Karnataka High Court Upholds injunction in Asafoetida trademark dispute

The Karnataka High Court upheld an interim injunction decision against SVT Products, Bengaluru, in a trademark dispute over the marketing of asafoetida (Hing). The dispute revolves around the alleged infringement and passing off of SS Pandian & Sons' registered trademark by SVT Products.

On April 11, 2023, in response to a grave action brought by SS Pandian & Sons, Bengaluru, an Additional City Civil Judge issued a prohibition order against SVT Products. The order responded to the serious allegations that SVT Products was infringing and passing off the plaintiff's registered trademark by utilising an identical and deceptively similar trade mark.

SVT Products, the defendant in the case, disputed the order, claiming that they have been using the 'SVT Hotel Special' trademark since 1990. They argued that the term 'Hotel Special' is a generic term that refers to the intended purpose of the product.

On the other hand, SS Pandian & Sons claimed that they had been in the asafoetida business since 1957 and used the 'Hotel Special' brand to sell a specific strain of asafoetida since 1993. The trademark was registered in 2002 and is valid until 2032. It was also stated that the invoices used by SVT to claim prior use are forgeries because they contain seven-digit phone numbers that were not in use until 1994.

Justice Anant Ramanath Hegde stated that the invoices submitted by SVT Products do not indicate any transactions and, hence, cannot be regarded at this stage. The court also noted that the registration certificate Form No. 2 of SVT Products was printed on November 25, 1984, casting considerable doubt on their claim that the commercial tax department registered them on June 17, 1982.

"Just because asafoetida is offered in giant jars does not imply that the expression refers to a generic intended application.

"Whether the expression 'Hotel Special' found on the plaintiff's asafoetida tin meant only for use by hoteliers in the estimation of the public, as claimed by the defendant, is a matter of evidence," the court said, declining to interfere with the civil court's interim order. This means that the court considers the interpretation of the term' Hotel Special' and its intended application as a crucial point of contention in the case, which will require further evidence to be resolved.