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Heinz Italia And Another v. Dabur India Ltd. .
Factual and Procedural Background
M/s Heinz Italia SRL (“the appellant”) is the assignee and registered proprietor of the trade-mark “Glucon-D”, originally registered in 1975 in favour of Glaxo and used by that company since 1940. The appellant also owns the associated artistic work used on the green-coloured packaging depicting a “happy family”.
In July 2002 the appellant learnt that Dabur India Ltd. (“the respondent”) had introduced a similar glucose-based energy product under the name “Glucose-D”, using packaging alleged to be deceptively similar. After a notice demanding cessation went unanswered, the appellant filed a civil suit seeking (i) permanent injunction and accounts of profits for infringement of trade-mark and copyright and (ii) an ad interim injunction under Order 39 Rules 1 & 2 CPC.
The trial court (11-12-2003) refused the interim relief, holding “Glucose” to be a generic word and finding the two packages dissimilar. The Punjab & Haryana High Court affirmed that order on 27-10-2005. The present Supreme Court appeal is confined solely to whether an ad interim injunction should issue.
Legal Issues Presented
- Whether the appellant, as prior user of the mark “Glucon-D” and its distinctive packaging, is entitled to an ad interim injunction restraining the respondent from using the mark “Glucose-D” and allegedly deceptive packaging.
- Whether appellate interference is justified when two courts below have refused interim relief in the exercise of discretionary power under Order 39 Rules 1 & 2 CPC.
- Whether the expressions “Glucose” or “Glucose-D” are generic such that no exclusivity can be claimed, and, if so, whether special circumstances nevertheless warrant injunctive protection.
Arguments of the Parties
Appellant’s Arguments
- “Glucon-D” has been used since 1940; prior user is a decisive factor in passing-off and infringement actions (Century Traders; Cadila Health Care).
- The green packaging with a happy family has acquired a substantial reputation, and the respondent’s adoption is a dishonest attempt to exploit that goodwill (Corn Products; Midas Hygiene).
- Even if “Glucose-D” were considered generic, courts may still grant protection in exceptional circumstances (Godfrey Philips).
Respondent’s Arguments
- Both trial court and High Court exercised discretion against injunction; higher appellate interference is unwarranted (Wander Ltd.).
- The suit was filed only in 2003 while the respondent has used “Glucose-D” and its packaging since 1989/2000, evidencing acquiescence and weighing against interim relief.
- “Glucose” is a generic word; the appellant must prove deceptive similarity and distinctiveness through evidence not yet on record (J.B. Williams v. H. Bronnley; reliance also placed on Godfrey Philips).
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250 | Prior user is paramount in passing-off; registration date is irrelevant. | Relied upon to hold that the appellant’s earlier use (since 1940) outweighs the respondent’s use (since 1989). |
| Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 | Tests for passing-off; focus on phonetic similarity and overall impression. | Court applied the “similarities over dissimilarities” test, finding “Glucon-D” and “Glucose-D” phonetically close and confusing. |
| Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 | Dishonest intention & delay do not defeat injunction if goodwill is threatened. | Cited to reject the contention that the appellant’s delay from 1989 to 2003 bars relief. |
| Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 | Court will restrain dishonest appropriation of goodwill at the interim stage. | Used to underline that proven reputation warrants immediate protection. |
| Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257 | Generic words may, in special circumstances, merit protection. | Recognised but kept open for trial; did not preclude interim relief here. |
| Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 | Appellate restraint in interfering with discretionary interim orders. | Distinguished because in the present case the appellant, not the respondent, is the prior user. |
| J.B. Williams v. H. Bronnley, (1909) 26 RPC 765 (CA) | Need for evidence of reputation before granting injunction. | Argument noted but rejected; court held prior user established without further evidence. |
| Erven Warnink BV v. J. Townend & Sons, 1979 AC 731 | Five elements of the modern tort of passing-off. | Quoted via Cadila to describe the legal framework for passing-off analysis. |
Court's Reasoning and Analysis
The Supreme Court began by acknowledging that it is dealing only with the request for ad interim injunction. It examined the respondent’s reliance on Wander Ltd. and found that case distinguishable because here the appellant clearly established prior use of both the mark (since 1940) and the distinctive green packaging, whereas the respondent’s usage began only in 1989 (packaging in 2000).
Applying the principles in Century Traders and Cadila, the Court stressed that prior user prevails over subsequent registration or use and that similarities, especially phonetic ones, take precedence over dissimilarities when assessing likelihood of confusion. Both “Glucon-D” and “Glucose-D” are glucose-based energy powders; the phonetic resemblance is “remarkable”.
Visual comparison of the competing packages (Annexure P-6) revealed an almost identical colour scheme and the depiction of a “happy family”, differences in the number of family members notwithstanding. The Court held that the overall get-up is likely to mislead ordinary purchasers, satisfying the misrepresentation element of passing-off.
The Court also found the respondent’s incremental changes in packaging indicative of an attempt to continue benefiting from the appellant’s reputation while evading legal challenge. Delay by the appellant was deemed non-fatal in light of the dishonest intent principle articulated in Corn Products.
Consequently, the Supreme Court concluded that the balance of convenience and prima facie case heavily favoured the appellant and that refusal of interim relief by the courts below constituted an error warranting interference.
Holding and Implications
ORDER: The orders of the trial court (11-12-2003) and High Court (27-10-2005) are set aside; the appellant’s application for ad interim injunction is allowed as prayed (prayer clause (ii)). The civil appeal is disposed of.
Immediate Effect: Dabur India Ltd. is restrained, pending trial, from using the mark “Glucose-D” or any packaging deceptively similar to the appellant’s “Glucon-D” packaging.
Broader Implications: The decision reiterates that clear prior user coupled with deceptive similarity justifies interim protection even where the impugned term may be arguably generic. No final determination on infringement or passing-off has been made; those issues remain to be adjudicated at trial.
Harjit Singh Bedi, J.— Leave granted.
2. This appeal arises out of the judgment and order dated 27-10-2005 of the Punjab and Haryana High Court whereby the order of the trial court dated 11-12-2003 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 plaintiff-appellant, M/s Heinz Italia SRL is the proprietor of the trade mark “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 trade mark had earlier been registered in the name of Glaxo on 21-5-1975 but subsequently vide deed of assignment dated 30-9-1994 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 plaintiff-appellants thereupon used the trade mark “Glucon-D” and the “packaging” from the year 1994 to 2002 without any interference and established a very good name in the market.
4. 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 forthcoming, filed a suit for permanent injunction and accounts of profits for infringement of the trade mark under Sections 29 and 106 of the Act and infringement of copyright 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 trade mark “Glucose-D” or any other trade mark and deceptively similar packaging as well.
5. 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 trade mark “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 along with 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.)
6. The trial Judge in his order dated 11-12-2003 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 trade mark “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 27-10-2005 confirming the judgment of the trial court. It is in these circumstances that the matter has come to this Court.
7. 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.
8. 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 trade mark in the year 1975 whereas it appears that the term “Glucose-D” had come into use sometime 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 a 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 v. Roshan Lal Duggar & Co. AIR 1978 Del 250 and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, 2001 PTC 300
9. 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 Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 and Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90, (2004) 28 PTC 121.
10. 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. v. 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.
11. 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. v. Antox India (P) Ltd. 1990 Supp SCC 727
12. 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 v. H. Bronnley (1909) 26 RPC 765 (CA) in support of this argument.
13. 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 case (2004) 5 SCC 257 in support of this argument.
14. 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 1990 Supp SCC 727 that an interlocutory injunction under Order 39 Rules 1 and 2 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 “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.
15. We have also considered the arguments with regard to the prior user of the trade mark “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 Century Traders AIR 1978 Del 250 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 (2001) 5 SCC 73, 2001 PTC 300 also laid down the tests in the case of passing off and observed as under:
“In other words in the case of unregistered 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 somebody. 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 Erven Warnink BV v. J. Townend & Sons 1979 AC 731, (1979) 3 WLR 68, (1979) 2 All ER 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 trader (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.”
16. 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 AIR 1960 SC 142 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.
17. In Cadila Health Care case (2001) 5 SCC 73, 2001 PTC 300 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 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.
18. 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 the respondent. We are of the opinion that the packaging of Glucose-D and 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.
19. 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 (2004) 5 SCC 257 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.
20. We accordingly set aside the order of the trial court dated 11-12-2003 and the order of the High Court dated 27-10-2005. 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.
21. The civil appeal is disposed of.
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