The Bombay High Court has held that merely making minor changes to a trademark is not enough to comply with an earlier injunction if the overall impression remains confusingly similar. Justice Somasekhar Sundaresan ruled that Abaad Masala & Co.'s use of the marks "Frize White Spicy Pepper Masala" and "Frize Black Spicy Pepper Masala" did not place sufficient distance from Sky Enterprise Private Limited's registered trademarks and directed the company to stop using them. The order came while deciding an application alleging violation of an earlier interim injunction passed in the trademark dispute.
Background of the Case
Sky Enterprise Private Limited had filed a commercial intellectual property suit claiming infringement of its registered trademarks and passing off against Abaad Masala & Co. In January 2020, the High Court had restrained Abaad from using the expressions "White Chinese Pepper Masala" and "Black Chinese Pepper Masala", or any identical or deceptively similar variations.
According to Sky, after the injunction, Abaad replaced the word "Chinese" with "Spicy" and introduced the brand name "Frize", while continuing to market products in a manner that allegedly remained confusingly similar. Sky argued that these changes amounted to deliberate non-compliance with the earlier court order. Abaad, however, maintained that its revised trademarks were different and that the injunction could not be expanded beyond what had originally been protected.
Court's Observations
Justice Somasekhar Sundaresan said the earlier interim order continued to bind the parties because it had neither been stayed nor set aside. The Court observed that although Abaad had altered certain words, the revised marks still remained too close to the protected trademarks when viewed as a whole.
Explaining its reasoning, the Court noted that replacing "Chinese" with "Spicy" did not sufficiently distinguish the products in the minds of ordinary consumers. It also referred to the "transposed letter effect" to explain how people often read or recognise familiar words despite small changes.
The bench observed,
"The attempt appears to have been to test the limits of the requirement to comply with the Interim Order."
The Court further remarked,
"When faced with such a situation... one would expect Abaad to keep a 'safe distance' from Sky's registered marks."
Justice Sundaresan also observed that slight changes in packaging or branding cannot be used as an indirect method of achieving what a court has already prohibited through an injunction. The judgment stressed that interim orders should not be reduced to mere formal compliance through insignificant modifications.
Court's Decision
Instead of directing attachment of property or civil imprisonment, the High Court exercised its inherent powers to ensure effective compliance with the earlier injunction.
The Court restrained Abaad from using the trademarks "Frize White Spicy Pepper Masala" and "Frize Black Spicy Pepper Masala", holding that they were not sufficiently different from Sky's protected marks. It also prohibited the company from adopting similar minimal variations in future, directed it to file audited sales and inventory details, permitted repackaging of unsold stock using compliant branding, and ordered destruction of packaging and promotional material bearing the disputed marks within the prescribed time.
The matter has been listed for further directions on August 27, 2026, to review compliance with these directions.
