOT MIX only to
describe the kind or characteristics of its goods. The observations of
our Court in L.T. Overseas North America Inc. (supra), a decision
relied upon by the defendant itself, are apposite:
“ 74. The same, however, cannot be said for the packaging that is
currently used by the defendant and was complained of by the
plaintiffs in the present suit. The packaging itself would show
that the word „ROYAL‟ has been used prominently in the
packaging. The same is not, therefore, merely to depict the
quality of the rice of the defendant but also as a trade mark itself.
The use of the same would also lead to dilution of the mark of the
plaintiffs and, therefore, cannot be permitted in such manner.”
60. In view of the above, this Court is of the prima facie view that the
use of the impugned mark by the defendant, in relation to goods
identical to those for which the plaintiff’s mark is registered, is likely
to cause confusion on the part of the public and amounts to
infringement of the plaintiff’s registered trade mark within the meaning
of Section 29(2)(b) of the Act.
g. Passing off and the adoption of the impugned mark
61. The plaintiff has also made out a prima facie case of passing off.
The rights of a prior user are superior even to those of a subsequent
registrant, as held by the Supreme Court in S. Syed Mohideen (supra),
and the defendant herein does not even hold a registration or an
application for the impugned mark. The plaintiff, as noticed
hereinabove, has prima facie established its goodwill in the mark HOT
MIX in relation to namkeen, built over decades. The use of the
identical expression, for identical goods, sold to the same class of
consumers through the same trade channels, is likely to lead the
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KUMAR KAURAV
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SHARMA
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consumers to believe that the goods of the defendant emanate from, or
is connected with, the plaintiff.
62. The adoption of the impugned mark by the defendant also does
not appear to be honest. The defendant is not a newcomer to the trade.
It claims to have been in the business of snacks for decades and to
offer more than 270 products. It adopted HOT MIX only in October,
2023, by which time the plaintiff’s label had remained on the Register
of Trade Marks since the year 2018, and the plaintiff’s applications for
HOT MIX had been advertised in the Trade Marks Journal in
November, 2022. A cursory search of the Register would have
revealed the plaintiff’s rights. The defendant has not offered any
explanation as to why, after having sold its namkeen “mix” variants for
over fifteen years under other names, it chose to adopt the expression
HOT MIX, and that too in a manner which closely resembles the
placement and presentation thereof on the plaintiff’s pack. The
Supreme Court in Midas Hygiene Industries (P) Ltd. (supra) has held
as under:
“ 5. The law on the subject is well settled. In cases of
infringement either of trade mark or of copyright, normally an
injunction must follow. Mere delay in bringing action is not
sufficient to defeat grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie appears that
the adoption of the mark was itself dishonest.”
63. There is also no delay on the part of the plaintiff. The defendant
commenced the use of the impugned mark in October, 2023, and the
plaintiff, upon learning of the same in June, 2024, instituted the present
suit promptly in July, 2024.
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KUMAR KAURAV
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SHARMA
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h. Balance of convenience and irreparable injury
64. The balance of convenience also lies in favour of the plaintiff.
The plaintiff is the prior user of HOT MIX for decades and the
registered proprietor of the label of which it is the essential feature,
whereas the defendant adopted the impugned mark only in October,
2023, and, as per the record, has neither the registration nor an
application therefor. HOT MIX is but one of the numerous products of
the defendant. The injunction does not affect the use by the defendant
of its house mark JABSONS, or the sale of its namkeen as such, and
requires the defendant only to adopt a different name for the product, a
course which is evidently feasible, given that the defendant itself
markets a spicy namkeen under the name “HOT N’ SPICY” (p. 575 of
its documents). Further, the ad interim injunction has been in operation
since 02.08.2024, and its continuance would cause no fresh hardship to
the defendant.
65. On the other hand, if the injunction is vacated, the plaintiff would
suffer irreparable injury. The injury caused by the use of an identical
expression by a large manufacturer lies in the erosion of the
distinctiveness of the plaintiff’s mark and of the goodwill associated
therewith, which cannot be adequately compensated in terms of
money. Where the goods are articles of food consumed by the public at
large, the public interest in avoiding confusion as to their source is an
additional consideration.
V. CONCLUSION
66. Accordingly, the ad interim injunction granted vide order dated
02.08.2024 is confirmed. Till the final adjudication of the suit, the
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KUMAR KAURAV
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SHARMA
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defendant, its directors, officers, servants, agents, distributors, dealers,
franchisees, and all others acting for and on its behalf, are restrained
from manufacturing, selling, offering for sale, advertising or in any
manner dealing in namkeen, snacks or any other allied or cognate
goods under the mark HOT MIX, or any other mark or label which is
identical with or deceptively similar to the plaintiff’s registered trade
mark SHAH HOT MIX (LABEL), so as to result in infringement or
passing off.
67. It is, however, clarified that nothing in this judgment shall restrain
the defendant from using its house mark JABSONS, or from using the
words “hot” or “mix” individually, in their ordinary dictionary sense,
as part of a description of its goods, so long as the expression HOT
MIX, or any expression deceptively similar thereto, is not used as a
name, mark or label for its goods.
68. I.A. 35178/2024 stands allowed in the aforesaid terms, and I.A.
1561/2025 stands dismissed..
69. It is made clear that the observations made hereinabove are only
prima facie , for the purpose of deciding the present applications.
70. List before Joint Registrar on 07.12.2026 i.e. the date already
fixed.
(PURUSHAINDRA KUMAR KAURAV)
JUDGE
th
OCTOBER 28 , 2026
SA
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KUMAR KAURAV
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