Karnataka HC.
Credit: DH Photo/S K Dinesh
Bengaluru: The Karnataka High Court has upheld the interim injunction order passed by a city civil court Bengaluru against SVT Products, Bengaluru, in connection with a trademark dispute pertaining to marketing asafoetida (Hing).
On April 11, 2023, acting upon a suit filed by SS Pandian & Sons, Bengaluru, an Additional City Civil Judge had restrained the SVT Products from infringing and passing off the plaintiff’s registered trade mark by using an identical and deceptively similar trade mark.
The suit was filed by SS Pandian & Sons and alleged that SVT Products is using its (SS Pandian’s) registered trade mark ‘Hotel Special’ by using an identical and deceptively similar trade mark called ‘SVT Hotel Special’ for their asafoetida. The SVT challenged this order claiming that they were using ‘SVT Hotel Special’ trademark since 1990 and added that the expression ‘Hotel Special‘ only speaks about the intended purpose.
On the other hand, SS Pandian & Sons argued that they were in the asafoetida business since 1957 and had been using the ‘Hotel Special’ trademark to sell a particular variety of asafoetida since 1993 with the same being registered in 2002, valid till 2032. It was also alleged that the invoices placed by SVT to assert prior use are concocted documents as they disclose seven-digit telephone numbers that were not in use till 1994.
Justice Anant Ramanath Hegde noted that the invoices placed by SVT Products does not disclose any transaction and hence cannot be considered at this stage. The court also observed that the registration certificate Form no 2 of SVT Products itself was printed on November 25, 1984 and hence created serious doubts about their assertion that the commercial tax department had given registration to them on June 17, 1982.
“Merely because asafoetida is sold in large jars by itself cannot mean that the expression speaks about intended use without any distinctiveness. Whether the expression “Hotel Special” found on the plaintiff’s asafoetida tin, meant only use by hoteliers in the estimation of the public as alleged by the defendant is a matter of evidence,” the court said while declining to interfere with the interim order passed by the civil court.