Delhi High Court Refuses To Stay Ching’s Trade Mark Registration For “Schezwan Chutney”

In a rectification petition filed by Vimal Agro Products seeking cancellation of Ching's Secret owner Capital Foods' registered trade mark “SCHEZWAN CHUTNEY”, the Delhi High Court refused to grant stay over the impugned registration.

The order was passed by the Bench of Justice Pratibha M. Singh, while noting that a Division Bench of the Delhi High Court in Capital Foods Private Limited v. Radiant Indus Chem Pvt. Ltd., has prima facie held the mark “SCHEZWAN CHUTNEY” to have acquired secondary significance. It was also observed that an issue of jurisdiction arising in the matter needed to be considered first.

Previously, in Capital Foods Pvt. Ltd. v. Radiant Indus Chem Pvt. Ltd., Justice Navin Chawla of the Delhi High Court had refused to grant interim injunction in favour of Capital Foods on January 11, 2023, holding that the mark “SCHEZWAN CHUTNEY” was descriptive. Although, an ad-interim injunction was granted in connection with trade dress/packaging, reproduction, adoption and imitation of the original works of Capital Foods with respect to its marketing and advertising contents.

On Capital Foods’ appeal, the order passed by Justice Navin Chawla was stayed by a Division Bench of Justice Manmohan and Justice Saurabh Bannerjee, except to the extent it granted ad-interim relief w.r.t. trade dress, etc. While passing its order, the Division Bench had taken into account Capital Foods’ advertisement and sale figures.

Notably, Ching’s Secret owner Capital Foods claims use of mark “SCHEZWAN CHUTNEY” since year 2012 and holds registration for the same in Class 30. The trade mark relates to chutneys, salad, dressing, sauces, snack foods, etc.

To prevent unauthorised use of its mark, Capital Foods had initially filed a suit against Vimal Agro before District Judge, Nasik. Pursuant thereto, defendant-Vimal Agro had sought leave from the Nasik Court u/s 124 of Trade Marks Act to seek rectification of Capital Foods’ registration before the Bombay High Court. Upon obtaining permission however, Vimal Agro moved the Delhi High Court, instead of Bombay. It also filed an interim application for stay over Capital Foods’ registration, in reference whereof the order dated October 11, 2023 came to be passed by Justice Pratibha M. Singh.

In support of its case, Vimal Agro raised two contentions before Justice Pratibha M. Singh: first, that the mark “SCHEZWAN CHUTNEY” is descriptive and generic; and second, that the certificate of registration was granted to Capital Foods without addressing the objections raised by the Registrar of Trade Marks u/s 9 of the Trade Marks Act.

On the other hand, Capital Foods raised an issue of jurisdiction. It contended that a suit was pending between the parties before District Judge, Nasik, wherein the Petitioner had pled that Bombay High Court alone would have jurisdiction to hear cancellation proceedings.

The matter is now listed for consideration of the issue of territorial jurisdiction.

Advocates Sachin Gupta, Ajay Kumar, Manan Mandol, Rohit Pradhan & Gaurangi Sharma appeared for the Petitioner

Senior Advocate Chander M Lall and Advocates Hiren Kamod, Abhinav Bhallab, alongwith a team from Khaitan & Co., Nishad Nadkarni, Ankur Sangal, Asif Navodia, Khushboo Jhunjhunwala, Jaanvi Chopra, Kiratraj Sadana and Shourya Pande appeared for Respondent-Capital Foods

Case Title: Vimal Agro Products P. Ltd. v. Capital Foods P. Ltd. & Anr.

Citation: 2023 LiveLaw (Del) 978

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