Introduction:
This analytical legal article examines a key intellectual property enforcement dispute before the High Court of Judicature at Bombay regarding the execution of interim injunctions under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. The litigation arose out of a commercial conflict between family-owned rival entities operating in the spice and seasoning market. The proceedings centered around whether making minor, incremental alterations to an infringing mark—such as replacing individual descriptive words while keeping the overall phonetic and visual structure intact—constitutes deceptive similarity and willful disobedience of an interim injunction. The Court delivered a significant ruling balancing strict intellectual property enforcement with remedial, equitable relief under Section 151 of the Code of Civil Procedure, 1908.
Factual and Procedural Background:
The dispute traces back to Commercial IP Suit No. 279 of 2020 instituted by Sky Enterprise Private Limited against Abaad Masala & Co. The plaintiff, engaged in manufacturing and marketing masala powders and seasoning, held registered trademarks under Class 30 obtained during 2012, 2016, and 2017. These included word and label marks such as Star Zing White Chinese Pepper Masala, Star Zing Black Chinese Pepper Masala, White Chinese Pepper Curry Powder, and related variants.
On January 8, 2020, the Court passed an interim injunction restraining the defendant from advertising, displaying, or using directly or indirectly the impugned trademarks White Chinese Pepper Masala and Black Chinese Pepper Masala, or any other identical or deceptively similar trademarks or words in their peculiar combination. The court noted that while individual words like pepper or masala were generic, the specific four-word combination and sequence had acquired distinctiveness and secondary meaning associated with the plaintiff's goods. The defendant's use of the prefix Star King alongside the combination was found to be a dishonest attempt to prey on the plaintiff's goodwill.
Following the 2020 injunction, the defendant replaced Star King with Frize and substituted the word Chinese with Spicy, adopting the modified marks Frize White Spicy Pepper Masala and Frize Black Spicy Pepper Masala. Furthermore, in January 2025, five years after the interim order, the defendant obtained trademark registrations for these modified marks without disclosing the pending injunction to the Trade Marks Registry. In response, the plaintiff filed Interim Application (L) No. 2372 of 2025 under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908, alleging contempt, deceptive similarity, and deliberate violation of the interim injunction.
Dispute Before the Court:
The primary legal issue before the Court was whether the defendant's adoption of Frize White Spicy Pepper Masala and Frize Black Spicy Pepper Masala violated the interim injunction order dated January 8, 2020. Additionally, the Court evaluated whether the standard of proof required under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 is identical to criminal contempt, and whether obtaining a subsequent trademark registration by suppressing an interim court order protects a party from enforcement proceedings.
The applicant contended that substituting Chinese with Spicy while retaining the word structure, packaging, layout, and color scheme was a deliberate contrivance to bypass the court order. The applicant argued that the defendant failed to maintain a safe distance from the registered marks, creating visual, structural, and phonetic similarity that confused consumers.
Conversely, the defendant argued that the scope of Order XXXIX Rule 2A proceedings must be strictly confined to the explicit terms of the interim order. The defendant asserted that individual words in the plaintiff's marks were non-proprietary and descriptive, meaning the plaintiff held only a narrow monopoly over the exact four-word sequence. The defendant also contended that no contempt or willful disobedience occurred because the modified marks were structurally different, registered with the Registry, and primarily used in business-to-business wholesale trade.
Reasoning and Analysis of the Court:
The Court undertook a detailed comparative analysis of the competing marks and the scope of interlocutory protection. On the question of deceptive similarity, the Court held that replacing Chinese with Spicy while maintaining the exact structure starting with White or Black and ending with Pepper Masala constituted a minor variation that failed to eliminate consumer confusion. Applying the cognitive principle of the transposed letter effect, the Court observed that an average consumer with imperfect recollection reads brand names holistically. Replacing one two-syllable word with another phonetically close term within an identical arrangement created striking visual and structural proximity.
The Court applied the established safe distance principle, emphasizing that an infringer subject to an injunction is duty-bound to adopt marks that stand clearly apart from the protected intellectual property rather than testing the absolute limits of compliance. Minor tweaks that offer mere lip service to court directions undermine the purpose of interlocutory relief. Regarding trade dress, the Court noted that replicating color schemes, graphics, and layout served as an indirect mechanism to achieve what was directly prohibited by the interim order.
Addressing the defendant's defense of holding a subsequent trademark registration obtained in January 2025, the Court held that a registration secured without disclosing a binding court injunction to the Trade Marks Registry cannot shield a party from enforcement. Applying the principle declared by the Full Bench in Lupin Ltd. v. Johnson and Johnson, (2014) SCC OnLine Bom 4596, the Court held that such a registration does not bar judicial intervention under Order XXXIX Rule 2A.
The Court conducted an extensive analysis on the statutory nature of Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 versus the Contempt of Courts Act, 1971. It clarified that Order XXXIX Rule 2A is primarily an enforcement and execution mechanism—akin to Order XXI Rule 32 of the Code of Civil Procedure, 1908—designed to compel compliance and preserve suit property rather than strictly punish offenders.
In analyzing the applicable standard of proof, the Court addressed key precedents. In Food Corporation of India v. Sukh Deo Prasad, (2009) 5 SCC 665, the Supreme Court held that powers under Order XXXIX Rule 2A are punitive in nature and require establishing the existence of a clear obligation beyond doubt. In U.C. Surendranath v. Mambally's Bakery, (2019) 20 SCC 666, the Supreme Court observed that willful disobedience must be established. However, the Court highlighted the observations in Amazon.com NV Investment Holdings LLC v. Future Retail Ltd. & Ors., (2022) 1 SCC 209, which noted that the word willful does not explicitly exist in Order XXXIX Rule 2A, and that its primary purpose is order enforcement.
The Court reconciled these authorities by holding that while establishing the existence of a specific court-imposed obligation requires clarity beyond doubt, determining whether that obligation was violated in civil execution proceedings relies on a high degree of preponderance of probabilities. The strict criminal standard of proof beyond reasonable doubt applies specifically when the court contemplates severe punitive measures such as property attachment or civil imprisonment.
The Court also referenced legal principles from Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 regarding deceptive similarity tests in infringement and passing off actions, and Pidilite Industries Ltd. v. Raghunath Chemicals & Ors., Contempt Petition (L) No. 30589 of 2021 regarding the safe distance rule. Decisions including Rana Steels v. Ran India Steels Pvt Ltd., 2010 SCC OnLine Del 139, M/s Apex Laboratories Pvt. Ltd. v. Axis Life Sciences, CS No. 254 of 2020, Sitaram v. Ganesh Das, 1973 SCC OnLine All 296, Samee Khan v. Bindu Khan, AIR 1998 SC 2765, Hindustan Unilever Ltd. v. Roopa Industries and Anr., A. No. 1861 of 2025, Rajendra Sail v. MP High Court Bar Association, (2005) 6 SCC 109, National Fertilizers Ltd. v. Tuncay Alankus, (2013) 9 SCC 600, Union of India v. Major Bahadur Singh, (2006) 1 SCC 368, and Ravi Ranjan Developers Pvt. Ltd. v. Aditya Kumar Chatterjee, 2022 SCC OnLine SC 568 were also considered.
Recognizing that the litigation involved a commercial dispute between related family factions, the Court held that sending party representatives to civil prison or attaching commercial assets would unnecessarily deepen intra-family hostility. Instead, the Court exercised its inherent remedial powers under Section 151 of the Code of Civil Procedure, 1908 to enforce compliance through firm, corrective directions.
Final Decision of the Court:
The High Court of Judicature at Bombay disposed of Interim Application (L) No. 2372 of 2025 by issuing comprehensive remedial directions under Section 151 read with Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. The defendant was explicitly injuncted from using the modified marks Frize White Spicy Pepper Masala and Frize Black Spicy Pepper Masala, as well as any other minor variations that fail to maintain a safe distance from the plaintiff's registered trademarks.
The partners of the defendant were directed to file an affidavit within four weeks containing audited financial details of quarterly sales revenues earned from the impugned marks, alongside full inventory figures of products manufactured, sold, and held in distribution networks. The defendant was granted permission to remove contents from unsold packaged inventory for repacking under compliant brand names. Furthermore, the defendant was ordered to destroy all packaging material, stationery, and promotional items bearing the impugned marks and take down digital advertisements within eight weeks. The Court directed that any future non-compliance would result in immediate property attachment by the Court Receiver.
Point of Law Settled:
This judgment clarifies the scope and operation of Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 in intellectual property disputes. It reaffirms that Order XXXIX Rule 2A is fundamentally a civil execution mechanism designed to secure order compliance, and civil courts can exercise inherent powers under Section 151 of the Code of Civil Procedure, 1908 to issue remedial directions rather than resorting exclusively to imprisonment or property attachment.
The ruling establishes that an enjoined party must maintain a safe distance from protected marks, and making minor, cosmetic alterations to an infringing mark constitutes continued violation. Additionally, the judgment confirms that obtaining a subsequent trademark registration by suppressing an existing interim court order from the Trade Marks Registry offers no protection against injunction enforcement.
Case Details:
Title of the Case: Sky Enterprise Private Limited Vs Abaad Masala & Co.
Date of Judgment: August 3, 2026
Case Number: Interim Application (L) No. 2372 of 2025 in Commercial IP Suit No. 279 of 2020
Neutral Citation: CNR No. HCBM020257442019
Name of Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)
Name of Hon'ble Judge: Justice Somasekhar Sundaresan
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .
Headnote of the Judgment:
Sky Enterprise Private Limited v. Abaad Masala & Co., High Court of Judicature at Bombay, Interim Application (L) No. 2372 of 2025 in Commercial IP Suit No. 279 of 2020, Decision Dated August 3, 2026. Application under Order XXXIX Rule 2A of CPC alleging breach of interim injunction order protecting registered combination trademarks. Respondent modified enjoined marks by replacing Chinese with Spicy and obtaining subsequent registration without disclosing court injunction. Court held minor cosmetic variations violate safe distance principle and subsequent suppressed registration affords no defense. Court exercised Section 151 CPC powers to issue corrective operational directions, inventory disclosures, and destruction orders in lieu of civil imprisonment. Application disposed with directions.
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In Sky Enterprise Private Limited v. Abaad Masala & Co., decided on August 3, 2026 under Case Number Interim Application (L) No. 2372 of 2025 in Commercial IP Suit No. 279 of 2020 with Neutral Citation CNR No. HCBM020257442019, the High Court of Judicature at Bombay, comprising Justice Somasekhar Sundaresan, issued corrective enforcement directions under Order XXXIX Rule 2A and Section 151 of the Code of Civil Procedure, 1908 to enforce a binding interim trademark injunction.
