Bombay High Court Restrains Entity From Infringing Everest's Tikhalal Trademark, Slaps ₹2 Lakh Fine For Fabricating Sales Invoice

The plaintiff, Everest Food Products Private Limited said that it is engaged in the manufacture and sale of mirchi, spices and dry fruits and had secured the registration for the trademark 'TIKHALAL' in 2002. Everest Food stated that since 2002, it has continuously and extensively used the mark TIKHALAL in respect of its goods, acquiring tremendous goodwill and reputation.

It stated that in 2019, it came across Shyam Dhani Industries Pvt. Ltd's (defendant) packets of 'SHYAM TIKHA LAL' chilli powder. On enquiry, Everest Food found that the defendants had secured the trademark registration for 'SHYAM TIKHA LAL' mark.

Subsequently, Everest Food filed a Rectification Application before the Registrar of Trade Marks to cancel the defendant's trademark registration. The Rectification application is pending. Everest Food sent a Cease and Desist Notice to the defendants, but they did not reply. It thus filed a suit against the defendants for trademark infringement and passing off.

In its interim application, Everest Food submitted that the defendants attempted to mislead the Court by producing false and fabricated sales invoices along with their affidavit in reply to show their alleged use of the impugned trade mark.

Everest Food submitted that the defendants submitted certain sale invoices for trade mark applications of 8 marks containing the word 'SHYAM'. It stated that these sales invoices are identical to the sales invoices produced in their affidavit in reply, except for some glaring discrepancies in the description of the goods stated in these invoices.

Justice R.I. Chagla was of the view that the defendant's conduct was dishonest and that they deliberately fabricated false sales invoices. It said:

“Having considered the rival submissions, in my view, the Defendants' conduct in the present case has been nothing but dishonest. Prima facie the Defendants have placed reliance upon false and fabricated Sales Invoices which have been annexed with the Affidavit-in-Reply and which have been referred to as part of the submissions of the Plaintiff. The Defendants in my prima facie view have deliberately fabricated Sales Invoices including Sales Invoice…by adding the words “TIKHA LAL” and produced the same before this Court in an attempt to falsely show their use of the impugned trade mark “TIKHA LAL” to mislead this Court.”

However, the defendants argued that there was a misprint caused by an error of computer software and thus the impugned trade mark TIKHA LAL is absent in the sales invoice filed along with the trade mark applications.

The Court however noted that the two affidavits filed by the defendants were contradictory and that no sufficient explanation was provided concerning the discrepancies.

It remarked, “Thus, in view of this dishonest case, the Defendants' defence to the Interim Application itself is required not to be considered. The Plaintiff is entitled to interim reliefs on this ground alone.”

The defendants also contended that the use of the word 'Tikhalal' is being used for 'chilli powder' and thus is a “characteristic of goods” and not a trademark. The defendants thus argued that since it is a characteristic of goods, no infringement action is maintainable as per Section 30(2)(a) of the Trademark Act.

However, the Court noted that the defendants could not prove that they were using 'TIKHA LAL' as “characteristics of its goods”, i.e. as 'Chilly Powder'.

It noted that the visual depiction of the impugned product indicates that the defendants are using TIKHA LA' in the sense of a trademark.It observed that as the defendants filed the trade mark application for 'SHYAM TIKHALAL', they are estopped from contending that they are using it in the trade mark sense. The Court stated that the impugned mark is likely to cause confusion and deception among the public and members of trade.

Observing that Everest Food established that it has acquired immense goodwill and reputation in the “TIKHALAL” trade mark, it stated “There is likelihood of injury to the goodwill and reputation that has been painstakingly acquired by the Plaintiff in its said trade mark “TIKHALAL” and the goods bearing the same.”

It also noted that the defendant's trade mark registration would not prevent it from granting interim relief in favour of Everest Food. It stated that the defendants trade mark registration was prima facie “illegal, fraudulent and of a nature that would shock the conscience of the Court.”

The Court thus found that Everest Food made out a prima facie case for grant of temporary injunction. The Court therefore restrained the defendants from using, depicting, adopting, or affixing the name TIKHA LAL or any other mark which is identical or deceptively similar or phonetically similar to Everest Food's trademark pending the final disposal of the main suit. 

It also restrained the defendants from manufacturing, packaging, selling or advertising the impugned product or any other product with the name TIKHA LAL in any manner, till the suit is disposed of. 

Further, the Court imposed a cost of Rs.2,00,000 on the defendants for fabrication of sales invoice and discrepancies in the affidavits, to be paid to Everest Foods in four weeks.

Case title: Everest Food Products Private Limited vs. Shyam Dhani Industries Pvt. Ltd. & Ors. (Interim Application No. 1628 Of 2021 In Commercial IPR Suit No.178 Of 2021)