Trademark law protects a trademark if it is primarily unique and non-descriptive of the goods or services for which it is being used. For example, you cannot register the mark Computer to sell computers or computer related products, you have to name it differently, such as Apple, Microsoft, Dell, Ubuntu etc. This is one of the basic tenets of trademark law.
Sky Enterprise Private Limited (“Sky Enterprise”) is engaged in the business of processing, manufacturing and marketing of various types of spices, condiments and masalas (mixture of spices). It has, inter alia, registered the marks “Star Zing”, “Black Chinese Pepper Masala” and “White Chinese Pepper Masala”, in Class 30 for spices. A cursory glance at these marks would portray that Star Zing is the brand and the other marks are describing the different Masalas sold under this brand. However, Sky Enterprise, thought differently. According to them, the terms “Black Chinese Pepper Masala” and “White Chinese Pepper Masala” were so closely associated with their brand, such that the customers could identify products described in this manner only with Star Zing. Sky Enterprise filed a suit against proprietor, Abaad Masala which was found to be using the marks viz., “Black Chinese Pepper Masala” and “White Chinese Pepper Masala” along with its brand name AMZ on their masala packets. Sky Enterprises alleged that the use of these terms amounted to infringement of its rights in the trademark.
The Defendant argued that the words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’ are used by the Defendant in its trade dress, just as in the case of the Plaintiff, for identifying or indicating the kind, quality, and intended purpose of the goods.
The Court held that the defendant may use the words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ however, not in this particular sequence. It may use these words in some other sequence or in combination with some other words. However, this particular combination was associated distinctively with the Plaintiff, and it being the registered proprietor of the marks, was entitled to protection.
This case goes against the conventional notion of not allowing descriptive marks to be registered in the first place, let alone protecting them in an action for infringement.