Case at a Glance
Shah Namkeen, which holds a registered “SHAH HOT MIX” label and claims business since 1977, sued after finding HOT MIX namkeen packets sold under the JABSONS house mark. The Delhi High Court confirmed its August 2024 ex parte injunction, holding that HOT MIX is at the highest suggestive, not descriptive, of namkeen, that it is the dominant feature of the registered label, and that adding the house mark JABSONS does not avoid confusion. Jabsons is restrained from selling namkeen or allied goods under HOT MIX till the suit is decided, but may use its house mark and the words “hot” or “mix” in their ordinary sense.
Sunit Shah, sole proprietor of M/s Shah Namkeen, makes namkeen and other Class 30 goods and claims to have started business in Delhi in 1977. The SHAH word mark was registered in 1989, and the label mark SHAH HOT MIX (LABEL) was applied for in 2012 and registered in 2018, with a condition that the proprietor has no exclusive right over the descriptive matter on the label. Applications for HOT MIX as a word and device mark, filed in 2022, are under opposition. Its reported sales rose from Rs 1.39 crore in 2009-10 to Rs 9.22 crore in 2021-22.
In June 2024 the plaintiff’s salesperson found HOT MIX namkeen packets bearing the JABSONS house mark. On 2 August 2024 the Court granted an ex parte ad interim injunction. Jabsons, a larger manufacturer with over 270 products, said it began using HOT MIX in October 2023, that the registration condition excluded HOT MIX as descriptive of spicy namkeen, that third parties use the term, that the house marks and packaging are different, and that the plaintiff had suppressed material facts.
The Key Question Before the Court
Is “HOT MIX” for namkeen a descriptive term open to all, or a protectable mark whose use by Jabsons, even with its own house mark, amounts to infringement and passing off?
Suggestive, Dominant and Dishonestly Adopted
Justice Purushaindra Kumar Kaurav found no suppression, since the plaint disclosed the registration condition, the pending applications and proceedings against third parties. He held that the condition on the registration referred to words such as NAMKEEN and SINCE 1977, not to HOT MIX, and that a disclaimer does not affect rights acquired by use. On distinctiveness, he held: “At the highest, therefore, HOT MIX is suggestive, and not descriptive, of the plaintiff’s goods.” Prima facie the plaintiff had also acquired distinctiveness, a question finally left for trial. Jabsons’ photographs of third-party packets did not show the extent of use or market presence, so it had not discharged its burden.
On infringement, the Court found that “HOT MIX is the essential and dominant feature of the registered label”, and that differences in colour, get-up and the addition of JABSONS did not matter; the use was likely to cause confusion and amounted to infringement. Because Jabsons used HOT MIX as a name, the Section 30(2)(a) defence of descriptive use failed. Jabsons adopted HOT MIX in October 2023, after the plaintiff’s registration and advertised applications, without explanation, so “The adoption of the impugned mark by the defendant also does not appear to be honest.” The balance of convenience favoured the plaintiff, since Jabsons could market under another name such as its existing “HOT N’ SPICY”. The Court relied on cases including Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (1964) 10 SC CK 0025, AIR 1965 SC 980, Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 01 SC CK 0024, (2004) 3 SCC 90, and Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, (2025) 08 SC CK 0255, 2025 SCC OnLine SC 1701.
What the Court Actually Held
- No suppression of material facts by the plaintiff was made out.
- HOT MIX is, at the highest, suggestive and not descriptive of namkeen, and is the dominant feature of the registered SHAH HOT MIX label; the registration condition does not cover it.
- Jabsons’ use of HOT MIX, despite its house mark and different packaging, prima facie amounts to infringement and passing off, and its adoption was not honest.
- The 2 August 2024 injunction was confirmed: Jabsons is restrained till the suit is decided from dealing in namkeen, snacks or allied goods under HOT MIX or any deceptively similar mark, but may use JABSONS and the words “hot” or “mix” individually in their dictionary sense; its application to vacate was dismissed.
Why This Judgment Matters
- It shows that common-sounding food names can be protected as suggestive marks when they do not directly describe the product.
- It confirms that a well-known house mark does not cure the use of a competitor’s dominant mark.
- It clarifies that a registration condition on descriptive matter must be read for what it actually names.
What Should Advocates Take Away From the Judgment?
For Food and FMCG Businesses
- Before launching a product name, search for registered labels whose dominant word matches it, not just for exact word marks.
- Adding your own brand name will not protect you if the product name copies a rival’s dominant feature.
For Counsel
- Read registration conditions closely; a disclaimer of named words does not extend to the dominant feature.
- Third-party use must be proved with evidence of extent and market presence, not just photographs.
- Section 30(2)(a) fails where the term is used as a name rather than as a description.
Key Takeaways
- HOT MIX was held suggestive, not descriptive, of namkeen at the interim stage.
- A house mark like JABSONS does not avoid infringement of a dominant feature.
- Unexplained adoption after the plaintiff’s registration points to dishonesty.
- Ordinary use of “hot” or “mix” as description remains open.
Frequently Asked Questions
Can Jabsons still sell namkeen?
Yes, but not under the name HOT MIX or any deceptively similar mark until the suit is decided. It may use its house mark JABSONS and use the words “hot” or “mix” individually in their ordinary sense.
Is HOT MIX now the exclusive property of Shah Namkeen?
Only at the interim stage. The Court held prima facie that HOT MIX is suggestive and has acquired distinctiveness, but final rights will be decided at trial.
Why did the different packaging not help Jabsons?
Because HOT MIX was the dominant feature of both marks, and differences in colour, get-up and the addition of JABSONS did not remove the likelihood of confusion.
Conclusion
The order keeps a well-known snack maker from using HOT MIX while a smaller, older namkeen business fights its trademark case. It is a clear statement that a suggestive product name can be protected, and that a big brand’s own house mark is no answer to copying a rival’s dominant feature.
Practical takeaway: Clear new product names against registered labels in your class; a house mark will not save a copied dominant word.
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