Full Judgment Text
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PETITIONER:
M/S S.M. DYECHEM LTD.
Vs.
RESPONDENT:
M/S CADBURY (INDIA) LTD.
DATE OF JUDGMENT: 09/05/2000
BENCH:
M.J.Rao, Y.K.Sabharwal
JUDGMENT:
M. JAGANNADHA RAO, J.
Leave granted. In trade mark cases, the tension is
between protectionism on the one hand and allowing
competition on the other. In the late nineteenth century
where law was regarded as a science, the legal formalists
laid down principles and legal rules, treating trade mark as
’property’. In the beginning of this century, legal
realists laid emphasis on pragmatic considerations of
economic policies and "real world results" and the
’likelihood of confusion’. Of late, the tension between
protectionism and competition has increased. ( See Vol.59
’Law and Contemporary Problems, 1996, No.2 P.5 at p.14) ( A
Personal Note on Trade Mark etc. by Milton Handler). This
is a plaintiff’s appeal against the judgment of the Gujarat
High Court in A.F.O. No. 203 of 1999 dated 24.8.1999, by
which the High Court of Gujarat allowed the appeal preferred
by the respondent-defendant and set aside the temporary
injunction which was initially granted on 25.2.99 and which
was confirmed on 23.3.99. The injunction was sought by the
appellant to restrain the respondent from using the word
PICNIC as it allegedly amounted to infringement of the
appellants’ registered trade mark for the use of the word
PIKNIK. The suit was on the basis of infringement of trade
mark and also on the basis of passing off. The brief facts
of the case are as follows: The appellant
company(plaintiff) claimed that it started business in 1988
in four products like potato, chips, potato wafers,
corn-pops and preparations made of rice and rice flour. In
January 1989 it started using the trade mark PIKNIK. It
applied for registration on 17.2.1989 of the said word in
class 29 ( for preserved dried and cooked fruit vegetables
etc. including all goods included in class 29) under
application No. 505531B. Plaintiff also applied for
registration of same trade mark in class 30 ( for tea,
coffee, corns, jaggery etc. including confectionery
chocolates, honey etc.) under application 505532. A third
application under same name was ( for beverages, beers,
mineral and irrigated water) under application No. 505533.
Registration was granted on 29.7.1994 after advertisement on
1.9.93. The appellant renewed the trade mark last for 7
years from 17.2.1996. Respondent-defendant was found using
the mark ’PICNIC’ for chocolates. Appellant gave notice on
16.3.1998. Respondent replied on 7.4.98. Thereafter, the
appellant filed the suit on 18.2.1999 based on alleged
infringement of trade mark 505532 and passing off. Pending
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the suit, appellant applied for temporary injunction. (The
respondent filed an application on 19.3.1999 in the Bombay
High Court for rectification and the same is pending). The
respondent-defendant contended in this interlocutory
application that ’CADBURY’S PICNIC’ was introduced in 1998
for chocolates. It was registered earlier under No. 329970
in class 30 of 4th schedule in 1977 for dairy milk
chocolates, wafers bar, dairy milk chocolate, confectionery
etc. ( The said trade mark expired after 7 years and was
not renewed). Defendant applied for rectification of the
plaintiff’s trade mark by application dated 19.3.99.
Defendant had also filed a subsequent application for
registration of CADBURY PICNIC in August 1999 ( appln. No.
712676). It pleaded that CADBURY PICNIC and/or PICNIC
and/or label with the said word was registered by the
defendant’s parent company in over 110 countries all over
the world and the defendant had transborder reputation and
goodwill. The plaintiff could not claim monopoly in the
variations of the ordinary dictionary word PICNIC or any
misspelling thereof. Plaintiff had never intended to do
business in chocolates. Its main business was in dyes and
chemicals. Its business in food products was ancillary and
fell under NAMKINS and PAPADS. Even otherwise, both labels
were different in essential features. The registration by
plaintiff was only of a label and could not be and was not
of the word PIKNIK. The said word was a misspelling of an
ordinary dictionary word and was not "distinctive."
Registration thereof under section 9 was invalid. There was
also delay in filing the suit on 18.2.1999 and injunction
could not be granted. The trial Court held that the
plaintiffs’ registration of the word PIKNIK ( including for
chocolates) was and is in force, that the defendant’s
earlier registration had expired, that the defendant did not
oppose registration by plaintiff, that there was no
unreasonable delay in filing the suit, that injunction in
these circumstances could not be refused even if there was
some delay, plaintiff had a prima facie case and balance of
convenience was in plaintiff’s favour. It held that the
defendants’ mark was ’deceptively similar’ within section
2(1)(d) of the Trade and Merchandise Marks Act, 1958, that
confusion could be created in the minds of purchasers either
because the marks were similar visually or ocularly or
phonetically. Here there was clear phonetic resemblance.
The contention that what was registered was the label and
not the word ’PIKNIK’ could not be accepted. The ’essential
features’ of the trade marks were similar. Section 2(1)(f)
referred to ‘mark’ as including a device brand, heading,
label, ticket, name, signature, word, letter, numeral or any
combination thereof. Even if the ’essential features’ of
the words ’PIKNIK’ were taken into consideration, the
defendant’s mark ’PICNIC’ was deceptively and phonetically
similar. The defendant had cleverly designed the word
’PICNIC’ by change of spelling and the word was so designed
on its label in large letters. The plaintiff’s trade mark
was registered under class 30 which included ’chocolates’.
Section 9(1)(d) or (e) would not help the defendant inasmuch
as the plea that this was a common dictionary word was not
correct. In fact the defendant had himself registered the
word PICNIC in 1977 in India and the same word was
registered in other countries. Defendant had again applied
in India in 1998-1999 for registration of the same word.
Section 28 of the Act conferred a statutory right on
plaintiff on account of registration. The said mark was
registered without opposition under section 21. On the
above reasoning, the trial Court granted temporary
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injunction in favour of the appellant. On appeal by the
defendant, the High Court reversed the judgment and held
that the word PIKNIK could not be called an ’essential
feature’. The plaintiff’s label consisted of the peculiar
script of the word ’PIKNIK’ in a curved fashion with the
caricature of a little boy with a hat in between the words
’K’ and ’N’. The script and the figure of the little boy
were the essential features and not the word ’PIKNIK’. The
plaintiff’s label had to be looked at as a whole. Plaintiff
was marketing potato chips and potato wafers in a polythene
pouch and not chocolates, though plaintiff had registration
under class 30 for chocolates. Defendant was marketing
under trade label ’Cadbury’s PICNIC’ in a polythene pouch
and hence both marks were different. Defendant was not
using the plaintiff’s label with the caricature of a boy.
It was true there was phonetic similarity but the word
’PIKNIK’ was a misspelling of the common dictionary word
PICNIC and hence could not be the subject of any proprietary
right. Here the products too were different and there was
no confusion. The fact that the plaintiff was using the
word ’PIKNIK’ could not be compared to cases where well
known trade names were under use - like Cadbury - and if the
defendant used the word PICNIC along with the word Cadbury,
for a different product, there could be no infringement.
Cadbury was a household name in India and defendant had been
marketing chocolates since 1948. The said word had almost
become synonymous with chocolates in India as in the case of
’Cadbury Dairy Milk’, ’Cadbury Five Star’ etc. The same was
true with ’Cadbury Picnic’. There was absolutely no scope
for deception. There was neither infringement nor passing
off. Based on this reasoning the High Court allowed the
appeal of the respondent-defendant and set aside the order
of temporary injunction. In this appeal, learned senior
counsel for the appellant-plaintiff Sri P. Chidambaram
contended that the defendants, by merely filing a
rectification application on 19.3.99, after the appellants
filed the suit on 18.2.99 for injunction based on
infringement, could not scuttle the suit or this application
for temporary injunction. In the present suit or in the
application, the respondent could not raise a defence that
the registration of the plaintiff’s trade mark was "invalid"
on the ground that the word PIKNIK was not "distinctive" and
that it was akin to a dictionary word or that the trade mark
did not satisfy various clauses of section 9(1). Section 31
raised a presumption of validity of plaintiff’s registered
mark. It was sufficient if the plaintiff’s mark had became
distinct even by the actual date of registration. For
purposes of section 31, the deeming clause in section 23(1)
did not apply. Under section 32 of the Act, if seven years
had elapsed from the date of registration ( i.e. date of
application for registration as deemed by section 23), then
the plea of invalidity of registration, namely, that
plaintiff’s registration of trade mark was not
’distinctive’, could not be raised in this suit nor in
defence to this application nor even in the rectification
proceedings. Seven years had elapsed by 17.2.96, long
before the defence in the suit was raised as also by the
date of filing of the rectification application on
19.3.1999. Date of the registration in section 32 [unlike
the position under section 31(2)] was to be deemed as date
of application for registration in view of section 23(1).
Hence the defendant could not be permitted to raise any plea
that the word ’PIKNIK’ was not ’distinctive’ by 17.2.89
within section 9. In this context, the decision of this
Court in National Bell Co. vs. Metal Goods Mfg. Co.
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[1970 (3) SCC 665] was relevant. Learned counsel also
argued that under section 2(j) and 2(v), ’mark’ included a
label. In any event, the plaintiff’s trade mark was valid
as it fell within the various clauses of section 9, even if
it be assumed that section 32 did not bar the defendant’s
plea. In view of the rights conferred by registration of
the trade mark under section 28, it must be held that the
trade mark was infringed within section 29 inasmuch as the
defendant used its mark which was ’deceptively similar’ to
the plaintiff’s trade mark. Apart from the right arising
out of infringement, the defendant was guilty of ’passing
off’ of the defendant’s goods as the plaintiff’s goods. In
view of the principles laid down in American Cyanamid Vs.
Ethicon Ltd. (1975(1) All. E.R.504(HL), it is sufficient
if a triable issue is raised. No prima facie case need be
proved. Hence the appellant should be granted temporary
injunction. On the other hand, learned senior counsel for
the defendant Sri Dushyant Dave contended that even if in
view of section 111(5) of the Act, the temporary injunction
applications could go on, the defence that plaintiff’s trade
mark was invalid as it did come within section 9 could be
raised in these interlocutory proceedings. Plaintiff’s
trade mark was invalid as the conditions in section 9 were
not satisfied and in any event, being akin to a dictionary
word, it was not "distinctive" within section 9(1)(e). The
presumption under section 31(2) did not apply and the bar in
section 32 also did not apply since seven years had not
elapsed from "the date of registration", by the time the
defence was raised in this suit that plaintiff’s mark was
not distinctive. In any event, the case fell within the
exceptions mentioned in section 32 and in particular the one
in section 32(e). Counsel also contended that there was no
deception within section 29 read with section 2(d). The
plaintiff’s mark was the entire label and not the word
’PIKNIK’ alone. The conditions specified in section 29 were
not satisfied. Further, the defendant’s mark PICNIC had
cross-border reputation in 110 countries over a long period
and the use of the said word in India would not infringe the
plaintiff’s trade mark nor would such use amount to ’passing
off’ defendant’s goods as the plaintiff’s goods. In view of
Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd. (
1999(7) SCC 1), the relative strength of the case above need
be considered. On these contentions, the following points
arise for consideration: (1) Whether the defendant could,
in the present interlocutory proceedings, based on
infringement and passing off, raise any defence that the
registration of plaintiff’s mark was itself "invalid"
because the plaintiff’s mark did not satisfy the ingredients
of clauses (a) to (e) of section 9(1) and was, in
particular, not "distinctive" as required by section
9(1)(e)? (2) Whether, on the other hand, plaintiff could
rely on the presumption in section 31 and also contend that
under Section 32 the "validity" of the registration of the
plaintiff’s mark had become conclusive on the expiry of 7
years long before defence was raised in the suit (such time
reckoned from date of application for rectification under
section 23(1)) and whether there were any exceptions to the
said bar? (3) Whether, assuming that section 31 and section
32 did not come in the way of the defendant, on merits the
word ’PIKNIK’ was not distinctive and did not satisfy
section 9(1)(e)? (4) For grant of temporary injunction,
should the Court go by principle of prima facie case ( apart
from balance of convenience) or comparative strength of the
case of either parties or by finding out if the plaintiff
has raised a ’triable issue’? (5) Whether, assuming that
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plaintiff’s registration was valid, the comparative strength
of the case on the question of infringement is in favour of
plaintiff? (6) Whether, alternatively, the plaintiff had
made out that for grant of temporary injunction treating the
suit as a ’passing off’ action, the relative strength of the
case, was in plaintiff’s favour? (7) Whether there was
unreasonable delay on the part of the plaintiff in filing
suit and whether the High Court was justified in interfering
in appeal in interlocutory proceedings? POINT 1, 2 and 3:
The provisions of section 111 deal with ’stay of proceedings
where the validity of registration of the trade mark is
questioned etc.’. In the present case, while the plaintiff
appellant has filed the present suit on 18.2.99 for
permanent injunction etc. against the defendant-respondent
on the ground of ’infringement’ and ’passing off’, the
defendant has filed an application for rectification on
19.3.99 in the High Court of Bombay. Now Section 111 is
intended to protect the plaintiff. The defendant, by filing
a rectification proceeding later in the High Court cannot
preclude the plaintiff from seeking interim relief in view
of section 111(5). Under section 111(1)(a), if in any suit
the defendant pleads invalidity under section 9 of the
plaintiff’s trade mark, then, (i) the Civil Court trying the
infringement suit shall stay the suit if rectification
proceedings are pending. (ii) if no such rectification
proceedings are pending, the Civil Court has to raise an
issue as to validity of plaintiff’s trade mark and refer the
parties to the High Court to seek rectification. Under
clause (2) if a rectification application is filed as
directed, the suit is to be stayed till rectification
proceedings are over. If such an application is not filed
for rectification, it shall be deemed that the plea is
abandoned by defendant. Under section 111(5), even if the
suit is to be stayed pending rectification proceedings, the
plaintiff can file and have interlocutory applications for
temporary injunction etc. to be disposed of. The point
raised by the learned senior counsel for the appellant Sri
P. Chidambaram is that the policy of the Act is not to
allow the defendant to raise any issue relating to the
"invalidity" of the plaintiff’s trade mark as a defence in a
Civil Suit for infringement at any time at the pleasure of
the defendant and that a question as to validity can be
decided only in rectification proceedings, provided, on
facts, such proceedings are in time ( as prescribed in
section 32) and are otherwise maintainable. If such issues
cannot be raised in the main suit itself, they cannot be
raised even in interlocutory proceedings. It is pointed out
that even where no rectification proceedings are pending, if
a question relating to the "invalidity" of registration of
plaintiff’s mark is raised in defence, the Court has to
direct the defendant to move for rectification and is to
adjourn the suit. Learned senior counsel, in this context,
pointed out the distinction, between the Trade Marks Act and
the Patents Act, by referring us to section 107 of the
Patents Act, 1970. That section reads as follows: "Section
107- Defences, etc. in suits for infringement: (1) In any
suit for infringement of a patent, every ground on which it
may be revoked under section 64 shall be available as a
ground for defence. (2) In any suit for infringement of a
patent by the making, using or importation of any machine,
apparatus or other article or by the using of any process or
by the importation, use or distribution of any medicine or
drug, it shall be a ground for defence that such making,
using, importation or distribution is in accordance with any
one or more of the conditions specified in section 47." It
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is true that under section 107 of the Patents Act, it is
permissible in any suit for infringement of a patent, for
the defendant to raise all pleas in defence which he could
have raised under section 64 of the Act for revocation and
there is no similar provision in the Trade Marks Act, 1958.
However, the question is as to what extent under the Trade
Marks Act, 1958 sections 31 and 32, come in the way of the
defendant. Now section 9(1) sets down the various
requisites for a "valid" registration of a trade mark in
parts A and B of the register. Section 9(1) is to be read
alongwith section 9(3) which defines the word ’distinctive’
used in section 9(1)(e). Section 9 reads as follows:
"Section 9: Requisites for registration in Parts A and B of
the register - (1) A trade mark shall not be registered in
Part A of the register unless it contains or consists of at
least one of the following essential particulars, namely: -
(a) the name of a company, individual or firm represented in
a special or particular manner; (b) the signature of the
applicant for registration or some predecessor in his
business; (c) one or more invented words; (d) one or more
words having no direct reference to the character or quality
of the goods and not being, according to its ordinary
signification, a geographical name or a surname or a
personal name or any common abbreviation thereof or the name
of a sect caste or tribe in India; (e) any other
distinctive mark. (2) ....................................
(3) For the purposes of this Act, the expression
’distinctive’ in relation to the goods in respect of which a
trade mark is proposed to be registered means adapted to
distinguish goods with which the proprietor of the trade
mark is or may be connected in the course of trade from
goods in the case of which no such connection subsists
either generally or, where the trade mark is proposed to be
registered subject to limitations, in relation to use within
the extent of the registration." For the present, we are not
referring to the other sub- clauses of section 9. If a
trade mark does not satisfy section 9, it is well settled
that it is to be treated as ’invalid’. The defence of the
defendant-respondent based on section 9(c),(d) and (e) is
that the word ’PIKNIK’ is akin to a dictionary word and is
not an inventive word nor a word having no direct relation
to the character or quality of goods nor a distinctive word
and hence sub- clauses (c), (d) (e) of section 9(1) do not
apply and the registration of the plaintiff’s trade mark is
in itself invalid. This brings us to sections 31 and 32 for
deciding whether the plea can be raised in defence in these
interlocutory proceedings. Section 31 states that
registration is to be prima facie evidence of validity.
Section 31 reads as follows: "Section 31: Registration to
be prima facie evidence of validity - (1) In all legal
proceedings relating to a trade mark registered under this
Act (including application under section 56), the original
registration of the trade mark and of all subsequent
assignments and transmissions of the trade mark shall be
prima facie evidence of the validity thereof. (2) In all
legal proceedings as aforesaid a trade mark registered in
Part A of the register shall not be held to be invalid on
the ground that it was not a registrable trade mark under
section 9 except upon evidence of distinctiveness and that
such evidence was not submitted to the Registrar before
registration, in all legal proceedings as aforesaid, if it
is proved that the trade mark had been used by the
registered proprietor or his predecessor in title as to have
become distinctive at the date of registration." Section 32
deals with conclusive proof of validity of the trade mark
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and reads as follows: "Section 32: Registration to be
conclusive as to validity after seven years - Subject to the
provisions of section 35 and section 46, in all legal
proceedings relating to a trade mark registered in Part A of
the register ( including applications under section 56), the
original registration of the trade mark shall after the
expiration of seven years from the date of such
registration, be taken to be valid in all respects unless it
is proved - (a) that the original registration was obtained
by fraud; or (b) that the trade mark was registered in
contravention of the provision of section 11 or offends
against the provision of that section on the date of
commencement of the proceedings; or (c) that the trade mark
was not at the commencement of the proceedings, distinctive
of the goods of the registered proprietor." While section 31
raises a presumption as to validity of registration, section
32 bars any such question being raised after seven years,
subject of course to some exceptions. In our view, any
decision on the question of ‘validity’ of the appellant’s
trade raised as a defence in the present application filed
under Order 39 Rule 1 CPC will seriously jeopardise a
decision on the same issue now pending in the rectification
proceedings filed by the respondent in the Bombay High
Court. We would therefore not go into the question of
’validity’ or ’distinctiveness’ of the plaintiff’s trade
mark nor into the applicability of National Bell Co. Case (
1970(3) SCC 665) as those issues are to be decided in the
rectification proceedings. We are of the view that the case
before us can be disposed of by considering whether there is
prima facie any deception and hence infringement and whether
there is any ’passing off’. Points 1, 2 and 3 are therefore
not decided. POINT 4: This point deals with the principles
applicable for grant of temporary injunction in trade mark
cases. Before American Cyanamid Co,. vs. Ethicon Ltd. (
1975(1) ALL E.R. 504(HL), it was customary for the Courts
to go into prima facie case in trade mark cases for grant or
refusal of temporary injunction. But in American Cyanamid,
it was observed that it was sufficient if a "triable issue"
was presented by the plaintiff and the merits need not be
gone into. The said judgment was referred to by this Court
in Wander Ltd. Vs. Antox India (P) Ltd. ( 1990 Supple.
SCC 727). The judgment in Wander Ltd. was followed in
Power Control Appliances Vs. Sumeet Machines (P)Ltd. (
1994(2) SCC 448). But in Gujarat Bottling Co. Ltd. Vs.
Coca Cola Co. ( 1995(5) SCC 545), this Court again adverted
to the prima facie case principle while granting temporary
injunction. All these rulings have been reviewed recently
in Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd.
(1999(7) SCC 1). It was pointed to this Court that there
was considerable criticism of the principles laid down in
American Cyanamid. ( See also Floyd, Interlocutory
Injunctions since Cyanamid ( 1983 E 1 PR 238), (Cole,
Interlocutory Injunctions in U.K. Patent Cases ( 1979. E 1
PR 71) ( see also Edenborough M and Tritton, American
Cyanamid revisited (1996 E1 PR 234) and Philipps in 1997 JBL
486). This Court referred to the recent judgment of Laddie
in UK. In U.K., Laddie, J. reconsidered the principle
recently and explained American Cyanamid in his judgment in
Series 5 Software Vs. Clark ( 1996(1) All ER 853(Ch.D).
The learned Judge observed that in American Cyanamid, Lord
Diplock did not lay down that the relative strength of the
case of each party need not be gone into. Thereafter, this
Court in Palmolive case has referred to Laddie J’s view and
said that the view of Laddie, J. is correct and that
American Cyanamid cannot be understood as having laid down
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anything inconsistent with the ’old practice’. We may also
add that now the courts in England go into the question
whether the plaintiff is likely or unlikely to win in the
suit i.e. into the comparative strength of the case of the
rival parties - apart from the question of balance of
convenience. [See again Laddie, J. in Barclay’s Bank Inc
Vs. R.B.S. Advanta ( 1998 RPC 307)] where such a question
is posed and where Series 5 Software was followed.
Therefore, in trade mark matters, it is now necessary to go
into the question of ‘comparable strength’ of the cases of
either party, apart from balance of convenience. Point 4 is
decided accordingly. POINT 5: Under this point, we propose
to trace the legal principles applicable to cases of
infringement with particular reference to dissimilarities in
essential features of a devise or mark. Under section 29 of
the Act, a plaintiff in a suit on basis of infringement has
to prove not only that his trade mark is infringed by a
person who is not a registered proprietor of the mark or a
registered user thereof but that the said person is using a
mark in the course of his trade, "which is identical with or
deceptively similar to the trade mark of the plaintiff, in
such manner as to render the use of the mark likely to be
mistaken as the registered trade mark". Under section 2(d),
the words "deceptively similar" are defined as follows: "a
mark shall be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as to be
likely to deceive or cause confusion". We shall now refer
to the broad principles applicable to infringement actions
and in particular to devices, labels and composite marks.
Essential Features if copied: It is well-settled that the
plaintiff must prove that essential features of his
registered mark have been copied. The onus to prove
’deception’ is on the part of the plaintiff who alleges
infringement. A mark is said to be infringed by another
trader if, even without using the whole of it, the latter
uses one or more of its "essential features". The
identification of an essential feature depends partly on the
courts’ own judgment and partly on the burden of the
evidence that is placed before it. Ascertainment of an
essential feature is not to be by ocular test alone; it is
impossible to exclude consideration of the sound of words
forming part or the whole of the mark. (Kerly, Law of Trade
Marks and Trade Names, 11th Ed. 1983, para 14.21). It is
no answer to a charge of infringement - as contrasted with a
passing off action - that the defendant’s mark, whilst
including the plaintiff’s mark, includes other matters too.
Still less is it an answer that by something outside that
actual mark the defendant has distinguished his goods from
those of the plaintiff - by adding his own name (Kerly para
14.22). But this principle is not absolute. It is also
accepted that addition of his own name by defendant is an
element to be considered and may turn the scales in favour
of the defendant. In same para 14.22, Kerly says: "But the
use of the defendant’s name as part of the mark complained
of is an element to be considered and in some cases it has
turned the scale in his favour" (Jewsbury & Brown Vs.
Andrew & Atkinson (1911) 28. R.P.C. 293)" Jewsbury case
was a case relating to infringement. (Of course, in para
14.25 Kerly also refers to cases where addition of
defendant’s a name has not turned the scales). So far as
resemblance in words is concerned, Justice Parker in
Pianotist Co’s Application (Pianola):(1906) 23 RPC 774 (at
777) has stated as follows: "You must take the two words.
You must judge of them, both by their look and by their
sound. You must consider the goods to which they are to be
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applied. You must consider the nature and kind of customer
who would be likely to buy the goods. In fact, you must
consider all the surrounding circumstances and you must
further consider what is likely to happen if each of these
trade marks is used in a normal way as a trade mark for the
goods of the respective owners of the marks. If considering
all those circumstances, you come to the conclusion that
there will be confusion - that is to say, not necessarily
that one man will be injured and the other will gain illicit
benefit, but there will be confusion in the mind of the
public which will lead to confusion in the goods - then you
may refuse registration, or rather you must refuse
registration in that case". This dictum has been quoted
with approval by this Court in Amritdhara Pharmacy Vs.
Satya Deo Gupta ( AIR 1963 SC 449) and Roche Vs. Geoffrey
Manners and Co.Pvt. Ltd. ( AIR 1970 SC 2062). Devices and
Composite Marks: But the considerations relating to words,
however, differ appreciably when device marks are to be
compared or when a device mark is to be compared with a word
mark. ( Kerly para 17.07). After referring to the factors
mentioned by Parker, J. in the above case, it is stated in
Halsbury’s Laws of England, (Vol.38, 3rd Ed., para 986) as
follows: "These considerations differ to some extent when
device marks are being compared or when a device mark is
compared with a word mark." Dissimilarity in essential
features in devices and composite marks more important than
some similarity: It has been stressed for the appellant
that since the word PICNIC is used by defendant while
plaintiff is using its misspelling PIKNIK, this is an
essential feature which is similar phonetically or visually,
and there is therefore infringement. It is argued that
presence of even one essential feature in defendant’s mark
is sufficient. In our opinion, in the case of devices and
composite marks, the above principle has not been strictly
applied. The English Courts have laid emphasis more on
dissimilarities in essential features rather than on
similarity. The "whole thing" principle is based on first
impression as seen by the Court. We shall now refer to
these principles laid down in the English cases. When the
question arises whether a mark applied for bears such
resemblance to another mark as to be likely to deceive, it
should be determined by considering what is the leading
character of each. The one might contain many, even most,
of the same elements as the other, and yet the leading, or
it may be the only, impression left on the mind might be
very different. On the other hand, a critical comparison of
the two marks might disclose numerous points of difference,
and yet the idea which would remain with any person seeing
them apart at different times might be the same. Thus, it
is clear that a mark is infringed if the essential features,
or essential particulars of it, are copied. In cases of
device marks, especially, it is helpful before comparing the
marks, to consider what are the essentials of the
plaintiff’s device. ( Kerly para 17.08) The trade mark is
the whole thing - the whole picture on each has to be
considered. There may be differences in the parts of each
mark, but it is important to consider the mode in which the
parts are put together and to judge whether the
dissimilarity of the part or parts is enough to make the
whole dissimilar. It has been said that if the only
resemblances between two marks are in parts which are
common, so that the owner of the one has taken nothing which
is peculiar to the other, then there is at all events no
infringement, at any rate unless the plaintiff had a
distinctive arrangement of the common elements. ( But this
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approach is hardly suited to a comparison of word marks;
and even in relation to label marks or other features of
get-up, it would be more appropriate to consider the case as
a whole, with due regard to the background provided by any
other marks shown to be in use ( Kerly para 17.17).
Therefore, the question is whether the defendant has, - so
far as the common feature is concerned, - copied any
distinctive arrangement of the common elements? Or has
copied any unusual feature of the common element ( Crispin’s
Appln.(1917) 34 RPC 249) ( see Kerly para 17.19, fn.77).
The marks, names or get-up concerned must always be
considered as the whole thing, as the true test is whether
the totality of the impression given both orally and
visually is such that it is likely to cause mistake,
deception or confusion (Halsbury Vol.38, 3rd Ed. para 987).
We next come to the crucial test laid down by Evershed M.R.
in Broadhead’s Application [( 1950) 67 RPC 209 at 215] which
was a case relating to opposition to registration. The
Master of Rolls followed the observations of Lord Russell in
Coca Cola Co. of Canada Vs. Pepsi Cola Co. of Canada (
which was an infringement action )[(1942) 59 RPC 127) and
observed as follows: "Where you get a common denominator,
you must in looking at the competing formulas, pay much more
regard to the parts of the formulas which are not common -
although it does not flow from that that you must treat the
words as though the common part was not there at all".
Where common marks are included in the rival trade marks,
more regard is to be paid to the parts not common and the
proper course is to look at the marks as whole, but at the
same time not to disregard the parts which are common.
Halsbury ( 3rd Ed. para 992) also says: where there are
common elements to two or more marks, more regard must be
paid to the parts that are not common but the common parts
cannot be disregarded. (Coca Cola Co. of Canada Ltd. vs.
Pepsi Cola Co. of Canada Ltd. (1942 (1) All.E.R. 615(PC).
The above principles have been laid down in English law.
Decisions of this Court -infringement, essential features
and the whole thing This Court has laid down in Corn
Products Refining Co. Vs. Shangrila Food Products Ltd.
(AIR 1960 SC 142), which was a case of infringement, that it
would be for the court to decide whether the marks were
similar. It was observed that "in deciding the question of
similarity between two marks, the marks have to be
considered as a whole". Again in K.K. Chinna Krishna
Chettiar Vs. Sri Ambal and Co. and Anr. (AIR 1970 SC
146), where the question of similarity arose at the stage of
opposition to the appellant’s mark by the respondents ( who
had a registered trade mark), it was observed that: "it is
for the court to decide the question on a comparison of the
competing marks as a whole." The resemblance between the two
marks must be considered with reference to the ear as well
as the eye". In Roche and Co. Vs. Geoffrey Manners and
Co.Pvt. Ltd. ( AIR 1970 SC 2062), the question of
’deceptive similarity’ was raised by the appellant ( a
registered trade mark holder) for removal of the
respondent’s trade mark, in rectification proceedings. (The
decision is relevant in an infringement action except that
the burden of proof in an infringement action is on the
plaintiff while in an application for rectification it is
the applicant). It was again observed in the above case
that: "it is necessary to apply both the visual and
phonetic tests". "It is also important that the marks must
be compared as whole". "The true test is whether the
totality of the proposed trade mark is such that it is
likely to cause deception or confusion or mistake in the
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minds of persons accustomed to the existing trade mark". In
yet another case of an infringement action, Parle Products
(P) Ltd. Vs. J.P. and Co., Mysore ( AIR 1972 SC 1359),
the question was in relation to a wrapper with the words
’Gluco biscuit’ and the particular colour scheme, the
general get up used for sale of Parle’s Gluco Biscuit’ so
printed on the wrapper. There was a farmyard with a girl in
the centre carrying a pail of water and cows and hens around
her in the background of a farm-house. The defendant was
selling biscuits with the name ’Glucose Biscuits’. The
wrapper contained picture of a girl supporting with one hand
a bundle of hay on her head and carrying a sickle and a
bundle of food, with cows and hens around, in the background
of a building. This Court held, on those facts, that in an
infringement action, it was sufficient if there was ’overall
similarity’ as would mislead a person usually dealing with
one to accept the other if offered to him. Here the packets
were of the same size and the colour scheme and design were
having close resemblance. The marks should not be kept side
by side and compared. The essential features of both
marking were a girl with one arm raised and carrying
something in the other while the cows or hens were near her,
in the background of a house. The decision of this Court in
Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories
( AIR 1965 SC 980), was a case where the
respondent-registered holder of the trade mark opposed the
appellant’s registration. The question of deception arose
in that context. Both were using the word ’Navratna
Pharmaceutical laboratories’ in connection with sale of
Ayurvedic medicines. It was held that for judging whether
the later mark was deceptive, it was sufficient if the
similarity was so close visually, phonetically or otherwise.
If the essential features had been proved to be adopted by
the opposite party, that was sufficient. The fact that the
get-up, packing and other writing or marks on the goods or
packets showed marked difference was not material, though
such features could be material in a passing-off action and
the defendant might escape liability by showing some
additional matter to distinguish his goods. The purpose of
comparison was to see if the essential features were
different. The object of inquiry was to find out if the
defendant’s mark was as a whole similar to the plaintiff’s
registered mark. Ruston and Hornsby Ltd. Vs. The
Zamindara Engineering Co. ( 1969(2) SCC 727) was again a
case of an infringement action. It was admitted that the
words ’Ruston and Rustam’ were deceptively similar and the
fact that to the latter, "India" was suffixed made no
difference. The court pointed out the difference between an
infringement action and a passing off action and held that
if there was colourable imitation, the fact that the get up
was different was not relevant in an infringement action
though it might have had relevance in a passing off action,
and in that context referred to Saville Perfumery Ltd. Vs.
Jump Perfect Ltd. [(1941) 58 RPC 147 (161)]. Broadly,
under our law as seen above, it can be said that stress is
laid down on common features rather than on differences on
essential features, except for a passing reference to a
limited extent in one case. Difference in essential
features are also relevant under Indian Law: It appears to
us that this Court did not have occasion to decide, as far
as we are able to see, an issue where there were also
differences in essential features nor to consider the extent
to which the differences are to be given importance over
similarities. Such a question has arisen in the present
case and that is why we have referred to the principles of
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English Law relating to differences in essential features
which principles, in our opinion, are equally applicable in
our country. Application of Principles to facts of this
case: If differences in essential features are relevant,
the next question is as to what is the position on facts.
The first question therefore is as to what, on the facts,
are the essential features of the plaintiff’s mark? It is
clear that apart from the word PIKNIK, the essential
features are also the special script of these words in block
letters and the curve in which these words are inscribed and
the caricature of the boy with a hat occurring between the
words K and N on the plaintiff’s mark. On the other hand,
the defendant’s mark contains the words PICNIC in a
straightline, the script is normal and the words ‘Cadbury’
are written above the words PICNIC. Neither the peculiar
script nor the curve nor the boy with a hat are found in the
defendant’s mark. It is true that there is phonetic
similarity and use of the word PICNIC. But what is the
effect of the dissimilarities? This is the crucial part of
the case. It is here that sufficient care is to be taken in
applying the principles. In our opinion, in the present
case, three tests to which reference has been made above,
have to be applied. The first one is this: Is there any
special aspect of the common feature which has been copied?
The second test will be with reference to the ‘mode in which
the parts are put together differently? That is to say
whether the dissimilarity of the part or parts is enough to
mark the whole thing dissimilar (Kerly para 17.17 referred
to above). The third test is whether When there are common
elements, should one not pay more regard to the parts which
are not common, while at the same time not disregarding the
common parts? What is the first impression? As to the
first test, whether there are any peculiar features of the
common part which have been copied, it is seen that the
peculiar aspects of the common features of PIKNIK namely the
peculiar script and the curve have not been copied; then,
as to the second test, we have to see the dissimilarity in
the part or parts and if it has made the whole thing
dissimilar. Absence of the peculiar script in the letters,
the curve and the absence of the caricature of the boy with
a hat, in our view, have made the whole thing look
dissimilar. Then, as to the third test, the above three
dissimilarities have to be given more importance than the
phonetic similarity or the similarity in the use of the word
PICNIC for PIKNIK. That is how these three tests have to be
applied in this case. On first impression, we are of the
view that the dissimilarities appear to be clear and more
striking to the naked eye than any similarity between the
marks. Thus, on the whole, the essential features are
different. Learned senior counsel for the respondent had
also strongly relied on Registrar, Trade Marks Vs. Ashok
Chandra Rakhit ( AIR 1955 SC 558) to contend that, in any
event, the plaintiff had registered only the label and not
the words PIKNIK. In that case, this Court quoted (P.565)
the following words from Pinto Vs. Badman [1891 (8) RPC 181
(at 191)] to the following effect: "The truth is that the
label does not consist of each particular part of it, but
consists of the combination of them all." We do not propose
to go into the applicability of the above decision to the
case before us. There, the question was whether the
Registrar could insist that a particular word contained in
the label should be disclaimed. In the result, we hold on
the question of infringement that on an examination of the
relative strength of the pleas, as stated in Palmolive, it
is shown that the chances, on facts, are more in favour of
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the defendant rather than in favour of the plaintiff and
that the plaintiff is not entitled to temporary injunction.
This finding on facts is confined to these interlocutory
proceedings only. Deceive or confuse: Our discussion under
this head is again in the context of the relevant strength
of the case of the parties and for the purposes of the
temporary injunction as laid down in Palmolive. Section 29
uses the words ‘deceptively similar’ and section 2(1)(d)
defines ‘deceptively similar’ as situations where one is
‘deceiving’ others or ‘confusing’ others. We have to keep
in view the distinction between the words ‘deceive’ and
‘confuse’ used in section 2(1)(d). These words which occur
in the various trade mark statutes have been explained in
Parker-Knoll vs. Knoll International [(1962) RPC 265(HL)
(pp.273-274)] by Lord Denning as follows: "Looking to the
natural meaning of the words, I would make two observations:
first, the offending mark must ‘so nearly resemble’ the
registered mark as to be ‘likely’ to deceive or cause
confusion. It is not necessary that it should be intended
to deceive or intended to cause confusion. You do not have
to look into the mind of the user to see what he intended.
It is its probable effect on ordinary people which you have
to consider. No doubt, if you find that he did not intend
to deceive or cause confusion, you will give him credit for
success in his intentions. You will not hesitate to hold
that his use of it is likely to deceive or cause confusion.
But if he had no such intention, and was completely honest,
then you will look carefully to see whether it is likely to
deceive or cause confusion before you find him guilty of
infringement. Secondly, ‘to deceive’ is one thing. To
cause ‘confusion’ is another. The difference is this: when
you deceive a man, you tell him a lie. You make a false
representation to him and thereby cause him to believe a
thing to be true which is false. You may not do it
knowingly, or intentionally but still you do it, and so you
deceive him. But you may cause confusion without telling
him a lie at all, and without making any false
representation to him. You may indeed tell him the truth,
the whole truth and nothing but the truth, but still you may
cause confusion in his mind, not by any fault of yours, but
because he has not the knowledge or ability to distinguish
it from the other pieces of truth known to him or because he
may not even take the trouble to do so." The above passage
has been quoted by this Court in Roche vs. Geoffrey Manners
[AIR 1970 SC 2062 (2064)]. Therefore if, in a given case,
the essential features have been copied, the intention to
deceive or to cause confusion is not relevant in an
infringement action. Even if, without an intention to
deceive, a false representation is made, it can be
sufficient. Similarly, confusion may be created
unintentionally but yet the purchaser of goods may get
confused for he does not have the knowledge of facts which
can enable him not to get confused. In the present case,
this aspect need not detain us in as much as we have already
held that the relative strength of the case is in favour of
the defendant. Further this aspect is connected with the
type of buyer whom the law has in mind and we shall be
presently dealing with this aspect also. It is not
necessary for us to go into the contention of the respondent
that the defendant was using the word PICNIC in other
countries over a long period along with the word ‘Cadbury’
and that a question of transborder reputation protects the
defendant. Reliance is placed for the respondent on
N.R.Dongre vs. Whirlpool Corporation and Anr. [1996 (5)
SCC 714] for this purpose. We do not think it necessary to
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go into this aspect. Such a question, if raised in the
suit, can be gone into on its own merits. For the above
reasons, we hold that on the question of the relative
strength, the decision must go in favour of the defendant
that there is no infringement and the High Court was right
in refusing temporary injunction. Point 5 is decided
accordingly. Point 6: Passing off and infringement-
differences: Here the point is in relation to relative
strength of the parties on the question of ‘passing off’.
As discussed under Point 5, the proof of resemblance or
similarity in cases of passing off and infringement are
different. In a passing off action additions, get up or
trade-dress might be relevant to enable the defendant to
escape. In infringement cases, such facts do not assume
relevance. [ See Durga Dutt Sharma Vs. Navaratna
Phamaceutical Laboratories Ltd. (AIR 1965 SC 980); Ruston
& Hornsby Ltd. Vs. The Zamindara Engineering Co. ( AIR
1970 SC 1649) and Wander Ltd. Vs. Antox India Pvt. Ltd.
( 1990 Supple. SCC 727)]. It is possible that, on the same
facts, a suit for passing off may fail but a suit for
infringement may succeed because the additions, the get up
and trade dress may enable a defendant to escape in a
passing off action. A somewhat similar but interesting
situation arose in a dispute between two companies. In
N.S.Thread & Co. vs. James Chadwick & Bros. [AIR 1948
Mad. 481], the passing off action failed. But thereafter
James Chadwick Co. succeeded in an appeal arising out of
the registration proceedings and the said judgment was
confirmed by this Court in N.S.Thread & Co. vs. James
Chadwick & Bros. [AIR 1953 SC 357]. It was held that the
judgment in the passing off case could not be relied upon by
the opposite side in latter registration proceedings. In
the same tone, Halsbury (Trade Marks, 4th Ed., 1984 Vol.48,
para 187) says that in a passing off action the "degree of
similarity of the name, mark or other features concerned is
important but not necessarily decisive, so that an action
for infringement of a registered trade mark may succeed on
the same facts where a passing off action fails or vice
versa". As to vice-versa, Kerly says (para 16.12), an
infringement action may fail where plaintiff cannot prove
registration or that its registration extends to the goods
or to all the goods in question or because the registration
is invalid and yet the plaintiff may show that by imitating
the mark or otherwise, the defendant has done what is
calculated to pass off his goods as those of plaintiff. In
Schweppes Ltd. vs. Gibbens (1905) 22 RPC 601(HL) Lord
Halsbury said, while dealing with a passing off action that
"the whole question in these cases is whether the thing -
taken in its entirety, looking at the whole thing - is such
that in the ordinary course of things a person with
reasonable comprehension and with proper insight would be
deceived". Defendant’s name on his goods is an indication
of there being no case of passing off: In the present case,
defendant’s goods contain the words ‘Cadbury’ on their
wrapper. As per the principle laid down in Fisons Ltd. vs.
E.J.Godwin [(1976) RPC 653], the occurrence of the name
‘Cadbury’ on the defendant’s wrapper is a factor to be
considered while deciding the question of passing off.
Similarly in King & Co. Ltd. vs. Gillard and Co. Ltd.
[22 RPC 327] and Cadbury-Schweppes pty Ltd. vs. The Pub.
Squash Ltd. (1981) RPC 429, it was held that the presence
of defendant’s name on his goods was an indication that
there was no passing off, even if the trade dress was
similar. The fact that the defendant’s wrapper contains the
word ‘Cadbury’ above the words PICNIC is therefore a factor
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which is to be taken into account. Buyer’s ignorance and
chances of being deceived: As to scope of a buyer being
deceived, in a passing off action, the following principles
have to be borne in mind. Lord Romer, LJ has said in Payton
& Co. vs. Snelling Lampard & Co. (1900) 17 RPC 48 that it
is a misconception to refer to the confusion that can be
created upon an ignorant customer. The kind of customer
that the Courts ought to think of in these cases is the
customer who knows the distinguishing characteristics of the
plaintiff’s goods, those characteristics which distinguish
his goods from other goods in the market so far as relates
to general characteristics. If he does not know that, he is
not a customer whose views can properly be regarded by the
Court. [See the cases quoted in N.S.Thread & Co. vs.
Chadwick & Bros. (AIR 1948 Mad. 481), which was a passing
off action]. In Schweppes’ case, Lord Halsbury said, if a
person is so careless that he does not look and does not
treat the label fairly but takes the bottle without
sufficient consideration and without reading what is written
very plainly indeed up the face of the label, you cannot say
he is deceived. In our view, the trial Court in the present
case went wrong in principle in holding that there was scope
for a purchaser being misled. The conclusion was arrived at
without noticing the above principles. In the result, on
the question of passing off, the relative strength of the
case again appears to us to be more in defendant’s favour.
Point 6 is decided accordingly. Point 7: The issue of
laches of the appellant-plaintiff, though relied upon by the
respondent, does not, in view of our finding at Point 5,
assume any significance in this case. Coming to the
question whether the appellate court was right in
interfering with the discretion of the trial Court and in
vacating injunction, we are of the view that, on facts,
interference was justifiable. If wrong principles were
applied by the trial Court under Order 39, Rule 1 CPC, the
appellate Court could certainly interfere in interlocutory
proceedings under Order 39, Rule 1 CPC. Here, the trial
Court gave importance to phonetic similarity and did not
refer to the differences in essential features. It did not
also have the wary customer in mind. On the other hand, the
High Court’s approach in this behalf was right as it noticed
the dissimilarities in the essential features and concluded
that viewed as a whole, there was neither similarity nor
scope for deception nor confusion. (No doubt both Courts
went into the validity of the plaintiff’s registered mark
and into the question of ‘distinctiveness’ of the word
PIKNIK under section 9(1)(e). But in our view that was not
necessary). Thus, when wrong principles were applied by the
trial Court while refusing temporary injunction, the High
Court could certainly interfere. Point 7 is decided
accordingly. In the result, the appeal is dismissed. We,
however, reiterate the direction given by High Court in
regard to maintenance of accounts and the undertaking to be
given by the defendant for damages, if any, that may be
granted in the suit, in case the suit succeeds. We make it
clear that the above findings on facts are for the purpose
of the temporary injunction and will not come in the way of
the Court in the suit to decide the matter on the evidence
produced.