Rights over the mark ‘Tasty Gold' are being asserted by Sri Tulasi Industries (Tulasi) against Sri Sapthagiri Industries and Ors (SSI) for using the mark 'Tasty Drops' for edible oil. At the time of admission, an ex parte interim injunction was granted by the District Court (Mahabubnagar). The injunction was set aside by the District Court after hearing both parties. Tulasi has now filed an appeal before the High Court of Telangana. The post discusses the High Court decision in the Appeal.

Tulasi’s contentions:

1. They deal in edible oils under the trademark 'Tasty Gold' sold since 2000. The mark is registered in class 29 since 2016.
2. They use an artistic label for pouches in which they own copyright.
3. They spend a considerable amount of money on promoting its product and have acquired goodwill and reputation in the market.
4. SSI is new to the edible oil industry, and their application for the mark 'Tasty Drops' has been refused by the Trademark Registry.
5. On noticing SSI selling edible oil under the mark ‘Tasty Drops' using similar pouches they addressed cease and desist letter; however, SSI did not act upon it.

SSI contentions:

1. They manufacture and market edible oils under the trademarks ‘Tasty Drops' and 'Tasty Plus+.'
2. Tasty is a descriptive word, and Tulasi cannot claim exclusivity over the same. The suffixes' Drops, Plus+' are different and not similar to 'Gold' of Tulasi.
3. The word 'Tasty' indicates the characteristics of the goods being cooked using the oil, and the word 'Gold' also indicates the quality of the product and, thus, is not distinctive.

High Court Ruling 

1. From the pleadings and perusing the materials on record, it cannot be concluded that Tulasi failed to establish use of the mark ‘Tasty Gold’ from the year 2000. Moreover, 'Tasty Gold' is a registered trademark.
2. Admittedly, Tulasi has been manufacturing and marketing edible oils since the year 2000 under the mark ‘Tasty Gold’. On the other hand, SSI commenced business in edible oils and applied for registration of the trade mark in 2018.
3. Further, SSI manufactures and markets the product in the same place, within the same area/locality. Thus, at this stage, it cannot be said that there is no goodwill gained by Tulasi in the edible oil business since the year 2000, and SSI is trying to ride on such goodwill. Prima facie, it cannot be said that there is no loss that is being caused to Tulasi though the measure of loss is a matter which is required to be established in the trial.
4. In the instant case, the learned District Judge failed to consider the aspects of balance of convenience, irreparable loss and was content with dismissing the interlocutory application holding that there is no prima facie case made out. Having regard to the facts placed on record, the High Court concluded that there are certain similarities between the registered trademark/label of Tulasi and the mark used by SSI. Tulasi being a prior user of the trademark, balance of convenience is in their favour for the continuation of the injunction.

Thus, the High Court set aside the order of the District Court and restored the injunction till the disposal of the case.

Authors

Ranjan Narula
Managing Partner
RNA, Technology and IP Attorneys
Board Member, International Trademark Association (INTA)

Ranjan founded the specialist IP law firm, RNA, in 2004, and is now its Managing Partner. He has twenty seven years’ post qualification experience working on contentious and non-contentious IP and Technology issues. Ranjan has been practicing as an advocate and patent attorney since 1991 handling a wide range of IP, IT and Technology matters including IP management issues, strategic advice on IP clearance, acquisition, and enforcement. Ranjan has worked in-house and in private practice including a stint with international IP practice heading its India operations. In 2019, Ranjan was invited to join the INTA, Board of Directors.

Ranjan has been ranked as a leading IP practitioner by various publications including WTR 1000, IP Star (Managing IP), WIPR leaders, Who’s Who legal, Asia IP experts and others. Ranjan is regularly invited to speak by Universities and chamber of commerce on IP issues. He has authored several articles and papers on key IP issues that are published by IP magazines and blogs such as IAM, World Trade Mark Review, Bloomberg, Lexology, IP Kat etc.

Mohandas Konnanath
Managing Associate

Mohandas Konnanath is a Managing Associate at RNA, IP Attorneys. He joined the bar in 1995. Mohandas is a dual qualified lawyer, India and England and Wales and has obtained his Masters in Intellectual Property Law from Bournemouth University, UK, in 2006. He heads the Chennai operations of the firm and handles litigation, opposition, prosecution matters, attends hearings before the Trademark Registry and Intellectual Property Appellate Board. In his current role, he advices a wide range of clients on contentious and non-contentious IP matters. He also regularly writes and lectures on IP issues.