Case Note & Summary
The plaintiff Sky Enterprise Private Limited filed an interim application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908, alleging contempt of an interim order dated January 8, 2020, passed in Commercial IP Suit No. 279 of 2020. The suit pertained to trademark infringement and passing off, where the plaintiff claimed rights in registered marks including 'Star Zing White Chinese Pepper Masala' and 'Star Zing Black Chinese Pepper Masala'. The interim order restrained the defendant Abaad Masala & Co. from using 'White Chinese Pepper Masala', 'Black Chinese Pepper Masala', or any identical or deceptively similar marks. The defendant, a business rival from a breakaway family faction, initially used 'Star King' as a prefix, but after the order switched to 'Frize' and adopted 'White Spicy Pepper Masala' and 'Black Spicy Pepper Masala'. The plaintiff argued that this was a deliberate and contumacious violation of the injunction, emphasizing that the defendant replicated substantial elements of trade dress including colour schemes, design, and packaging layout, thereby confusing consumers. The defendant contended that the new marks were completely different, that the plaintiff had not originally pleaded trade dress, that the interim order only protected the specific four-word combination, and that the marks were descriptive and entitled to narrow protection. The defendant also argued that contempt was not maintainable because two views were possible regarding the scope of the injunction, and the defendant had voluntarily made further changes to its packaging. The court analyzed the contentions, noting that the interim order had been passed on the basis that the combination of generic words had acquired distinctiveness. The court highlighted that in contempt jurisdiction, the enquiry must be confined to whether the order was wilfully disobeyed, and that where two interpretations are possible, wilfulness may be absent. The excerpt of the judgment available stops at the beginning of the court's analysis of the factual matrix, with the final decision not present in the provided text. Therefore, the ultimate outcome of the application is not mentioned.
Headnote
A) Intellectual Property Law - Trademarks - Distinctiveness from Unique Combination of Generic Words - Trade Marks Act, 1999 - The protection of a trademark may arise not from individual generic words but from the particular distinctive combination and order of those words, especially when not commonly used in the trade to describe goods and when they have acquired secondary meaning and reputation. Held that the combination 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' as used by plaintiff had acquired distinctiveness and association with plaintiff's goods. (Paras 3-4)
B) Civil Procedure - Contempt of Court - Scope of Enquiry Under Order XXXIX Rule 2A CPC - Code of Civil Procedure, 1908, Order XXXIX Rule 2A - In contempt proceedings alleging violation of an interim order, the court must limit its enquiry to whether the respondent has wilfully disobeyed the order's terms, and cannot expand the scope of the original suit by considering issues not decided in the interim order. (Para 10)
C) Civil Procedure - Contempt of Court - Wilfulness and Multiple Interpretations - Code of Civil Procedure, 1908, Order XXXIX Rule 2A - Where two interpretations of the order are possible, the element of wilfulness necessary for contempt is negated, and contempt proceedings are not maintainable, as held in Dr. U. N. Bora v. Assam Roller Flour Mills Association. (Para 13)
Issue of Consideration
Whether the defendant's use of 'Frize White Spicy Pepper Masala' and 'Frize Black Spicy Pepper Masala' constitutes wilful disobedience of the interim order restraining use of 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' or any identical or deceptively similar marks, and whether the scope of contempt proceedings permits examination of trade dress issues not originally pleaded.
Law Points
- distinctiveness from combination of generic words
- secondary meaning
- scope of contempt jurisdiction limited to terms of order
- wilfulness required for contempt
- multiple interpretations negate contempt
- duty to maintain safe distance from protected mark
Case Details
2026 LawText (BOM) (08) 4
Interim Application (L) No. 2372 of 2025 in Commercial IP Suit No. 279 of 2020
Somasekhar Sundaresan, J.
Mr. Sanjeev Singh, Shivani R. Bindra, Shailesh Rai for Plaintiff; Mr. Anand Mohan, Himanshu V., Pooja Shah for Defendant
Sky Enterprise Private Limited
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Nature of Litigation
Contempt application under Order XXXIX Rule 2A CPC for alleged disobedience of interim injunction in a commercial IP suit.
Remedy Sought
Applicant/Plaintiff seeks enforcement of interim order and action against Defendant for contempt for wilful disobedience.
Filing Reason
Defendant allegedly adopted new marks 'Frize White Spicy Pepper Masala' and 'Frize Black Spicy Pepper Masala' which are claimed to be deceptively similar to Plaintiff's registered marks, in defiance of the interim injunction.
Previous Decisions
Learned Single Judge passed Interim Order dated 2020-01-08 restraining Defendant from advertising, displaying, or using 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' or any identical or deceptively similar marks, and from passing off.
Issues
Whether use of 'Frize White Spicy Pepper Masala' and 'Frize Black Spicy Pepper Masala' by the Defendant amounts to wilful disobedience of the Interim Order under Order XXXIX Rule 2A CPC.
Whether the scope of contempt proceedings is limited to word marks or extends to trade dress and packaging.
Whether the Defendant's adoption of new marks with 'Spicy' instead of 'Chinese' constitutes a deceptive similarity to Plaintiff's registered marks as per the Interim Order.
Whether the Defendant's contention that no confusion arises due to different market channels is relevant in contempt jurisdiction.
Submissions/Arguments
Plaintiff: Defendant's use of 'Spicy' marks with similar trade dress is wilful disobedience; Defendant must keep a safe distance; Defendant's conduct is contumacious; replication of colour schemes, design motifs, packaging layout, font style, word arrangement, graphic elements exacerbates consumer confusion; minimal alterations show deliberate attempt to copy.
Defendant: No breach; Plaintiff never raised trade dress in plaint; scope of contempt limited to word marks in Interim Order; Defendant voluntarily adopted further changes; new marks are completely different; Interim Order only protects unique four-word combination; Plaintiff's marks are inherently vulnerable and have narrow protection; where two views are possible, wilfulness vanishes; Defendant is registered proprietor of new marks.
Ratio Decidendi
Each individual word may be generic, but the particular distinctive combination and order that is not generally used in trade can acquire distinctiveness and protection. In contempt jurisdiction, enquiry must be confined to wilful disobedience of the order as it stands; the court cannot expand the suit's scope. Where two interpretations of the order are possible, the element of wilfulness is negated, and contempt is not maintainable.
Judgment Excerpts
each individual word forming part of the registered Trade Mark may well have been a generic or descriptive word over which proprietary rights could not be claimed, but no rival trader ought to use the particular distinctive combination or order in which Sky uses those words in its registered Trade Mark to distinguish its goods. (Para 3)
the particular combination and order are not generally used in the trade for describing the character or quality of goods. (Para 4)
in the contempt jurisdiction, the Court must not enter into questions which have not been dealt with and decided in the Interim Order (Para 10)
where two views are possible, the element of wilfulness would vanish (Para 13)
Procedural History
Plaintiff filed Commercial IP Suit No. 279 of 2020 for trademark infringement and passing off. On 2020-01-08, a Learned Single Judge passed an Interim Order restraining Defendant from using the impugned marks. In 2025, Plaintiff filed Interim Application (L) No. 2372 of 2025 under Order XXXIX Rule 2A CPC alleging contempt of the Interim Order by Defendant's use of new marks 'Frize White Spicy Pepper Masala' and 'Frize Black Spicy Pepper Masala'.
Acts & Sections
- Code of Civil Procedure, 1908: Order XXXIX Rule 2A
