The decision in Empire Spices & Foods Ltd. v. Sanjay Bhimraoji Deshmukh (2025 SCC Online Bom 2559) by the Bombay High Court serves as an important precedent for the principle of “Approbation and Reprobation” in intellectual property litigation. The dispute, which revolved around the rival spice marks “RAM BANDHU” and “SHREE RAM BANDHU,” highlights that defendants cannot claim a mark is generic for the Plaintiff while simultaneously seeking its registration for their own use.
By restraining the use of a deceptively similar mark, this case strengthens the jurisprudence surrounding phonetic similarity and the protection of a brand’s“distinctive core.” Furthermore, the ruling provides clarity on when religious words lose their generic character to become protectable, ultimately clarifying the scope of Section 17 of the Trade Mark Act, 1999.
Brief Facts Of The Case
The plaintiff, Empire Spices & Foods Ltd., is a manufacturer and seller of food and spice products under its popular trademark “RAM BANDHU”, used 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.
Arguments By Plaintiff
Empire Spices and Foods Limited, the plaintiff, contended that they were the sole proprietors of the “RAM BANDHU” trademark, adopted in 1972. They claimed to have a strong legal ownership through multiple registrations and a merger with RambandhuMasalewale Pvt Ltd, which was approved by the NCLT in 2018. They also asserted ownership of the artistic work for the 2002 mark. To show their goodwill, the plaintiff submitted evidence of a certified sales turnover of almost 250 crores and emphasised that the brand is a well-known mark endorsed by celebrities.
The plaintiff argued that the defendant’s “SHREE RAM BANDHU” mark is structurally, visually, and phonetically similar to their own important features. They specifically contended that the defendant’s adaptation of the mark was dishonest because it copied the plaintiff’s entire device mark, layout, design, and colour scheme for the same goods. In response to the defendant’s use of the deity name, the plaintiff made it clear that the name of God cannot be monopolized, and the defendant could not copy the plaintiff’s entire label mark. They also contended that the defendant’s evidence of prior use since 2004 is fake, and handwritten invoices.
Finally, the plaintiff contended that no acquiescence or delay would bar the interim relief. They cited the fact that they issued a cease-and-desist notice as early as 2014, and because the defendant’s goods were not thereafter found in the market, they reasonably assumed the infringing use had stopped. The plaintiff argued that the settled law holds that a simple delay is not a sufficient ground for denying relief in trademark cases, especially when there hasn’t been a clear act of acquiescence.
Arguments By The Defendant
The defendant, Sanjay Bhimraoji Deshmukh, argued that the plaintiff’s claims are barred by delay, laches, and acquiescence, noting that the notice was served in 2014, no legal action was taken for a long time, while the defendant continued business uninterruptedly. They argued that their adoption of the mark “SHREE RAM BAANDHU” in 2003-2004 was honest and bona fide, as a devotee of Lord Ram, and emphasized that it is a common practice in India to use the names of gods in business.
The defendant further argued that the plaintiff cannot claim exclusive monopoly over the name of a Hindu God, as it is a common descriptive term. Also, to claim their established presence, they pointed to a sales turnover of over 68 lakhs and argued that their continuous use since 2004 creates a different identity in the market.
Regarding the technical aspects of the law, the defendant argued that because the plaintiff’s registration is for a “device mark” and not a “word mark,” Section 17 of the Trade Mark Act prevents them from claiming exclusivity over individual parts of the label, such as the words themselves.
They also challenged the plaintiff’s copyright claims, marking out the absence of a written assignment from the original author as required by the Copyright Act. Further, the defendant accused the plaintiff of suppressing the fact that a 1984 Word mark registration for “RAM BANDHU” had been abandoned in 1991, which influenced the defendant’s decision to adopt their mark in 2000. Finally, they maintained that the addition of the prefix “SHREE” and differences in the overall layout ensure there is no real likelihood of consumer confusion.
Courts’ Observations And Findings In The Case
The Court observed that the records of the Trade Mark Registry established a prima facie case for the applicant as the registered proprietor and prior user of the trademark“RAM BANDHU”, which was therefore entitled to protection under the Trade Mark Act,1999. Upon comparison of the rival marks, the Court found that the Defendant’s mark “SHREE RAM BANDHU” was deceptively similar in structure, appearance, phonetics, and overall commercial impression, and was likely to confuse consumers.
Regarding Non-Exclusivity Over The Name Of Hindu Deity
Regarding the defendant’s defence that the mark “RAM BANDHU” is the name of a religious deity and no exclusive rights can be claimed over such a mark, the Hon’ble Court, under para 33, held that:
“33. The doctrine of estoppel also prohibits the Defendant from raising the defence of non-exclusivity as the Defendant has itself applied for registration of its trade mark “SHREE RAM BANDHU”. A party cannot be permitted to approbate and reprobate. The fact that the Defendant applied for registration of its mark postulates acceptance by the Defendant of its distinctiveness.”
Regarding Delay And Acquisience
With regards to the defendant’s claim of delay and acquiescence, the Hon’ble Court relied on the case of Jagdish Gopal Kamath v. Lime andChilli Hospitality Service, 2015 SCC OnLine Bom 531, and held that “thequestion arises where the proprietor of a mark, being aware of hisrights and being aware that the infringer may be ignorant of them, does some affirmative act to encourage the infringer’s misapprehensionso that the infringer worsens his position and acts to his detriment. A mere failure to sue without a positive act of encouragement is no defence and no acquiescence. A defendant who infringes the plaintiff’s mark with knowledge of that mark can hardly be heard to complain if he is later sued upon it.
35. Before accepting the defence of acquiescence as the cease and desist notice was of the year 2014, the Defendant was enjoined to show prima facie some positive act on part of the Plaintiff and not a mere omission to take any action. There is thus no acquiescence demonstrated by the Defendant to make it inequitable to grant interim relief.”
Regarding Honest And Bonafide Adoption:
With regards to the defendant’s claim of honest and bona fide adoption, the Hon’ble Court held that “Assuming user by Defendant since the year 2004, the Plaintiff is the prior user since 1972. It is not the case of the Defendant that prior to the adoption of the mark in the year 2004, the Defendant had taken search of the Trade Mark Registry to ascertain whether there was prior user of the mark.
The mark “RAM BANDHU” is an arbitrary adoption and makes no reference to the goods sold under the said label. The case would have been different if the Defendant had only used the name of the Hindu god prefix of “Shree”. The difficulty has arisen as the Defendant has subsumed the entire mark of the Plaintiff as its trademark. Since the Defendant was a late player in the market and the Plaintiff having prima facie demonstrated prior user since 1972, the adoption of the mark “Shree Ram Bandhu” cannot be accepted to be honest adoption of label since the year 2000.”
Finally, the pleas of honest and bona fide adoption, delay, laches, and acquiescence were rejected. The Plaintiff exhibits prior use since 1972, and mere delay, without positive encouragement, does not defeat a claim for injunction, especially since the plaintiff had issued cease-and-desist notices. The Court also found that the Defendant’s own application for “SHREE RAM BANDHU” undermined its contention that the mark lacked distinctiveness. Consequently, the Court held that the defendant acted dishonestly, upheld the Plaintiff’s exclusive rights, and granted interim relief to protect the brand’s goodwill and maintain commercial integrity.
Conclusion
This case clearly upholds the principle that a litigant cannot take an opposing stance to benefit their own interest. Based on the principle of Approbate and Reprobate, the court concluded that the defendant, by filing an independent application before the Trademark Registry, had implicitly acknowledged the distinctiveness and legal protectability of the mark. Having sought legal protection under trademark law, the defendant was estopped from later claiming that the plaintiff’s mark was generic, unprotectable, or publici juris.
The judgment highlights two important points that stand as a significant precedent in the intellectual property law. First, litigation credibility is first determined by past conduct: statements made before the Trademark Registry, such as applications for registration under section 18, have a substantial evidentiary value and cannot be easily disowned in the infringement proceedings. Second, the act of “blowing hot and cold” shows the clear intent of bad faith. A party cannot assert exclusivity over a mark when requesting registration and later argue in court that the same mark belongs to the public domain when faced with legal consequences. Such contradictory behaviour undermines the integrity of the intellectual property system and neutralises a defendant’s primary Defences.
Author: Vikash Verma, Student at Amity University Madhya Pradesh
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