The Bombay High Court restrained a rival from using “Tikha Lal” for chilli powder and imposed ₹2 lakh in costs after finding (i) the label used “Tikha Lal” as a trademark, not as a mere descriptor under Section 30(2)(a), and (ii) the defendants had filed fabricated invoices to shore up their story. The Court’s use-vs-use analysis, backed by earlier Bombay HC precedents, is a practical playbook for defeating the “descriptive use” defence.
Who this is for — and the one lesson to remember
- Startup founders & owners: Descriptive words on packaging are not a free pass. If you present them like a brand, courts will treat them like a brand.
- Litigators & in-house counsel: When the defence pleads Section 30(2)(a), scrutinise how the term is used on pack, plead use as a trademark, and press for bad-faith findings where warranted.
- Core takeaway: Function matters more than dictionary meaning. A term becomes infringing when the defendant uses it as a source identifier – prominently, consistently, and as the “badge of origin.”
Case snapshot
- Case: Everest Food Products Pvt. Ltd. v. Shyam Dhani Industries Pvt. Ltd. & Ors., IA No. 1628/2021 in Comm. IPR Suit No. 178/2021
- Court/Bench: Bombay High Court (IPD), R.I. Chagla, J.
- Order date: 2 January 2025 (interim injunction; costs)
- Key holdings: (a) Defendant used “TIKHA LAL” as a trademark, so Section 30(2)(a) did not apply; (b) fabricated invoices warranted adverse inference and costs; (c) similarity analysis attracted Section 29(2)(c) read with 29(3) (presumption of confusion for identical/similar marks/goods).
The defence—and why it failed
What the defendants argued
They claimed “Tikha Lal” merely describes a kind/quality of chilli powder – i.e., “spicy red” and therefore fell within Section 30(2)(a) (use indicating kind, quality, characteristics). They also pushed “we’ve used it since 2015; no confusion” and other procedural shields.
What the Court actually found (reasoning first)
- Market-facing use was trademark use. The Court looked at the packaging and concluded the rival used “TIKHA LAL” as a mark, not as an incidental descriptor. That instantly takes the case outside Section 30(2)(a), which protects purely descriptive use—not brand use. The Court expressly recorded that “upon a bare perusal of the impugned product,” the visual depiction left “no manner of doubt” that “TIKHA LAL” was a trademark use.
- Defendant’s own filings undercut the defence. The defendant had filed and relied on trademark applications/registrations containing “Shyam Tikha Lal”, and even called it their trademark in affidavits—undermining the claim that “Tikha Lal” was only descriptive. You can’t say “it’s a descriptor” while treating it as your mark. The Court noted this inconsistency and cited estoppel authority.
- Bad faith and fabricated invoices. On evidence, the Court found the rivals fabricated a 2006 invoice by adding “Tikha Lal” to show historic use; the same invoice filed before the Registry did not contain those words. This dishonest conduct further weakened any equitable defence and supported an injunction with costs.
- Doctrinal spine from Bombay HC precedents. The Court relied on Hem Corp. v. ITC (rejecting a “sub-brand/descriptive” plea) and Jagdish Gopal Kamath v. Lime & Chilli (use must be truly descriptive to trigger Section 30(2)(a)). These cases narrow the defence to genuine, good-faith description, not branding.
The result (conclusion)
- Interim injunction granted restraining use of “TIKHA LAL”; ₹2,00,000 costs imposed in light of the fabricated evidence and dishonest conduct.
How courts tell “descriptor” from “brand”: the working test
| Factor | Genuine descriptive use (safe harbour) | Brand use (no safe harbour) |
|---|---|---|
| Placement & prominence | Small, secondary placement; used with your primary brand | Large, bold, badge-of-origin positioning; behaves like the main brand |
| Consistency | Varies with product attributes; not used as a constant identity | Fixed across SKUs; used consistently like a house or product brand |
| Trade mark filings/claims | No applications/claims to exclusivity | Applications/registrations and assertions of exclusive rights |
| Consumer takeaway | Reads as information about kind/quality (e.g., “extra hot”) | Reads as who the product comes from (source) |
| Conduct | Clean record, no intent to ride on rival’s goodwill | Copycat get-up, conflicting affidavits, fabricated documents |
The Tikhalal order walks through these factors and lands squarely on brand use by the defendant.
Flowchart — Beating a Section 30(2)(a) defence
Collect the pack → Prove brand-style use → Expose inconsistencies → Anchor with caselaw → Press for injunction + costs
- Evidence of use on pack: High-res, same-scale images showing size, placement, typography, and visual hierarchy of the impugned term.
- Defendant’s admissions: Retrieve trademark filings, marketing decks, invoices; show they themselves treat the term as a mark.
- Integrity audit: Compare invoices/affidavits across forums (Registry vs Court) to uncover discrepancies.
- Case anchors: Cite Hem Corp. v. ITC (no “sub-brand” dodge) and Jagdish Kamath (Section 30(2)(a) is narrow).
- Ask for reliefs that matter: Injunction; corrective measures (recall/take-downs if apt); costs where dishonesty is proven.
Case timeline (compressed)
- 2000–2002: Everest coins and registers TIKHALAL; continuous use since 2002 (sales/ads record placed).
- 2019–2021: Rival’s “Shyam Tikha Lal” enters; cease-and-desist; suit filed; rival pursues applications including “SHYAM TIKHALAL.”
- 2024: Material placed showing invoice discrepancies; Court notes concerns with honesty.
- 2 Jan 2025: Interim injunction + ₹2 lakh costs; descriptive-use defence rejected as brand use was proven.
Checklist — Plaintiff playbook to flip “descriptor” into infringement
- On-pack story: Capture photos showing brand-like use of the term (size, placement, repetition).
- Admissions file: Pull defendant’s TM filings/affidavits where they describe the term as their mark; argue estoppel.
- Integrity sweep: Cross-check invoices filed in court vs Registry; any “retro-fit” additions should be highlighted.
- Authority pack: Hem Corp. v. ITC; Jagdish Kamath; apply to the facts.
- Relief strategy: Injunction + costs for dishonest conduct; if needed, directions on inventory and take-downs.
Sparring-partner skeptic check
- “But ‘Tikha’ just means ‘spicy’!” True linguistically, but not decisive. The question is how you use it. If it looks, reads, and behaves like your brand, Section 30(2)(a) won’t save you.
- “We never meant to claim exclusivity.” Your trademark applications and packaging may tell a different story and courts will prefer your conduct over your after-the-fact narrative.
- “No confusion shown.” For identical/similar marks on identical goods, Section 29(3) presumes likelihood of confusion; at the interim stage, that’s potent.
About the Author
Suresh Kumar, Advocate, is the Managing Attorney at Unimarks Legal Solutions, Chennai. Practising since 2008, he focuses on trademark infringement and passing off, appeals from the Registrar, rectification, and online/platform enforcement before the Madras High Court (IPD), Commercial Courts, and District Courts across Tamil Nadu. His practice is courtroom-first, grounded in robust pleadings, evidence discipline, and post-order enforcement. He frequently speaks on IP law at industrial forums and universities and is associated with SICCI, CII, and the Tamil Nadu Chamber of Commerce.
Sources: Order dated 2 Jan 2025 (Bombay HC, Everest v. Shyam Dhani): reasoning on trademark use vs descriptive use, dishonest conduct, and reliefs; reportage confirming ₹2 lakh costs. Comparative authorities: Hem Corp. v. ITC (Bombay HC) and Jagdish Gopal Kamath v. Lime & Chilli on the narrow scope of Section 30(2)(a).
This article is for information and education. It is not legal advice, does not create a lawyer–client relationship, and avoids case-specific recommendations. Conflicts are screened per firm policy before any engagement.
