The Ching’s Secret, a brand of the holding company, Capital Foods Private Limited (the plaintiff), is a prominent player in the Indian food industry. It specializes in the production and promotion of a diverse range of food products, including dips, spreads, condiments, sauces, noodles, soups, pastes, dressings, ready-to-eat items, and various other culinary preparations. Notably, Ching’s Secret holds the distinction of pioneering the creation of the unique trademark “SCHEZWAN CHUTNEY” for its line of dips and spreads.
The defendant, Radiant Indus Chem Private Limited, is engaged in the business of manufacture and sale of food products such as jams, culinary sauces, Chinese sauces, mayonnaise, pickles, etc. The defendant submitted that the defendants’ products were sold under the mark “MRS. FOODRITE”, “MEAL TIME” and “MRS. RITE SPICE” and the defendants had obtained trade mark registrations for the same in various classes.
In 2020, the plaintiff came across the sale of the impugned product “MRS. FOODRITE SCHEZWAN CHUTNEY” being sold and offered for sale by the defendant on amazon, the e-commerce website. Additionally, the plaintiff contended that the defendant’s product featured a mark that closely resembled the plaintiff’s “SCHEZWAN CHUTNEY” trademark, indicating a deliberate attempt by the defendant to replicate and infringe the plaintiff’s registered trademark.
Submissions on behalf of the Plaintiff
The plaintiff submitted that the plaintiff’s product and defendant’s product comprised of the various similarities like:
- The defendant had adopted the plaintiff’s coined and registered trade mark “SCHEZWAN CHUTNEY”.
- The defendant’s impugned product, bearing “SCHEZWAN CHUTNEY”, was packaged/labelled in a trade dress/label which was deceptively and confusingly similar to the plaintiff’s “SCHEZWAN CHUTNEY”.
- The overall get-up of the impugned product, such as the packaging style, color combination and scheme of the white, orange, and red, placement of “SCHEZWAN CHUTNEY” on the impugned label, “SCHEZWAN CHUTNEY “represented in two lines in white lettering on the colour combination of orange and red, and placement and arrangement of all essential and descriptive elements, had been copied by the defendant.
The plaintiff also came across the defendant’s page/listing on the social media platform, Facebook, and another product “SZECHUAN CHUTNEY” which was also identical to the plaintiff’s registered trade mark “SCHEZWAN CHUTNEY”. The plaintiff contended that the defendant failed to create original marketing and advertising materials, instead opting to imitate the plaintiff’s copyrighted promotional content. As a result, the plaintiff argued that adopting the “SCHEZWAN CHUTNEY” or “SZECHUAN CHUTNEY” mark constituted a violation of their registered trademark. Furthermore, the plaintiff asserted that the defendant engaged in deceptive practices by passing off their goods as those of the plaintiff.
Submissions on behalf of the Defendant
The defendant submitted that it earlier launched its Schezwan Chutney products under its mark “MRS. FOODRITE” in the year 2016 and had been using the same continuously and uninterruptedly ever since. The defendants contended that the plaintiff could not assert an exclusive claim to the “SCHEZWAN CHUTNEY” mark since it lacked distinctive qualities and merely described the type, quality, characteristics, and geographic origin of the goods being sold. The defendant argued that the plaintiff’s registration of this mark was incorrect. Furthermore, the defendant emphasized that the competing products were discernible due to their respective trademarks, with the plaintiff using “CHING’S SECRET” and the defendant employing “MRS. FOODRITE.” Additionally, the defendant pointed out that other third parties were also marketing their products under the “SCHEZWAN CHUTNEY” mark.
One look at the word ‘Schezwan Chutney’ leaves little to the imagination of a prospective buyer as to what is the kind of product is being sold. The plaintiff’s product is a spicy dip that has been shown to trace its name from the Sichuan/Szechuan territory in China. The Sichuan territory is known to be home to a spicy chilli-based condiment that has been widely adopted as a base ingredient in Chinese foods cooked in India. The word Schezwan or Szechuan, therefore, becomes a direct reference to the Chinese territory. Further, the word ‘Chutney’ is a common Hindi word to refer to dips, sauces, or condiments. As elucidated in the order, a number of manufacturers sell similar food products as the plaintiff by the name of ‘Schezwan Chutney’. An action of infringement of a descriptive trademark is most likely to succeed only in circumstances where the descriptive trademark is far from suggestive of the product in question. The validity of a trademark granted to a descriptive term such as the plaintiff’s trademark as a term describing the food product being sold is therefore questionable here. In the present case, the usage of ‘Schezwan Chutney’ by the defendant is protected by Section 30(2) of the Indian Trade Marks Act, 1999 under which a registered trademark cannot be said to be infringed when the same is being used to indicate the kind, quality, intended purpose, value, geographical origin or other characteristics of the good. Therefore, it is not valid to allow the plaintiff to assert rights on the words ‘Schezwan Chutney’ unless the words may have acquired secondary significance.
A mark being descriptive and generic does not absolutely disbar it from being registered and used, as such marks may be used if they acquire what is termed as secondary significance or secondary meaning. Essentially, it will not be barred under the provisions of Section 9, if it has acquired distinctiveness through secondary meaning. It signifies that a mark may be deemed to distinctive if the mark has become largely recognizable in the public domain as one standing for goods from a particular source, that is; a situation where the mark and the product have become synonymous with the source / origin of the product.
The same cannot be proven conclusively, especially in the light of the fact that, as the court recognized in Capital Foods Private Limited v. Radius Indus Chemical Private Limited, there exist several brands and companies selling their products labelled as Schezwan Chutney. When there exists such a large inflow of products as the impugned product and mark, and especially when such products have largely been introduced in the early years of Ching’s Secret’s Schezwan Chutney, it would be difficult to conclusively prove a status of synonymity between the mark and the source of the product bearing the mark.
A great example of a mark acquiring secondary meaning, is the trade mark ‘Apple’ as in the US based smartphone (and other devices) giant, which, although in ordinary meaning only refers to the fruit, has acquired such status to the effect that the expression ‘Apple’ no longer merely means what it used to, and at least the second thought that occurs to any ordinary user when hearing the expression ‘Apple’, is the smartphone giant. The firm in this case, Ching’s Secret, therefore, has not acquired such a secondary meaning for its mark, that is; Schezwan Chutney.
The issue before this Court was “whether the mark “SCHEZWAN CHUTNEY’ was descriptive of the product in question?”.
The Court opined that “SCHEZWAN CHUTNEY” depicted “CHUTNEY” (sauce) which had a “SCHEZWAN” flavor and if protection was to be granted to such a mark, then similar protection should also be granted to ‘Tamarind Chutney’ or ‘Tomato Chutney’ as they were also combinations of words in English and Hindi. The words “SCHEZWAN CHUTNEY” also satisfied the second test suggested by ‘McCarthy on Trade Marks’, which was “The Competitors Need Test” which meant that the competitors were likely to use these two words to describe their product”.
The Court noted that from the plaintiff’s advertisements, it appeared that the words “SCHEZWAN CHUTNEY”, though used prominently, were used by the plaintiff to describe the product, and the mark which identified its source was, in fact, “Ching’s Secret” and even though the plaintiff submitted that the mere use of the house mark by the parties, in the present case “Ching’s” for the plaintiff and “MRS. FOODRITE” for the defendant, was not sufficient to defeat the plaintiff’s claim of infringement or passing off, still, the Court opined that it was use of these house marks that distinguish the source of the goods, while the words “SCHEZUAN CHUTNEY” identified the nature of the product.
The Court further held that the adoption of the mark “SCHEZWAN CHUTNEY” by the defendant could not said to be dishonest and therefore, the claim of the plaintiff for grant of an ad interim injunction against the defendant from using the mark “SCHEZWAN CHUTNEY” or “SZECHUAN CHUTNEY” was rejected. However, the Court held that the ad interim order passed in Capital Food (P) Ltd. v. Radiant Indus Chem (P) Ltd., was made absolute and would operate during the pendency of the suit.