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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.