Full Judgment Text
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CASE NO.:
Appeal (civil) 2756 of 2007
PETITIONER:
M/s.Heinz Italia & Anr
RESPONDENT:
M/s.Dabur India Ltd
DATE OF JUDGMENT: 18/05/2007
BENCH:
B.P. SINGH & HARJIT SINGH BEDI
JUDGMENT:
J U D G M E N T
CIVIL APPEAL No 2756/2007
(arising out of S.L.P.(C) No. 59/2006)
HARJIT SINGH BEDI,J.
1. Leave granted.
2. This appeal arises out of the judgment and order dated
27th October 2005 of the Punjab and Haryana High Court
whereby the order of the trial court dated
11thDecember 2003 rejecting an application moved by the
appellants under Order 39 Rules 1 and 2 of the Code of
Civil Procedure praying for the grant of ad-interim
injunction, has been confirmed.
3. The plaintiffs-appellants M/s. Heinz Italia S R L is
the proprietor of the trademark "Glucon-D" which has been
registered in India under Registration No. 305664 (Class 30)
under The Trade and Merchandise Marks Act, 1958
(hereinafter called the "Act"). This trademark had earlier
been registered in the name of Glaxo on 21st May, 1975
but subsequently vide deed of assignment dated 30th
September 1994 had been assigned to the first petitioner
along with the goodwill etc. Glaxo Laboratories had also
assigned their rights in the artistic work used on the
packaging. The plaintiffs-appellants thereupon used the
trademark "Glucon-D" and the "packaging" from the year
1994 to 2002 without any interference and established a
very good name in the market. In July 2002, the appellants
learnt that the defendant-respondent, Dabur India had
launched a similar product under the name "Glucose-D" by
using packaging which was deceptively similar to the
packaging used for "Glucon-D". The appellants thereupon,
through their Advocate, served a notice on the respondent
calling upon it to desist from using the mark and the
deceptive packaging, but as no satisfactory reply was forth
coming, filed a suit for permanent injunction and accounts
of profits for infringement of the trademark under Sections
29 and 106 of the Act and infringement of copy right under
Section 63 of the Copyright Act. Along with the suit the
appellants also filed an application under Order 39 Rules 1
and 2 of the Code of Civil Procedure for the grant of an ad-
interim injunction to restrain the respondent from using the
trademark "Glucose-D" or any other trademark and
deceptively similar packaging as well. In the plaint it was
pleaded inter alia that the respondent was trying to impinge
on the goodwill and reputation that the product "Glucon-D"
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enjoyed in the market. The respondent filed a written
statement and took the plea that the word Glucose was a
generic expression of the product being sold and as such no
monopoly could be claimed by the appellants or anyone else
on the said word or its derivatives. It was also pleaded that
there was no similarity between the trademark "Glucon-D"
and "Dabur Glucose-D" and that the packaging was also
dissimilar. (It appears that the appellants have also filed a
suit in the Calcutta High Court to stop the misuse
alongwith an application for interim relief but on an
application by the respondent, the proceedings in Calcutta
have been stayed pending the decision of the present suit.)
The trial Judge in his order dated 11th December 2003 held
that the word "Glucose" was a generic word and as such the
appellants could not claim that the use of the word
"Glucose-D" violated their registered trademark "Glucon-D".
The Court also rejected the plea that the packaging used by
the respondent was deceptively similar by making an
examination of the two sets of packaging and noticing the
dissimilarities between the two. The application was
accordingly dismissed. The appellants thereupon filed a first
Appeal in the Punjab and Haryana High Court but that too
was dismissed on 27th October 2005 confirming the
judgment of the trial court. It is in these circumstances
that the matter has come to this Court.
4. We have heard the learned counsel for the parties
at great length and examined the case law cited by them.
At the outset, it must be pointed out that we are presently
concerned only with the proceedings for ad-interim
injunction claimed by the appellants under Order 39 Rules
1 and 2 CPC. We are accordingly confining ourselves to
this limited aspect only, with the larger issues being left for
decision in the suit.
5. Dr. Singhvi, the learned senior counsel for the
appellants has first and foremost argued that the mark
"Glucon-D" used by "Glaxo" since the year 1940 had been
registered as a trademark in the year 1975 whereas it
appears that the term "Glucose-D" had come into use some
time in the year 1989 and as prior user was a cardinal test
in cases of infringement and "passing off", this fact alone
would suffice for the purpose of securing an order of ad-
interim injunction. He also pleaded that as the packaging
in green and the depiction of a "happy family" superimposed
thereon had been used by the appellants since the year
1980 and by Glaxo for about decade earlier, the prior user
also stood proved on record, and an injunction should thus
follow. He has in this connection placed reliance on
Century Traders vs. Roshan Lal Duggar & Co. AIR 1978
Delhi 250 and Cadila Healthcare Ltd. vs. Cadila
Pharmaceuticals Ltd. 2001 PTC 300 (SC). He has also
pleaded that the mark "Glucon-D" with its packaging had
earned a reputation in the market and it was the intention
of the respondent to dishonestly appropriate his goodwill
which was impermissible in view of the judgments reported
in Corn Products Refining Co. vs. Shangrila Food
Products Ltd. AIR 1960 SC 142 and in Midas Hygiene
Industries P.Ltd. vs. Sudhir Bhatia & Ors. 2004 (28) PTC
121 SC. It has further been pleaded that the word
"Glucose-D" was not a generic word but even assuming it to
be so, an injunction could still follow in special
circumstances and reference has been made to Godfrey
Philips India Ltd. vs. Girnar Food & Beverages (P) Ltd.
(2004) 5 SCC 257. It has accordingly been prayed that the
appellants were entitled to an order of injunction in the
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matter.
6. Mr. Sudhir Chandra, the learned senior counsel for
the respondent has, however, argued that the application
for ad-interim injunction had been declined by two courts
and as the respondent had been using the word "Glucose-
D" and the packaging since the year 1989 and the suit had
been filed after many years i.e. in 2003 was a good reason
for refusal to exercise the discretion in favour of the claim
for interim relief. Reliance for this argument has been
placed on Wander Ltd. vs. Antox India P.Ltd. (1990)
Suppl. SCC 727.
7. It has also been pleaded that it had to be shown
by the appellants that the word "Glucon-D" and the
packaging which they claim as their own was deceptively
similar to the respondent’s product and had acquired a
unique reputation in the market but no such evidence had
yet come on record to justify an order of ad-interim
injunction. Reliance has been placed on J.B. Williams vs.
H.Bronnley; 26(1909) RPC 765 in support of this
argument.
8. Mr. Sudhir Chandra has further pointed out that the
courts below had rightly held that the word "Glucose" was
a generic word and could not be appropriated by anybody
and that even if its exclusive use could be justified in some
extraordinary situation the decision could be arrived at only
after evidence had been recorded. He too has relied on
Godfrey Philips India’s case (supra) in support of this
argument.
9. We first take up the objection raised by Mr. Sudhir
Chandra i.e. with regard to the interference of this Court in
an application for ad-interim injunction. It has been held
in Wander Ltd. case (supra) that an interlocutory
injunction under Order 39 Rules 1 and 2 of the CPC is in
the nature of a discretionary relief and that interference
should not be made when two courts have gone against a
party. We however find from the facts of the case that in
that matter the ad-interim injunction had been held to be
rightly refused as the opposite party had claimed and
proved prior user on which the passing off action was
based. In the present case, however, the fact that the
"Glucon-D" and its distinctive packaging had been used by
Glaxo since the year 1940 and thereafter by the appellant
long before it had been used by the respondent is clear on
record. We also find that the challenge in these proceedings
is to the mark and packaging used in Gurgaon from the
year 2000. We therefore reject the first argument raised by
Mr. Sudhir Chandra.
10. We have also considered the arguments with
regard to the prior user of the trademark "Glucon-D" and
the specific packaging. It is the admitted case that the
term "Glucose-D" has been used by the respondent from the
year 1989 and that the packaging which is the subject
matter of dispute in the present suit has been in use from
the year 2000. In the case of Century Traders (supra) it
has been held that in an action for passing off, the plaintiff
has to establish prior user to secure an injunction and that
the registration of the mark or similar mark in point of time,
is irrelevant. This Court in Cadila Health Care case (supra)
also laid down the tests in the case of passing off and
observed as under:-
"In other words in the case of un-
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registered trade marks, a passing off action is
maintainable. The passing off action depends
upon the principle that nobody has a right to
represent his goods as the goods of some
body. In other words a man is not to sell his
goods or services under the pretence that
they are those of another person. As per Lord
Diplock in Erwen Warnink BV v. J.Townend
& Sons, 1979 (2) AER 927, the modern tort of
passing off has five elements i.e. (1) a
misrepresentation, (2) made by a trader in
the course of trade, (3) to prospective
customers of his or ultimate consumers of
goods or services supplied by him, (4) which
is calculated to injure the business or
goodwill of another trade (in the sense that
this is a reasonably foreseeable consequence),
and (5) which causes actual damage to a
business or goodwill of the trader by whom
the action is brought or (in a quia timet
action) will probably do so."
11. Likewise, it has been repeatedly held that before
the use of a particular mark can be appropriated it is for the
plaintiff to prove that the product that he is representing
had earned a reputation in the market and that this
reputation had been sought to be violated by the opposite
party. In Corn Products case (supra) it was observed that
the principle of similarity could not to be very rigidly applied
and that if it could be prima facie shown that there was a
dishonest intention on the part of the defendant in passing
off goods, an injunction should ordinarily follow and the
mere delay in bringing the matter to Court was not a
ground to defeat the case of the plaintiff. It bears
reiteration that the word "Glucon-D" and its packaging had
been used by Glaxo since 1940 whereas the word "Glucose-
D" had been used for the first time in the year 1989. In
Cadila Healthcare case (supra), it has also been held that
in the case of a passing off action the similarities rather
than the dissimilarities have to be taken note of by the
Court and the principle of phonetic "similarity" cannot be
ignored and the test is as to whether a particular mark has
obtained acceptability in the market so as to confuse a
buyer as to the nature of product he was purchasing. We
observe that the both Glucon-D and Glucose-D are items
containing glucose and to us it appears that there is
remarkable phonetic similarity in these two words.
We have also examined the packaging of the product and
specifically Annexure P.6 (colly). Item D of Annexure P-6 is
the packaging in dispute. It will be seen that the colour
scheme of Glucose-D and Glucon-D is almost identical with
a happy family superimposed on both. Mr. Chandra has
however pointed out that in Glucose-D the happy family
consisted of four whereas in the case of Glucon-D the family
was of three and as such the two were dissimilar. We are
of the opinion however that the colour scheme and the
overall effect of the packaging has to be seen. We have also
examined Item D individually which is the exclusive
packaging for Glucose-D; the one on the extreme left being
the packaging in the year 1989, the one in the middle being
the one for the year 2000 (which is impugned in the present
suit) and the third on the extreme right which is the subject
matter of the suit in Calcutta which has been stayed on the
application made by respondent. We are of the opinion that
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the packaging of Glucose-D is Glucon-D is so similar that it
can easily confuse a purchaser. We also feel that mere fact
that the respondents have time and again made small
changes in their packaging is an attempt to continue to
mislead the purchaser and to make it more difficult for the
appellants to protect their mark, which the record shows
has acquired an enviable reputation in the market which is
sought to be exploited by the respondent.
12. It is true that certain issues have been raised by
Mr. Chandra which necessitate a consideration of the
evidence such as the plea based on Godfrey Philips case
(supra) but we are of the opinion that the case of prior user
of the mark is a fact which needs no evidence in the present
circumstances.
13. We accordingly set aside the order of the trial
court dated 11th December 2003 and the order of the High
Court dated 27th October 2005. However, as this order is
confined only to the limited question of an ad-interim
injunction, any observation made in this order would not
bind the trial Judge in the proceedings in the suit. The
application for ad-interim injunction is accordingly allowed
in terms of prayer clause (ii) of the application.
14. The Civil Appeal is disposed of.