Delhi HC Confirms Interim Bar On Jabsons Using ‘Hot Mix’ For Namkeen, Citing Shah Namkeen’s Decades-Long Prior Use

The plaintiff, proprietor of M/s. Shah Namkeen, claimed long-standing use of SHAH HOT MIX/HOT MIX for namkeen and held a registration for the composite label SHAH HOT MIX, subject to a disclaimer of descriptive matter appearing on the label.

The defendant began using JABSONS HOT MIX on namkeen in October 2023.

In July 2024, the plaintiff sued for infringement and passing off; the Court granted an ex parte interim injunction on 2 August 2024.

The plaintiff sought continuation of that injunction under Order XXXIX Rules 1 and 2 CPC, while the defendant applied under Order XXXIX Rule 4 CPC to vacate it, alleging suppression and contending that HOT MIX was descriptive and common to the trade.

Under Sections 29(2)(b) and 29(6) of the Trade Marks Act, 1999, use of an identical or deceptively similar mark in relation to identical goods may constitute infringement where it is likely to cause confusion; composite marks are compared as a whole, though a dominant feature may receive greater weight (South India Beverages; Pernod Ricard).

Section 17(2)(b) limits exclusivity in parts of a registered mark that are common to the trade or otherwise non-distinctive, while a disclaimer limits registration-based rights but does not extinguish rights acquired through use (Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.).

Section 30(2)(a) protects use of an indication in its descriptive sense, not use as a trade mark.

A descriptive expression may be protected upon proof of acquired distinctiveness or secondary meaning (Godfrey Phillips).

A party asserting that a mark is common to the trade must show substantial third-party use and the extent of that trade; register entries or packaging alone do not establish use (Corn Products; Pankaj Goel).

Prior-user rights prevail over those of a subsequent registrant (S. Syed Mohideen), and dishonest adoption supports injunctive relief (Midas Hygiene).

Interim relief also requires consideration of balance of convenience and irreparable injury.

The Court found that HOT MIX was the most prominent and memorable element of the plaintiff’s registered label and that documents prima facie showed its use since at least the mid-1990s, substantially before the defendant’s 2023 adoption.

The disclaimer did not identify HOT MIX as disclaimed matter, and the defendant failed to establish that the expression was descriptive or supported by substantial third-party use.

The Court considered HOT MIX, as applied to namkeen, at most suggestive and found prima facie acquired distinctiveness through the plaintiff’s use.

The defendant reproduced the expression prominently, in a similar central position and presentation, for identical goods sold to the same consumers and through the same channels; the addition of JABSONS did not dispel the likelihood of confusion.

The Court also found that the defendant used HOT MIX as a product name rather than merely descriptively, and that its unexplained adoption was prima facie dishonest.

The suppression allegation failed because the defendant did not identify a material fact withheld by the plaintiff.

The Court considered the plaintiff’s prior use, the defendant’s ability to use another product name, and the risk of erosion of the plaintiff’s goodwill in assessing convenience and injury.

It confirmed the injunction, restraining the defendant until final adjudication from dealing in namkeen, snacks, or allied or cognate goods under HOT MIX or a deceptively similar mark or label; it clarified that the defendant may continue using JABSONS and the individual words “hot” or “mix” descriptively, but not HOT MIX as a product name or mark.

The plaintiff’s application under Order XXXIX Rules 1 and 2 CPC was allowed, and the defendant’s application under Order XXXIX Rule 4 CPC was dismissed.

The Court specified that its observations were prima facie and confined to the interim applications.