Empire Spices v. Sanjay Bhimraoji Deshmukh: Bombay High Court Reaffirms Trademark Exclusivity and Dominant Feature Test Under Section 17

An Analysis of Empire Spices & Foods Ltd. v. Sanjay Bhimraoji Deshmukh trading as M/s Sanskriti Spices, 2025 SCC Online Bom 2559

Introduction

The Bombay High Court’s marks a significant reaffirmation of trademark protection principles under Indian law through the case Empire Spices & Foods Ltd. v. Sanjay Bhimraoji Deshmukh (2025 SCC Online Bom 2559).

At its core, the dispute revolved around the use of deceptively similar trademarks “RAM BANDHU” and “SHREE RAM BANDHU” on spice products. The Court’s ruling strengthens the jurisprudence on composite device marks, religious or deity-related words, and the scope of exclusivity under Section 17 of the Trade Marks Act, 1999. particularly in relation to RAM BANDHU Trademark protection.

Factual Matrix

The plaintiff, Empire Spices & Foods Ltd., is a long-established manufacturer and seller of food and spice products under its popular trademark “RAM BANDHU”, use since 1972 and registered as a device mark under several classes.

The defendant, Sanjay Bhimraoji Deshmukh, trading as M/s Sanskriti Spices, began selling spice products using the mark “SHREE RAM BANDHU” with an overall label design, font, and colour combination strikingly similar to that of the plaintiff.

Empire Spices alleged trademark infringement, passing off, and copyright infringement of its artistic label design. It demanded interim relief to restrain the defendant’s use of the impugned mark.

Issues Raised Before the Court

The Court primarily examined:

1. Whether the mark “SHREE RAM BANDHU” was deceptively or phonetically similar to the registered trademark “RAM BANDHU”.
2. Whether the plaintiff could claim exclusive rights over the word component of a device mark under Section 17 of the Trade Marks Act.
3. Whether the use of a deity’s name (i.e., “Ram”) could be monopolized or protected under trademark law.
4. Whether delay, acquiescence, or honest adoption could defeat the plaintiff’s claim for interim injunctions.

Key Arguments From Both Sides

• Plaintiff’s Arguments (Empire Spices and Foods Ltd.): – The mark ” RAM BANDHU ” is a registered trademark with a user history since 1972, establishing prior use and significant goodwill. – The Defendant’s mark “SHREE RAM BANDHU ” is structurally, visually, and phonetically almost identical, causing confusion among consumers. – The Defendant’s adoption was dishonest, copying the essential features, colour scheme, and layout of the Plaintiff’s registered mark. – Mere delay is not a ground to refuse an injunction in an infringement action, and there was no positive act of encouragement to constitute acquiescence.

• Defendant’s Arguments (Sanjay Bhimraoji Deshmukh): – No exclusivity can be claimed over the name of a Hindu deity, ” Ram,” as it is common practice in India. – The Plaintiff’s registration is for a device mark (a logo), not the words ” RAM BANDHU ” themselves. Under Section 17 of the Trade Marks Act, protection does not extend to parts of a composite mark. – The prefix “SHREE” sufficiently distinguishes the Defendant’s mark. – The Plaintiff’s delay of over ten years in filing the suit after the 2014 notice amounts to acquiescence, making it inequitable to grant an injunction.

Courts Observations And Findings In The Case  

1. Proprietary Rights and Valid Registration: The Court found that Empire Spices holds valid trademark registrations and demonstrated prior and continuous use since 1972, establishing goodwill and distinctiveness in “RAM BANDHU”.

2. Deceptive Similarity: Upon comparison, the Court held that “SHREE RAM BANDHU” is deceptively similar to “RAM BANDHU”. The addition of “Shree” did not alter the essential character of the mark. The overall visual impression and phonetic similarity were likely to confuse or mislead an average consumer.

3. Scope of Rights under Section 17: Rejecting the defendant’s reliance on Section 17, the Court noted that even in the case of a device mark, if the word component is the essential and prominent feature, the proprietor can seek protection over that element. The mark’s distinctiveness lay predominantly in the words “RAM BANDHU”, not in any peripheral design.

4. Religious Name Argument: The Court clarified that while individual deity names may not be monopolized, composite or coined expressions such as “RAM BANDHU” acquire distinctiveness and are protectable under trademark law. It cited Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd. (2011 SCC Online Del 4422), observing that once a religious term is adapted into a coined brand name, it assumes trade significance rather than religious connotation.

5. Delay and Acquiescence: The Court held that mere delay in approaching the court does not bar relief in cases of continuing infringement, unless the plaintiff has actively encouraged or permitted the defendant’s use.

6. Balance of Convenience and Irreparable Harm: The Court found that failure to restrain the defendant would lead to irreparable harm, dilution of goodwill, and confusion in the market. Hence, the balance of convenience clearly favoured the plaintiff.

Case Laws Relied Upon

1) Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services, (2015 SCC Online Bom 531): The Court in this case recognized that even when a mark is registered as a device mark, the dominant verbal component may still attract independent protection.
In Empire Spices, this principle was applied to hold that “RAM BANDHU,” being the dominant feature of the registered device, was protectable independently from its graphic form.

2) Pidilite Industries Ltd. v. Jubilant Agri and Consumer Products Ltd., (2014 SCC Online Bom 50): This case established that the overall impression and dominant features of a composite mark determine deceptive similarity. The Bombay High Court reiterated this in Empire Spices, finding that both “RAM BANDHU” and “SHREE RAM BANDHU” create a similar commercial impression, despite minor additions.

3) Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd., (2011 SCC Online Del 4422) : The Delhi High Court held that words with religious significance can be registered trademarks when used as composite expressions that gain distinctiveness through commercial use. This precedent was crucial in rejecting the defendant’s argument that “Ram” is a sacred term incapable of monopoly.

4) Impresario Entertainment & Hospitality (P) Ltd. v. Social Tribe, (2025 SCC Online Bom 2389): This recent Bombay High Court decision provided guidance on tests of deceptive similarity and confusion in interim injunction cases. By relying on it, the Court reinforced the view that similarity must be judged from the perspective of an average consumer with imperfect recollection, a standard that clearly favoured the plaintiff.

Analysis

The Bombay High Court in Empire Spices & Foods Ltd. v. Sanjay Bhimraoji Deshmukh (2025) reaffirmed that even for composite or device marks, protection extends to their dominant word element. The Court held “SHREE RAM BANDHU” deceptively similar to “RAM BANDHU”, ruling that adding “Shree” didn’t create distinction. It clarified that religious names, when used as coined expressions, can gain trademark protection. Delay or acquiescence couldn’t defeat clear infringement. The judgment strengthens the dominant feature test, clarifies Section 17’s scope, and upholds strong protection for distinctive Indian brands. And granted an interim injunction, restraining the defendant and all associated parties from using “SHREE RAM BANDHU” or any deceptively similar mark. It also restrained the use of the pirated label artwork found to infringe the plaintiff’s copyright. However, the Court stayed the operation of its injunction for four weeks to allow the defendant time to comply or appeal.

Final Decision

The court concluded that the Plaintiff had established a prima facie case of infringement, with the balance of convenience in its favour. It held that the Defendant’s mark was deceptively similar and likely to cause confusion, thereby diluting the Plaintiff’s goodwill built since 1972.

Accordingly, the court granted an interim injunction, restraining the Defendant from using the “SHREE RAM BANDHU ” mark or any other mark deceptively similar to ” RAM BANDHU ” pending the final disposal of the suit. At the Defendant’s request, the order has been stayed for four weeks.

The judgment in Empire Spices serves as a timely reminder that trademark law in India continues to evolve toward robust protection of commercial identity while maintaining equilibrium between public interest and proprietary rights.