Court’s decision
The Delhi High Court, through Justice Prathiba M. Singh, granted an injunction restraining the defendant from using the trademark “SACHAMOTI” for tapioca sago and related edible products, holding that the plaintiff had acquired distinctiveness and secondary meaning in the mark through decades of continuous use and extensive market presence.
The Court rejected the defendant’s argument that “SACHAMOTI” was a purely descriptive or generic term, observing that even if a mark has descriptive origins, it can become distinctive by long and uninterrupted association with a single trader. The defendant’s use of an identical mark for the same goods was therefore held to be dishonest and deceptive.
“Descriptive or suggestive marks, when used consistently over time, can cross the line into distinctiveness — the market begins to associate the term exclusively with a single source.”
Facts
The plaintiff, a long-established food manufacturer and marketer, has been producing and selling tapioca sago under the trademark “SACHAMOTI” since 1962. The mark was duly registered under Class 30 for sago and related food items. Over the years, the plaintiff’s brand SACHAMOTI became a household name, sold across India and abroad, with distinctive packaging and labelling.
In early 2024, the plaintiff discovered that the defendant had begun marketing identical tapioca sago under the mark “SACHAMOTI TAPIOCA SABUDANA”, using similar packaging and trade dress. The plaintiff issued a legal notice demanding cessation of use. The defendant refused, claiming that the word “SACHAMOTI” merely described a “large pearl” in Hindi and was therefore generic.
The plaintiff filed the present suit seeking permanent injunction, damages, and rendition of accounts, alleging trademark infringement, passing off, and unfair competition.
Issues
- Whether the trademark “SACHAMOTI” is descriptive or generic and thus incapable of protection.
- Whether the mark had acquired secondary distinctiveness through long use.
- Whether the defendant’s use of “SACHAMOTI” for identical goods constituted infringement and passing off.
Petitioner’s arguments
The plaintiff argued that “SACHAMOTI” was not a descriptive word but a coined expression created in 1962 and used continuously since then. It was submitted that, even if the term originated from common language, its association with tapioca sago produced by the plaintiff had become exclusive due to more than six decades of use, advertising, and recognition.
Counsel pointed out that SACHAMOTI is registered under the Trade Marks Act, 1999 and that registration itself carries a presumption of validity under Section 31(1). The plaintiff had spent significant sums on advertising and built substantial goodwill. The defendant’s adoption of the mark for identical products, with similar packaging and trade channels, was argued to be deliberate and dishonest, intended to ride upon the plaintiff’s reputation.
The plaintiff further argued that descriptiveness cannot be claimed by one who knowingly imitates another’s mark. Even if SACHAMOTI means “large pearl,” its exclusive association with sago makes it distinctive within the industry.
Respondent’s arguments
The defendant contended that the word “SACHAMOTI” is derived from Hindi words meaning “pure pearl” or “large pearl,” which are descriptive of the size and appearance of sago granules. Therefore, it was argued, the term is generic and incapable of exclusive ownership.
It was further submitted that the plaintiff cannot monopolize a common expression used in trade, and that descriptive words cannot be registered or enforced unless proven to have acquired distinctiveness. The defendant claimed bona fide adoption, asserting that multiple other traders use SACHAMOTI for similar goods. It also argued that the plaintiff’s registration should not bar honest descriptive use under Section 30(2)(a) of the Act.
The defendant therefore sought dismissal of the injunction application, arguing lack of exclusivity and public interest in keeping descriptive words free for all traders.
Analysis of the law
The Court examined the statutory framework under Sections 9(1)(b), 29, and 31 of the Trade Marks Act, 1999. Section 9(1)(b) bars registration of marks descriptive of quality, intended purpose, or characteristics of goods, unless they have acquired distinctiveness. However, Section 31(1) creates a presumption of validity for registered marks, placing the burden on the defendant to prove otherwise.
Justice Singh observed that descriptiveness must be determined in relation to the goods and the relevant class of consumers. While “sacha” and “moti” have dictionary meanings, the combined expression SACHAMOTI was held to be suggestive rather than directly descriptive. Even otherwise, long and continuous use since 1962, coupled with voluminous sales and advertising, had rendered the mark distinctive of the plaintiff’s goods.
The Court relied on settled principles that secondary meaning arises when the public primarily associates a term with one producer rather than the product itself.
Precedent analysis
- Godfrey Phillips India Ltd. v. Girnar Food & Beverages (2005) 30 PTC 1 (SC) – The Supreme Court held that even descriptive terms can be protected if they have acquired a secondary meaning identifying the product’s source.
- Automatic Electric Ltd. v. R.K. Dhawan (1999 PTC 81) – The Delhi High Court held that when a defendant itself uses a descriptive mark as a trademark, it cannot later claim that the term is generic.
- Bikanervala Foods Pvt. Ltd. v. New Bikanerwala (2004 28 PTC 395 Del) – Held that extensive use can convert even geographical or descriptive terms into protectable trademarks.
- Marico Ltd. v. Agro Tech Foods Ltd. (2010 174 DLT 279) – Recognized that the test for descriptiveness is consumer perception, not etymology.
Applying these precedents, the Court held that SACHAMOTI had crossed the threshold into distinctive recognition, and any imitation of it was legally impermissible.
Court’s reasoning
Justice Singh emphasized that even if SACHAMOTI originally described the product’s appearance, sixty years of exclusive use had established a strong nexus between the mark and the plaintiff’s business. The defendant’s use of the same mark for identical goods could only cause confusion.
The Court noted that the defendant’s sales and packaging were targeted to the same customer base and retail outlets, increasing the likelihood of deception. The defence of descriptive use under Section 30(2)(a) was rejected since the defendant’s use was clearly as a trademark, not as a description.
“The defendant’s own conduct — using the impugned word prominently as a source identifier — negates any claim of bona fide descriptive use.”
Finding that the balance of convenience favoured the plaintiff and that continued use by the defendant would irreparably damage the plaintiff’s goodwill, the Court granted a permanent injunction.
Conclusion
The Delhi High Court restrained the defendant from manufacturing, selling, advertising, or dealing in tapioca sago or any similar goods under the mark SACHAMOTI or any deceptively similar expression. The Court held that the plaintiff’s mark had acquired secondary distinctiveness, entitling it to protection under the Trade Marks Act, 1999.
The injunction was made absolute, with the Court observing that consumer confusion was inevitable, and the defendant’s adoption was neither bona fide nor honest. The order reaffirmed that even descriptive or suggestive marks can evolve into strong trademarks through long-term, exclusive use.
Implications
This judgment strengthens trademark protection for legacy Indian brands whose marks may have originated from everyday language but have since become distinctive through sustained use. It clarifies that genericness is determined contextually, and traders cannot use “descriptive defence” as a shield after knowingly imitating a registered mark.
The ruling reinforces the doctrine of secondary meaning in Indian trademark law and sets a valuable precedent for food and FMCG businesses facing imitation by late entrants using descriptive-sounding brand names.