Bombay High Court Holds Trademark Owner Need Not Tolerate Cosmetic Changes; Directs Competitor to Maintain ‘Safe Distance’ from Protected Mark Despite Fresh Registration
Bombay High Court Holds Generic Words in Distinctive Combination Continue to Enjoy Trademark Protection
Facts
The plaintiff, Sky Enterprise Private Limited, instituted a commercial intellectual property suit alleging trademark infringement and passing off against Abaad Masala & Co.
By an interim order dated 8 January 2020, the Bombay High Court restrained the defendant from using the marks “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”, or any identical or deceptively similar marks, in connection with its goods. The Court had held that although the constituent words were individually descriptive or generic, their particular combination had acquired distinctiveness and trademark protection.
Subsequently, the defendant discontinued the impugned marks and adopted the marks “Frize White Spicy Pepper Masala” and “Frize Black Spicy Pepper Masala”, while also modifying its packaging. Alleging that these changes were merely cosmetic and amounted to wilful circumvention of the interim injunction, the plaintiff filed the present application under Order XXXIX Rule 2A CPC seeking action for breach of the injunction.
Issues
- Whether the defendant’s adoption of “Frize White Spicy Pepper Masala” and “Frize Black Spicy Pepper Masala” violated the earlier interim injunction.
- Whether replacing only one word in the protected trademarks amounted to sufficient compliance with the interim order.
- Whether registration of the modified trademarks after the interim injunction insulated the defendant from proceedings under Order XXXIX Rule 2A CPC.
- Whether the Court should invoke punitive powers under Order XXXIX Rule 2A or instead issue remedial directions to secure compliance with the interim injunction.
Petitioner’s Arguments
The plaintiff contended that:
- The defendant deliberately replaced only the word “Chinese” with “Spicy”, while retaining the overall structure, appearance and commercial impression of the protected trademarks.
- The defendant had substantially copied the plaintiff’s packaging, colour scheme, font, layout and overall trade dress, thereby increasing the likelihood of consumer confusion.
- The modifications were merely superficial and constituted a calculated attempt to circumvent the interim injunction.
- A party restrained by an injunction is expected to maintain a “safe distance” from the prohibited mark rather than adopt confusingly similar alternatives.
- The defendant’s subsequent trademark registrations had been obtained without disclosing the subsisting interim injunction to the Registrar and therefore deserved no protection.
Respondent’s Arguments
The defendant argued that:
- It had fully complied with the interim order by replacing the impugned words with materially different trademarks.
- The original injunction concerned only the specific word marks and did not extend to trade dress or packaging, which had never been pleaded in the suit.
- Since the constituent words of the plaintiff’s trademarks were generic or descriptive, the plaintiff was entitled only to a narrow monopoly.
- The defendant had lawfully secured registration of the modified trademarks.
- Proceedings under Order XXXIX Rule 2A, being quasi-criminal in nature, required proof of wilful and deliberate disobedience, which was absent in the present case.
Analysis of the Law
The Court examined:
- Order XXXIX Rule 2A of the Code of Civil Procedure;
- the distinction between proceedings under Order XXXIX Rule 2A and contempt jurisdiction under the Contempt of Courts Act, 1971;
- principles governing deceptive similarity in trademark law;
- the “safe distance” principle applicable to parties restrained by injunctions.
The Court held that Order XXXIX Rule 2A is primarily intended to secure compliance with interim injunctions, preserve the subject matter of the litigation and restore the status quo, rather than merely punish the alleged violator.
The Court further observed that a defendant restrained by an injunction cannot attempt to come as close as possible to the prohibited mark through insignificant or cosmetic alterations.
Precedent Analysis
The Court relied upon several authorities, including:
- Pidilite Industries Ltd. v. Raghunath Chemicals & Ors. — recognising the “safe distance” principle, requiring restrained parties to keep a clear distance from protected marks.
- Ruston & Hornsby Ltd. v. Zamindara Engineering Co. — addition or substitution of words does not avoid infringement where deceptive similarity continues.
- Rana Steels v. Ran India Steels Pvt. Ltd. — deceptive similarity must be assessed from the overall commercial impression.
- M/s Apex Laboratories Pvt. Ltd. v. Axis Life Sciences — phonetic similarity can constitute infringement.
- Lupin Ltd. v. Johnson & Johnson — registration obtained in questionable circumstances does not necessarily shield an infringing mark.
- Food Corporation of India v. Sukh Deo Prasad, UC Surendranath v. Mambally’s Bakery, Samee Khan v. Bindu Khan, and Sitaram v. Ganesh Das — explaining the scope and object of proceedings under Order XXXIX Rule 2A CPC and distinguishing them from contempt jurisdiction.
Court’s Reasoning
The Court found that although the defendant had substituted “Chinese” with “Spicy”, the overall structure of the trademarks remained substantially similar. The words “White”, “Pepper Masala”, the sequence of expression, and the phonetic similarity between “Chinese” and “Spicy” created an overall commercial impression that remained deceptively similar to the plaintiff’s registered marks.
The Court held that the defendant had not maintained the required “safe distance” from the plaintiff’s protected trademarks and had instead attempted to test the limits of the interim injunction through minimal changes.
The Court also observed that the defendant had obtained registration of the modified marks without disclosing the subsisting interim injunction before the Registrar, thereby weakening any reliance on such registration.
However, the Court distinguished proceedings under Order XXXIX Rule 2A CPC from contempt proceedings under the Contempt of Courts Act. Holding that the principal objective of Rule 2A is to secure obedience to interim orders rather than punish parties, the Court declined to impose attachment of property or civil imprisonment. Instead, it considered remedial directions sufficient to ensure future compliance with the interim injunction.
Conclusion
The Bombay High Court held that the defendant’s modified trademarks remained deceptively similar to the plaintiff’s protected marks and failed to maintain the “safe distance” required under the earlier interim injunction.
Accordingly, the Court allowed the application to the extent of directing the defendant to discontinue the offending marks and comply with the interim injunction. The Court clarified that proceedings under Order XXXIX Rule 2A CPC are intended primarily to enforce compliance with interim orders rather than punish parties, and therefore declined to order attachment of property or civil imprisonment in the facts of the case.
Case Details
Case: Sky Enterprise Private Limited v. Abaad Masala & Co.
Court: Bombay High Court (Commercial Division)
Case Number: Interim Application (L) No. 2372 of 2025 in Commercial IP Suit No. 279 of 2020
Judge: Hon’ble Justice Somasekhar Sundaresan
Date: 03 August 2026
Result: Interim application partly allowed. The Court held that the defendant’s modified trademarks failed to maintain the required safe distance from the plaintiff’s protected marks, directed compliance with the earlier interim injunction, and declined to impose attachment or civil imprisonment under Order XXXIX Rule 2A CPC, preferring remedial directions.
