# S.M. DYECHEM LTD v. CADBURY (INDIA) LTD

- **Citation:** [2000] Supp. 1 S.C.R. 86
- **Court:** Supreme Court of India
- **Decided:** 2000-05-09
- **Case number:** Civil Appeal No. 3341 of2000
- **Bench:** M. Jagannadha Rao, Y.K. Sabharwal
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/s-m-dyechem-ltd-v-cadbury-india-ltd-17346
- **Pages:** 34

## Headnote

Trade and Merchandise Marks Act, 1958:
Section 106-Trademark matters-Temporary injunction-Grant or
C refusal of-Factors to be considered-Held: Apart from balance of convenience
it is necessary to consider the comparative strength of the case of the rival
parties before granting, or refuse to grant, temporary injunction-Code of
Civil Procedure, 1908, 0.39 R.l.
D
Sections 2(1) (d). 29, 105 and 106-Trademark-lnfringement of+-
Temporary injunction-Grant of-Tests to determine-Essential featuresCopying of-Burden of proof-Held: Onus to prove 'deception' is on the
plaintiff-Sound of words forming a part of or the whole of the mark has to
be considered-But when device marks a~e compared or when a device mark
is compared with a word mark the considerations would differ-However, i11
E the case of devices and composite marks dissimilarities in essential features
assume importance-The mark must always be considered as the whole thing
and the test is whether the totality of impression given both orally and
visually is such that it is likely to cause mistake, deception or confusion-+-
Jn the circumstances of the case, on an examination of relative strength, there
F is dissimilarity in essential features between the plaintiff's and defendant's
marks and chances are more for the defendant to succeed-Hence plaintiff
not entitled to temporary injunction.
Section I 05 and 106-Jnfringement and passing off- Difference between
-Suits for-Held: On the same facts a suit for passing off may fail a suit for
G infringement may succeed. Passing off-Goods-Defendant's name on-Effect
of-Held: ls an indication that there is no passing off
Passing off-Suit for-Deceiving of buyer-Scope of-Held: Court is
not expected to consider the confusion created due to the ignorance of the
buyer-The buyer is expected to know the distinguishing characteristics of
H the goods he purchases.
86
•
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. ·
87
Sections 2(/)(d) and 29-Trademark-Jnfringement of - "Deceptively A
similar"-"Deceive" and "confusion" -Difference between-Held: If essential
features are copied the intention to deceive or cause confusion is not relevant
in an infringement action.
Words and Phrases:
"Deceptively similar", "deceive" and "confusion" -Meaning of- In the
context of S.2(/)(d) of the Trade and Merchandise Marks Act, 1958.
B
The appellant-company (plaintifl) claimed that it started business in
1988 in four products like potato chips, potato wafers, corn-pops and C
preparations made of rice and rice flour. In January 1989 it started using
the trademark PIKNIK. It applied for registration on 17-:'-1989 of the said
word in class 29 (for dried and cooked fruit vegetables etc. including all goods
included in class 29). The appellant-plaintiff also applied for registration of
the same trademark in class 30 (for tea, coffee, corns, jaggery etc. including
confectionery chocolates, honey etc.) A third application under the name was D
for beverages, beers, mineral and aerated water. Registration was granted on
29-7-1994 after advertisement on 1-9-1993. The appellant renewed the
trademark for 7 years from 17-2-1996. The respondent-defendant was found
using the mark 'PICNIC' for chocolates. The appellant gave notice on
18-3-1998. The respondent replied on 7-4-1998. Thereafter, the appellant filed E
a suit on 18-2-1999 based on passing off. Pending the suit, the appellant
applied for temporary injunction.
The respondent defendant contended in this interlocutory application
that 'CADBURY'S PICNIC' was introduced in 1998 for chocolates. It was
registered earlier in class 30 of the 4th schedule in 1977 for dairy milk F
chocolates, wafers bar, confectionery etc. The said trademark expired after 7
years and was not renewed. The defendant applied for rectification of the
plaintiff's trademark by application dated 19-3-1999. The defendant had also
filed a subsequent application for registration of CADBURY PICNIC in August
1999. It pleaded that CADBURY PICNIC and/or PICNIC and/or la

## Text

_Characters 0–39,915 of 84,750. This is a partial read: ask again with offset=39915 for what follows._

A
S.M. DYECHEM LTD.
v.
CADBURY (INDIA) LTD.
MAY 9, 2000
B
[M. JAGANNADHA RAO AND Y.K. SABHARWAL, JJ.]
Trade and Merchandise Marks Act, 1958:
Section 106-Trademark matters-Temporary injunction-Grant or
C refusal of-Factors to be considered-Held: Apart from balance of convenience
it is necessary to consider the comparative strength of the case of the rival
parties before granting, or refuse to grant, temporary injunction-Code of
Civil Procedure, 1908, 0.39 R.l.
D
Sections 2(1) (d). 29, 105 and 106-Trademark-lnfringement of+-
Temporary injunction-Grant of-Tests to determine-Essential featuresCopying of-Burden of proof-Held: Onus to prove 'deception' is on the
plaintiff-Sound of words forming a part of or the whole of the mark has to
be considered-But when device marks a~e compared or when a device mark
is compared with a word mark the considerations would differ-However, i11
E the case of devices and composite marks dissimilarities in essential features
assume importance-The mark must always be considered as the whole thing
and the test is whether the totality of impression given both orally and
visually is such that it is likely to cause mistake, deception or confusion-+-
Jn the circumstances of the case, on an examination of relative strength, there
F is dissimilarity in essential features between the plaintiff's and defendant's
marks and chances are more for the defendant to succeed-Hence plaintiff
not entitled to temporary injunction.
Section I 05 and 106-Jnfringement and passing off- Difference between
-Suits for-Held: On the same facts a suit for passing off may fail a suit for
G infringement may succeed. Passing off-Goods-Defendant's name on-Effect
of-Held: ls an indication that there is no passing off
Passing off-Suit for-Deceiving of buyer-Scope of-Held: Court is
not expected to consider the confusion created due to the ignorance of the
buyer-The buyer is expected to know the distinguishing characteristics of
H the goods he purchases.
86
•
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. ·
87
Sections 2(/)(d) and 29-Trademark-Jnfringement of - "Deceptively A
similar"-"Deceive" and "confusion" -Difference between-Held: If essential
features are copied the intention to deceive or cause confusion is not relevant
in an infringement action.
Words and Phrases:
"Deceptively similar", "deceive" and "confusion" -Meaning of- In the
context of S.2(/)(d) of the Trade and Merchandise Marks Act, 1958.
B
The appellant-company (plaintifl) claimed that it started business in
1988 in four products like potato chips, potato wafers, corn-pops and C
preparations made of rice and rice flour. In January 1989 it started using
the trademark PIKNIK. It applied for registration on 17-:'-1989 of the said
word in class 29 (for dried and cooked fruit vegetables etc. including all goods
included in class 29). The appellant-plaintiff also applied for registration of
the same trademark in class 30 (for tea, coffee, corns, jaggery etc. including
confectionery chocolates, honey etc.) A third application under the name was D
for beverages, beers, mineral and aerated water. Registration was granted on
29-7-1994 after advertisement on 1-9-1993. The appellant renewed the
trademark for 7 years from 17-2-1996. The respondent-defendant was found
using the mark 'PICNIC' for chocolates. The appellant gave notice on
18-3-1998. The respondent replied on 7-4-1998. Thereafter, the appellant filed E
a suit on 18-2-1999 based on passing off. Pending the suit, the appellant
applied for temporary injunction.
The respondent defendant contended in this interlocutory application
that 'CADBURY'S PICNIC' was introduced in 1998 for chocolates. It was
registered earlier in class 30 of the 4th schedule in 1977 for dairy milk F
chocolates, wafers bar, confectionery etc. The said trademark expired after 7
years and was not renewed. The defendant applied for rectification of the
plaintiff's trademark by application dated 19-3-1999. The defendant had also
filed a subsequent application for registration of CADBURY PICNIC in August
1999. It pleaded that CADBURY PICNIC and/or PICNIC and/or label with the G
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 to the variations of the
ordinary dictionary word PICNIC or any misspelling thereof. The 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 H
88
SUPREME COURT REPORTS [2000] SUPP. I S.C.R.
A 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 of the Trade and Merchandise Marks Act, 1958 was invalid. There
was also delay in filing the suit on 18-2-1999 and injunction could not be
•
B granted.
The trial court held that the pla intitrs registration of the word PIKNIK
(including for chocolates) was and is in force, that the defendant's earlier
registration had expired, that the ddendant did not oppose registration by
c 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, the
plaintiff had a primafacie case and balance of convenience was in plaintitrs
favour. It held that the defendant's mark was 'deceptively similar' within
Section 2(1)(d) of the Act, that confusion could be created in the minds of
D
purchasers either because the marks were similar visually or ocularly or
phonetically. There was a clear phonetic resemblance. The contention that
what was registered was the label not the word 'PIKNIK' could not be accepted.
The 'essential features' of the trademark were similar. Section 2(1)(()
referred to 'mark' as including a device, brand, heading, label ticket, name,
signature, word, letter, numeral or any combination thereof. Even if the
E 'essential features' of the words 'PIKJlllK' 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. On the above reasoning,
the trial court granted temporary injunction in favour of the appellant.
F
On appeal by the defendant, High Court reversed the judgment and held
that the word "PIKNIK' could not be called an 'essential feature'. The
plaintifrs 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
letters 'K' and 'N'.The script and the figure of the little boy were the essential
G features and not the word 'PIKNIK'. The plaintitrs label had to be looked at
as a whole. The plaintiff was marketing potato chips and potato wafers in a
polythene pouch and not chocolates, though the plaintiff had registration
under class 30 for chocolates. The defendant was marketing under trade label
'Cadbury's PICNIK' in a polythene pouch and hence both marks were different.
The defendant was not using the plaintiffs label with the caricature of a boy. It
H was true there was phonetic similarity but the word 'PICNIK' was a
-
\
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD.
89
misspelling of the common dictionary word 'PIKNIK' and hence could not to A
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 ifthe defendant used the word 'PICNIC' along
with the word Cadbury, for a different product, there could be no infringement B
Cadbury was a household 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's Picnic.' There was absolutely no
scopes for deception. There was neither infringement nor passing off. Based
on this reasoning the High Court allowed the appeal of the C
respondent-defendant and set aside the order of temporary injunction. Hence
this appeal.
The following points arose for consideration before this Court:
(1) Whether the defendant could, in the present interlocutory D
proceedings, based on infringement and passing off, raise any defence that
the registration of plaintiffs mark was itself "invalid" because the plaintifrs
mark did not satisfy the ingredients of Section 9(1)(a) to (e) and was, in
particular, not 'distinctive' as required by Section 9(1)(e)?
(2) Whether the plaintiff could rely on the presumption in Section 31
and also contend that under Section 32 the "validity" of the registration of
the plaintiffs mark had become conclusive on the expiry of 7 years long before
defence was raised in the suit [such time reckoned from the 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)?
E
F
(4) For grant of temporary injunction, should the Court go by principle G
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 the plaintifrs registration was valid, the
comparative strength of the case on the question of infringement is in favour H
90
SUPREME COURT REPORTS [2000] SUPP. I S.C.R.
A of the plaintiff!
(6) Whether, alternatively, the plaintiff had made out that for grant of
temporary injunction treating tlte suit as a 'passing off action', the relative
strength of the case, was in plaintiffs favour?
B
(7) Whether there was unreasonable delay on the part of the plaintiff in
filing the suit and whether the High Court was justified in interfering in
appeal in interlocutory proceedings?
Dismissing the appeal, this Court
C
HELD: Points 1, 2 and 3
1. Any decision on the qm~stion of 'validity' of the appellant's trade
raised as a defence in the present application filed under Order 39 Rule 1 of
the Code of Civil Procedure, 1908 will seriously jeopardise a decision on the
same issue now pending in the rectification proceedings filed by the respondent
D in the High Court. Therefore, it is not necessary to go into the questions of
'validity' or distinctiveness' of the plaintiff's trademark or into the applicability
of the National Bell Co. 's Case as those issues are to be decided in the
rectification proceedings. The present case can be disposed of by considering
whether there is prima facie any deception and hence infringement and
E whether there Is any 'passing off. Points 1, 2 and 3 are, therefore, not
decided. (107-8-C)
F
National Bell Co. v. Metal Goods Mfg. Co., [1970) 3 SCC 665;
American Cyanamid Co. v. Ethicon Ltd, (1975) 1 All ER 504 (HL) and Colgate
Pamolive (India) Ltd. v. Hindustan Lever Ltd, (1999) 7 SCC 1, referred to.
POINT4
2.1. Before American Cyanamid Co. 's case, it was customary for the
Courts to go into prima facie case in trademark cases for grant or refusal of
temporary injunction. But in American Cyanamid, it was observed that it was
G sufficient if the plaintiff presented a 'triable issue' and the merits need not
be gone into. [107-D-E)
2.2. It was observed in American Cyanamid that the relative strength of
the case of each party need not be gone into. Thereafter, this Court in
Pamolive 's case said that the view taken in Series 5 Software's case is correct
H and that American Cyanamid cannot be understood as having laid down
S. M. DYECHEM LTD. v. CADBURY (INDIA) LTD.
91
anything inconsistent with the 'old practice'. Now the Courts in England go A
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. Therefore, in trademark matters, it
is now necessary to go into the question of'comparable strength' of the cases
of earlier party, apart from balance of convenience. (108-A-C)
Colgate Pamolive (India) Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC
1, relied on.
Series 5 Software v. Clark, (1995) 1 All ER 853 (Ch.D.), Barclay's Bank
B
Inc. v. RBS Advanta, (1998) RPC 307; American Cyanamid Co. v. Ethicon
Ltd., (1975) 1 All ER 504 (HL); Wander Ltd. v. Antox India (P) Ltd., (1990) C
Suppl. SCC 727; Power Control Appliances v. Sumeet Machines (P) Ltd.,
[1994) 2 SCC 448; Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC
545, Floyed; Interlocutory Injunctions since Cyanamid, (1983) E 1 PR 238,
Cole: Interlocutory injunctions in U.K. Patent Cases, (1979) E 1 PR 71,
Edenborough Mand Tritton: American Cyanamid Revisited (1996) E 1 PR D
71, Philipps, (1997) JBL 486; 'Law and Contemporary Problems', (1996) Vol.
59, No.2 P.5 at p.14 and A Personal Note on Trade Mark etc. by Milton Handler,
referred to.
POINTS
E
3.1. 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 F
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 sound of words forming
part or the whole of the mark. (108-H; 109-A-BJ
Kerly's Law of Trade Marks and Trade Names, 11th Edn., 1983, para G
14. 2 I, referred to.
3.2. It is no answer to a charge of infringement-as contrasted with a
passing of action-that the defendant's mark, whilst including the plaintifrs
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 H
92
SUPREME COURT REPORTS (2000] SUPP. I S.C.R.
A of that plaintiff-by adding his own name. 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. (109-C]
B
\
Amrithdhara Pharmacy v. Satya Deo Gupta, AIR (1963) SC 449 and
Roche v. Geoffrey Manners & Co. Pvt. Ltd., AIR (1970) SC 2062, relied on.
Pianotist Co. 's Application (Piano), (1906) 23 RPC 774 and Kerly 's Law
of Trade Marks and Trade Names, 11th Edn., 1983, para 14.22, referred to.
Jewsbury & Brown v. Andrew & Atkinson, (1911) 28, RPC 293, cited.
C
3.3. But the considerations relating to words, however, differ appreciably
when device marks are to be compared or when device mark is to be compared
with a word mark. However, 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
D similarity. The "whole thing" principle is based on first impression as seen
by the Court. (110-B-E]
E
Kerly's Law a/Trade Marks and Trade Names, 11th Edn., 1983, para
17.07 and Ilalsbury's Laws of England, Vol. 38 3rd Edn., para 986, referred
to.
3.4. 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 night 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
F other hand, a critical comparison of the two marks might disclose num(!rous
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
G marks, to consider what are the essentials of the plaiAtifrs device. [110-F-H)
Kerly's Law of Trade Mar.ks and Trade Names, llth Edn., 1983, para
17. 08, referred to.
3.5. The trademark is the whole thing-the whole picture on each has
H to be considered. There may be differences in the parts of each mark. but it
S.M. DYECHEMLTD. v. CADBURY (INDIA) LTD.
93
is important to consider the mode in which the parts were put together and to A
judge whether the dissimilarity of the part or parts is enough to make the
whole dissimilar. It has been said that if the only resemblance 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 B
of the common elements. But this approach is hardly suited to a comparison
of word marks; and even in relation to label marks or other features of getup, 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.
(110-H; 111-A-B)
Kerly's Law of Trade Marks and Trade Names, llth Edn., 1983, para
17.17, referred to.
c
3.6. 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. The D
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. [I I 1-C-D)
Crispin's Appln., (1917) 34 RPC 249, Kerly's Law of Trade Marks and E
Trade Names, I Ith Edn., 1983, para 17.17, 17.18 and Halsbury Vol. 38, 3rd
Edn., para 987, referred to.
3.7. Where common marks are included in the rival trademarks, more
regard is to be paid to the parts not common and the proper course is to look
at the marks as a whole, but at the same time not to disregard the parts, which F
are common. [Ill-GI
Broadhead's Application, (1950) 67 RPC 209; Coca-Cola Co. of
Canada v. Pepsi Cola Co. of Canada, (1942) 59 RPC 127 and Halsbury's
Laws of England, 3rd Edn., para 992, referred to.
G
3.8. Broadly, under the Indian law, stress is laid down on common
features rather than on difforences on essential features. (113-F)
Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR
(1960) SC 142; K.K. Chinna Krishna Chettiar v. Sri Ambal & Co., AIR (1970) H
94
SUPREME COURT REPORTS [2000] SUPP. I S.C.R.
A SC 146; Roche & Co. v. Geoffrey Manners & Co. Pvt. Ltd., AIR (1970) SC
2062; Parle Products (P) Ltd v. J.P. & Co., AIR (1972) SC 1359; Durga Dutt
Sharma v. Navraratna Pharmaceutical Laboratories, AIR (1965) SC 980 and
Rustom & Hornsby Ltd v. Zamindara Engineering Co., [1969) 2 SCC 727,
relied on.
B
Servile Perfumery Ltd. v. Jump Perfect Ltd., (1941) 58 RPC 147 (161),
referred to.
3.9. This Court did not have an occasion to decide an issue where there
were also differences in essential feature nor to consider the extent to which
the differences are to be given importance over similarities. Such a question
C has arisen in the present case. That is why principles of English Law relating
to differences in essential features have been referred to. These principles
are equally applicable in our country. [113-G-H)
3.10. In the instant case it is clear that apart from the word PIKNIK,
the essential features are also the special script of this word in block letters
D and curve in which this word is inscribed and the caricature of the boy with
a hat occurring between the letters Kand N on the plaintiff's mark. On the
other hand, the defendant's script is normal and the word 'Cadbury' is written
above the word PICNIC. Neither the peculiar script nor the boy with a hat is
found in the defendant's mark. It is true that there is phonetic similarity and
E use of the word PICNIK. But what is the effect of the dissimilarities?
(114-8-C)
3.11. This is the crucial part of the case. It is here that sufficient care
is to be taken in applying the principles. In the present case, three tests have
to be applied. The first one is whether there is any special aspect of the common
F 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. 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
G same time not disregarding the common parts. (114-D-F)
Kerly 's Law of Trade Marks and Trade Names, I I th Edn., 1983, para
17 .17, referred to.
3.12. 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
H the common features of PIKNIK, namely, the peculiar script and the curve
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD.
95
have not been copied; then, as to the second test, the dissimilarity in the part A
or parts has to be seen 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, 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 B
for PIKNIK. That is how these three tests have to be applied in this case. On
first impression, 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. (114-F-H; 115-A)
Registrar, Trade Marks v. Ashok Chandra Rakhit, AIR (1955) SC 558, C
held inapplicable.
Pinto v. Badman, (1891) 8 RPC 181, referred to.
3.13. In the result it is held that on the question of infringement that
on an examination of the relative strength of the pleas, it is shown that the D
chance~, on fact are more in favour of 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 inerlocutory proceedings only. (115-D)
3.14. Section 29 of the Trade and Marchandise Marks Act, 1958 uses
the words 'deceptively similar' and Section 2(1)(d) of the Act defines E
'deceptively similar' as situations where one is 'deceiving' others or
'confusing' others. The distinctions between the words 'deceive' and 'confuse'
used in Section 2(1 )( d) has to be kept in view. (115-F)
3.15. 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 F
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. (116-E-F)
Roche v. Geoffrey Manners, AIR (1970) SC 2062, relied on.
G
Parker-Knoll v. Knoll International, (1962) RPC 265 (HL), referred
to.
3.16. In the present case, it has already been held that the relative
strength of the case is in favour of the defendant. Therefore, it is not necessary H
96
SUPREME COURT REPORTS [2000] SUPP. I S.C.R.
A 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 oftransborder reputation protects the defendant.
(116-G-H)
N.R. Dongre v. Whirpool Corporation, (1996) 5 SCC 714, referred to.
B
POINT6
4.1. The proof of resemblance or similarity in cases of passing off and
infringement are different. In a passing off action additions, get-up or tradedress might be relevant to enable the defendant to escape. In infringement
C cases, such facts do not assume relevance. (117-C-D)
D
E
F
Durga Dutt Sharma v. Navaratana Pharmaceutical laboratories Ltd.,
AIR (1965) SC 980; Rustom & Harnsby ltd. v. Zamindara Engineering Co.
AIR (1970) SC 1649 and Wander ltd. v. Antox India Pvt. Ltd., [1990) Suppl.
sec 727, relied on.
4.2. 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. (117-E)
N.S. Thread & Co. v. James Chadwick & Bros., AIR (1953) SC 357,
relied on.
N.S. Thread & Co. v. James Chadwick & Bros., AIR (1948) Mad 481,
approved.
Schweppes Ltd. v. Gibbens, (1905) 22 RPC 601 (HL) and Halsbury:
Trade Marks, 4th Edn., 1984 Vol. 48, para 187, referred to.
4.3. In the present case, the defendant's goods contain the words
'Cadbury' on their wrapper. The occurrence ofthe name 'Cadbury' on the
defendant's wrapper is a factor to be considered while deciding the question
of passing off. The presence of the defendant's name on his goods was an
indication that there was no passing off, even if the trade-dress was similar.
G The fact that the defendant's wrapper contains the word 'Cadbury' above the>
words PICNIC is, therefore, a factor, which is to be taken into account.
[118-C-E)
Fisons Ltd. v. E.J. Godwin, (1976) RPC 653; King & Co. Ltd. v. Gillard
& Co. Ltd. 22 RPC 327 and Cadbury-Schweppes Pvt Ltd. v. Pub Squash Ltd.
H (1981) RPC 429, referred to.
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD.
97
4.4. As to the scope of a buyer being deceived, in a passing off action, A
the following principles have to be borne in mind: (118-F)
(a) 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
B
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. If a person is so careless that he does
not look and does not treat the label fairly but takes the bottle without sufficient
j
consideration and without reading what is written very plainly indeed up the c
face of the label, it cannot be said that he is deceived. [118-F-H)
N.S. Thread & Co. v. Chadwick &Bros., AIR (1948) Mad 481, approved.
·Payton & Co. v. Snelling Lampard & Co., (1900) 17 RPC 48 and
Schweppes Ltd. v. Gibbens, (1905) 22 RPC 601 (HL), referred to.
D
4.5. 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. (119-A)
4.6. In the result, on the question of passing off, the relating strength E
of the case again appears to be more in defendant's favour. (119-B)
POINT7
5. On facts, interference was justifiable. If wrong principles were applied
by the trial court under Order 39, Rule 1 of the Code of Civil Procedure, F
1908, 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 featurts. 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 G
the dissimilarities in the essential features and concluded that viewed as a
whole, there was neither similarity nor scope for deception nor confusion.
Thus, when wrong principles were applied by the trial court while refusing
temporary injunction, the High Court could certainly interfere. (119-D-F)
•
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 3341 of2000. H
98
SUPREME COURT REPORTS [2000) SUPP. I S.C.R.
A
From the Judgment and Order dated 24.8.99 of the Gujarat High Court
in Appeal from Order No. 203 of 1999.
P. Chidambaram, Ms. Pratibha M. Singh, Ms. Kavita Wadia, Ms. Ruchi
Mahajan and Maninder Singh for the Appellants.
B
Dushyant Dave, Pratap Venugopal, Ms. Mayuri Nayyar, Sidhartha Dave,
Haris Beeran and K.J. John for the Respondent.
The Judgment of the Court was delivered by
M. JAGANNADHA RAO, J. Leave granted. In trade mark cases, the
C 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
D competition has increased. (See Vol.58 '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 plaintiffs appeal against the judgment of the Gujarat High
E Court in A.F.O. No. 203 of 1999 datt:d 24.8.1999, by which the High Court of_
Gujarat allowed the appeal prefem:d 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
F _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
G in four products like potato, chips, potato wafers, com-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. 505531 B. Plaintiff also applied for
registration of same trade mark in class 30 ( for tea, coffee, corns, jaggery etc.
H including confectionery chocolates, honey etc.) under application 505532. A
-
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.]
99
third application under same name was ( for beverages, beers, mineral and A
aerated 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 B
alleged infringement of trade mark 505532 and passing off. Pending 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 c
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
D
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 E
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." F
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 G
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 primafacie case and balance of convenience was in plaintiff's
favour. It held that the defendants' mark was 'deceptively similar' within
.L ..
section 2{l)(d) of the Trade and Merchandise Marks Act, 1958, that confusion H
100
SUPREME COURT REPORTS [2000] SUPP. I S.C.R.
A 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
B 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 plaintiffs trade mark was registered under class 30 which
C 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
D said mark was registered without opposition under section 21. On the above
reasoning, the trial Court granted temporary injunction in favour of the
appellant.
On appeal by the defendant, the High Court reversed the judgment and
E held that the word PIKNIK could not be called an 'essential feature'. The
plaintiffs 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 plaintiffs label had to be looked at
as a whole. Plaintiff was marketing potato chips and potato wafers in a
F 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 plaintiffs label with the caricature of a boy. It was true
there was phonetic similarity but the word 'PIKNIK' was a misspelling of the
G 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
H a household name in India and defendant had been marketing chocolates
..
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] IOI
since 1948. The said word had almost become synonymous with chocolates A
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.
B
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 c
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 "distinctiv "' 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 plaintiffs mark had became distinct
even by the actual date of registration. For purposes of section 31, the D
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 plaintiffs registration of trade mark was not
'distinctive', could not be raised in this suit nor in defence to this application E
nor even in the rectification proceedings. Seven years had elapsed by 17 .2.96,
Jong before the defern:e 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 F
'distinctive' by 17.2.89 within section 9. In this context, the decision of this
Court in National Bell Co. v. Metal Goods Mfg. Co., [1970] 3 SCC 665 was
relevant. Learned counsel also argued that under section 2U) and 2(v), 'mark'
included a label. In any event, the plaintiffs trade mark was valid as it fell
within the vario11s clauses of section 9, even if it be assumed that section 32 G
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 plaintiffs goods. In view of the principles laid down H
::::::;o"
102
SUPREME COURT REPORTS [2000) SUPP. 1 S.C.R.
A in American Cyanamid v. Ethicon Ltd., (1975) I) All. E.R.504 (HL), it is
sufficient if a triable issue is raised.