The Bombay High Court, while disposing of an interim application under Order XXXIX Rule 2A of the CPC, held that merely substituting words in a contested trademark does not constitute compliance with an earlier injunction. The judgment refines the scope of the "safe distance" principle and sets out remedial directions that avoid punitive attachment or civil imprisonment.
Background & Facts
The Dispute
Sky Enterprise Private Limited ("Sky") owns a portfolio of registered trademarks for masala powders, including the distinctive four-word combinations “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”. On 8 January 2020 a learned Single Judge of this Court issued an interim injunction restraining Abaad Masala & Co. ("Abaad") from using those marks or any identical or deceptively similar marks in connection with its goods. Abaad subsequently adopted the marks “Frize White Spicy Pepper Masala” and “Frize Black Spicy Pepper Masala”, arguing that the change satisfied the injunction.
Key Facts
- 2012: Sky registers the word marks “Star Zing White Chinese Pepper Masala” and “Star Zing Black Chinese Pepper Masala”.
- 2016-2017: Additional class-30 marks such as “White Chinese Pepper Curry Powder” are registered.
- 8 January 2020: Interim injunction issued restraining use of “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”.
- January 2025: Abaad registers the new marks “Frize White Spicy Pepper Masala” and “Frize Black Spicy Pepper Masala” without disclosing the interim order.
- 2025: Interim Application (L) No. 2372 of 2025 filed invoking Order XXXIX Rule 2A CPC alleging contempt and wilful disobedience of the 2020 injunction.
- 3 August 2026: Judgment delivered.
Procedural History
- 8 Jan 2020: Interim injunction granted in Commercial IP Suit No. 279 of 2020.
- 2025: Abaad files the interim application under Order XXXIX Rule 2A, claiming compliance.
- 3 Aug 2026: Single Judge SOMASEK HAR SUNDARESA N delivers the judgment.
Parties' Positions
- Sky (Plaintiff): Argues that the replacement of “Chinese” with “Spicy” and the addition of the prefix “Frize” are merely cosmetic, constitute wilful disobedience, and continue to create deceptive similarity.
- Abaad (Defendant): Contends that the new marks are distinct, that the injunction only covered the exact four-word combinations, and that the application should be limited to the specific words restrained.
Relief Sought
Sky sought: (i) continuation of the injunction against the new marks, (ii) an affidavit disclosing quarterly sales and inventory, (iii) destruction of all packaging bearing the new marks, and (iv) directions to prevent further de minimis variations. Abaad sought: (i) declaration that the interim order does not cover the new marks, (ii) dismissal of the Order XXXIX Rule 2A application, and (iii) permission to continue using the revised marks.
The Legal Issue
Does the substitution of “Chinese” with “Spicy” and the addition of the prefix “Frize” satisfy the compliance requirement of the interim injunction dated 8 January 2020, thereby negating the applicability of Order XXXIX Rule 2A CPC for contempt? Additionally, what standard of proof applies when determining wilful disobedience under this provision?
Arguments Presented
For the Plaintiff
- Relied on the learned Single Judge’s finding that the four-word combination had acquired secondary meaning and was protected.
- Cited Pidilite Industries Ltd. v. Raghunath Chemicals (safe-distance principle) and Rana Steels v. Ran India Steels (deceptive similarity test).
- Asserted that the new marks are merely a “de minimis” alteration designed to evade the injunction, demonstrating wilful contempt.
For the Defendant
- Submitted that the interim order expressly restrained only the exact phrases “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”.
- Argued that the new marks are distinct in wording and that the order does not extend to trade-dress or packaging.
- Relied on U.N. Bora v. Assam Roller Flour Mills (where two interpretations exist, contempt cannot be invoked) and emphasized lack of criminal intent.
The Court's Analysis
The Court first reiterated that Order XXXIX Rule 2A CPC is a coercive provision intended to enforce interim orders, not a criminal contempt provision. It emphasized that the standard of proof for a finding of wilful disobedience is a high civil standard - pre-ponderance of probability with a degree commensurate with the stigma of contempt - rather than the criminal “beyond reasonable doubt” test.
"The Interim Order clearly stipulates that Abaad must not directly or indirectly use the words ‘White Chinese Pepper Masala’ or ‘Black Chinese Pepper Masala’ or any other identical or deceptively similar trade marks…" (para 49).
The Court applied the safe distance principle, noting that merely replacing “Chinese” with “Spicy” and adding the prefix “Frize” does not create a sufficient gap from the protected marks. The judgment observed that the phonetic similarity and the retention of the initial “White/Black” and terminal “Pepper Masala” render the new marks deceptively similar, satisfying the test for infringement and passing-off as articulated in Ruston & Hornsby Ltd. v. Zamindara Engineering Co..
The Court distinguished the present scenario from cases where the interim order creates a novel obligation; here the obligation was explicit and unambiguous. Consequently, the Court found a clear breach and held that the “wilful” element was satisfied, but cautioned against imposing the harshest sanctions of attachment or civil imprisonment where less coercive remedies would achieve compliance.
In line with Samee Khan and FCI precedents, the Court opted for remedial directions under Section 151 CPC - requiring affidavits, destruction of infringing packaging, and a four-week deadline for financial disclosures - while reserving the power to attach property only upon continued non-compliance.
The Verdict
The Court held that Abaad’s adoption of “Frize White Spicy Pepper Masala” and “Frize Black Spicy Pepper Masala” does not constitute compliance with the 8 January 2020 interim injunction. Accordingly, it:
- Re-imposed an injunction restraining Abaad from using the two new marks.
- Prohibited any further de minimis variations that are not clearly distinct from Sky’s registered marks.
- Directed Abaad to file an audited financial affidavit covering quarterly sales, inventory, and production details within four weeks of the judgment.
- Ordered destruction of all packaging and promotional material bearing the new marks within eight weeks of the judgment.
- Stated that failure to comply will invite attachment of Abaad’s property by the Court Receiver.
- Declared that no civil imprisonment or attachment will be ordered at this stage.
What This Means For Similar Cases
Compliance Must Be Substantive
Practitioners must ensure that any alteration to an infringing mark goes beyond superficial word changes; merely swapping a single word or adding a prefix is unlikely to satisfy a court-imposed safe-distance requirement.
Order 39 Rule 2A Is Not a Criminal Penalty
The provision is civil in nature; the standard of proof is a heightened civil test, not the criminal “beyond reasonable doubt”. Courts will prefer remedial orders under Section 151 CPC before resorting to attachment or imprisonment.
Affidavit and Destruction Directions as Preferred Remedies
When a breach is established, courts may order detailed financial disclosures and the destruction of infringing material as proportionate means to enforce compliance, reserving coercive powers for persistent defiance.
- File comprehensive affidavits within the stipulated period.
- Destroy all infringing packaging promptly to avoid attachment.
- Anticipate that courts will scrutinise the substance of any “new” marks against the original injunction.
