Trademark protection has taken a central place in a business activity now a days. The poignant reason to this development is that a mark is an identifying tool for the trade origin of the products. No business would want a competing business activity to reap from the reputation and goodwill it has built up all through the years. This is the case in the instant civil appeal arising out of Special Leave Petition to Supreme Court of India in Heinz Italia & Anr. v. Dabur India Ltd. 2007 (35) PTC 1 (SC) where ‘Glucon-D’ and ‘Glucose-D’ were tested on the benchmark of whether a particular mark has generated enough acceptability in a particular product category in the market, to confuse a buyer.
The plaintiffs/appellants M/s Heinz Italia are the proprietors of the trademark ‘Glucon-D’ registered under the Trade and Merchandise Marks Act, 1958. The mark was registered by Glaxo Laboratories in 1975 and subsequently assigned to M/s Heinz Italia along with the goodwill and the artistic work used on the packaging in 1994. Eversince, Heinz Italia was the user of the said mark and packaging and established a very good reputation in market. However, in the year 2002, the appellant came across through another similar product launched by Dabur India Defendant/ Respondent under the name ‘Glucose-D’ having the same packaging style that was deceptively similar to ‘Glucon-D’s.
Immediately Heinz Italia served notice on the respondents to forbear from using the mark and packaging style, but failed to get any satisfactory response. In consequence, Heinz Italia filed a suit under Section 29 & 106 of the Trade and Merchandise Marks Act, 1958 for permanent injunction and infringement of trademark and also for infringement of copyright under Section 63 of the Copyright Act, 1957. Along with the suit, the Heinz Italia filed an application for an ad-interim injunction.
Dabur India took the plea that Glucose is a generic expression and hence no monopoly could be claimed on it. The also contented that there was no similarity between the trademark and packaging style. The trial court dismissed the plea of Heinz Italia and held that Glucose was a generic word and hence no injunction could be granted. Aggrieved Heinz Italia filed the first appeal before the Punjab & Haryana High court and the High Court also confirmed the judgment of trial court and dismissed the appeal accordingly. Against the said dismissal Heinz Italia moved the Special Leave Petition before the Supreme Court.
In the Special Leave Petition, Heinz Italia based its argument primarily on (i) Prior User rights (ii) reputation and goodwill and (iii) Glucon-D is not a generic word but even assuming it to be so, an injunction can follow in special circumstances. References of relevant case laws were made to support the contentions. Dabur India, in turn, argued that (1) an ad-interim injunction would not be maintainable in the event of its refusal by two courts, (2) delayed filing of the suit, (3) no evidences produced in relation to deceptive similarity and reputation acquired and (4) that Glucose is a generic word and would need evidences to prove those special circumstances which makes it non-generic.
The Apex Court taking first, the issue of maintainability rejected the respondent’s argument that the nature of the interim relief is discretionary and no inference should be made by refusal of the earlier courts. On the issue of prior usage and likelihood of confusion due to deceptive similarity in the packaging, the court sought to test the averments made 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.
The Court observed that both the items contain glucose and bears striking similarity phonetically as well as in colour scheme and hence the overall effect of packaging can easily confuse a purchaser.
It was also held that mere delay in filing of the suit could not be a ground to defeat the case of the plaintiff when there is a prima facie dishonest intention in passing off the goods. Thus the Apex Court setting aside the order of the trial court highlighted the fact that small changes made by the respondent time and again in
their packaging is in itself an attempt to mislead the purchaser.
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