Bombay High Court: In the present appeal, the appellant, SNT and Co., challenged the order of the District Judge, Nagpur, restraining it from using the trade mark “SNT” for “popcorn maize” and related products, based on allegations by the respondent, Shah Nanji Nagis Exports (P) Ltd., of deceptive similarity with its registered mark “SNN”. A Single Judge Bench of Rohit W. Joshi, J., while setting aside the District Court’s order held that the matter needs to be remanded to the Trial Court for deciding the application for grant of temporary injunction afresh. The Court emphasised that while deciding as to whether two trade dresses/packets are deceptively similar or not, a Court must look at the packet/trade dress as a whole and should not give undue importance to certain distinguishing factors in the two trade dresses/packets.
Background:
The respondent, a Nagpur-based company, claimed to be the registered proprietor of the trade mark “SNN” under Class-31, effective from 25-06-2022. The respondent asserted that the mark had gained significant goodwill and reputation over time, being a 105-year-old trading house engaged in the export and import of agricultural products, including corn and pulses.
It was alleged by the respondent that the appellant, operating out of Bareilly, Uttar Pradesh, was engaged in the same business and had deliberately adopted a deceptively similar trade mark “SNT” along with similar packaging and trade dress, thereby causing confusion among consumers. The respondent also noted that the appellant’s application for registration of “SNT” under Class-30 had been rejected, while the Class-31 application remained pending.
The appellant opposed the injunction, arguing that the respondent’s trade mark was only a word mark and did not extend to packaging or trade dress. It was contended that there was no visual or phonetic similarity between the two marks and that the designs were distinct. The appellant also raised technical objections regarding the maintainability of the suit.
Despite these objections, the Trial Court granted the injunction. The appellant, therefore, appealed, asserting that the Trial Court had failed to properly evaluate the differences in trade dress and packaging, and that the order was unsustainable and liable to be set aside.
Analysis and Decision:
The Court observed that the trade dress of the appellant’s packet displayed the mark “SNT” in the middle top portion, which was less prominent than the respondent’s “SNN”. The appellant’s packaging featured puffed popcorn, corncobs, and the description “butterfly popcorn” along with “delicious and 100% natural”, with the weight prominently shown. In contrast, the respondent’s packet used two colours with a horizontal band and highlighted features like “zero trans fat” and “Non-GMO”. The Court noted that the appellant’s packaging was multicoloured and visually brighter, but these dissimilarities in the first image of both packets were not considered by the Trial Court.
The Court observed and compared the trade dress and packaging of both parties as set out in the plaint.
The Court emphasised that perusal of the order passed by the Trial Court demonstrated that technical objections raised by the appellant were dealt with in the order. The Court further noted that the Trial Court addressed the legal principles and judgments cited during hearing. The Court highlighted that the discussion with respect to resemblance of the two trade dress/packets was made in the order, wherein the Trial Court merely stated that perusal of the photographs appended to the pleadings indicated that peculiar details on both packets were exactly same and both the packets had resemblance making their appearance deceptively similar.
However, the Court found that those observations were conclusion and the order did not disclose application of mind to arrive at such conclusion. The Court further noted that the aspects with respect to the design of two packets, which were quoted, were not even considered by the Trial Court.
Consequently, the Court held that the matter needs to be remanded to the Trial Court for deciding the application for grant of temporary injunction afresh. The Court emphasised that while deciding as to whether two trade dresses/packets are deceptively similar or not, a Court must look at the packet/trade dress as a whole and should not give undue importance to certain distinguishing factors in the two trade dresses/packets. However, the Court clarified that the distinctive features should be discussed to decide as to whether the two packets/trade dresses, viewed as a whole, would cause confusion in the mind of end consumers or not.
The Court concluded that it must sit in the armchair of the end consumer to determine the likelihood of confusion. Accordingly, the appeal against the order was partly allowed. The Court quashed and set aside the order passed by District Judge, Nagpur, and directed the Trial Court to decide the application afresh considering the present observations.
[SNT and Co. v. Shah Nanji Nagis Exports (P) Ltd., Appeal Against Order No.11/2025, 03-11-2025]
Advocates who appeared in this case:
For the Appellant: Y.B. Sharma, Advocate
For the Respondent: S.S. Dewani, Advocate