Italia & Anr Vs. M/S.Dabur India Ltd  Insc 635 (18 May 2007)
B.P. SINGH & HARJIT SINGH BEDI
CIVIL APPEAL No 2756/2007 (arising out of S.L.P.(C) No. 59/2006) HARJIT
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"
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
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 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
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- 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 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.