Calcutta High Court
Heinz Italia S.R.L. And Heinz India Pvt. ... vs Dabur India Ltd., S.K. Distributors And ... on 16 October, 2007
Equivalent citations: 2008(1)CHN508, 2008(36)PTC638(CAL)
Author: Pinaki Chandra Ghose
Bench: Pinaki Chandra Ghose
JUDGMENT Sankar Prasad Mitra, J.
1. The first appellant was an Italian Company and affiliate of H.J. Heinz Company and the trade mark GLUCON-D owned by Glaxo India Limited was assigned to the first appellant along with goodwill of the business in which the mark was used by a Deed of Assignment dated 30lh September, 1994. The Glaxo India Limited also assigned their rights in the artistic work used on the packaging of the said trade mark to the first appellant. The Glaxo India Limited was selling goods with trade mark GLUCON-D since 1940.
2. The second appellant, a subsidiary of the first appellant, is a company incorporated in India and also an affiliate of H.J. Heinz which has been permitted licensed user of inter alia the trade mark GLUCON-D in India. The appellant claims to be proprietor of inter alia the trade mark GLUCON-D registered under No. 304644 in class 30 and application for registration of the label in which the goods under the trade mark GLUCON-D are sold including the application for recordal of the second appellant as subsequent proprietor of the aforesaid trade marks are pending with Registrar of Trade Marks. Moreover, applications for registration of present labels for the goods sold under the trade mark GLUCON-D are pending before the Registrar of Trade Marks. The said trade mark is claimed to have been assigned to the first appellant by the Glaxo India along with goodwill of the business. It is the further case of the appellant that the energy drink under the trade mark of GLUCON-D is sold in a distinctive packaging consisting of distinctive colour scheme predominantly of the colour green consisting inter alia of the photograph of a family of three, father, mother and son drinking GLUCON-D. The appellant claimed that the packaging has been designed for and on behalf of the appellants and the copyright in the artistic work with the packaging vests with the appellants. In or around July, 2002 the second appellant learnt that defendant No. 1 (respondent No. 1) had started selling an energy drink under the trade mark GLUCOSE-D in a packing, the overall impression of which was the same as that of the appellants packaging of goods sold under the aforesaid trade mark. The trade mark of the respondents/defendants GLUCOSE-D and the packaging it is stated, being deceptively similar and in violation of the rights of the appellants in the trade mark get up and trade dress related to the trade mark GLUCON-D. A suit was instituted by the appellants in February, 2003 against the respondents before the learned District Judge, Gurgoan with a prayer for an injunction and for damages inter alia on the ground for infringement of trade mark and/or passing off of trade mark and infringement of copyright in the said suit being No. 2 of 2003 before the learned Additional District Judge, Gurgoan. The respondents filed a written statement contending inter alia that it had discontinued the said packaging complained of as new packaging was introduced. Inquiries made by the appellants in this regard reveal that the respondent had changed its packaging and introduced new packaging which was deceptively even more similar to the appellants packaging. According to the appellants, the new packaging was a clear attempt by the respondent No. 1 to chose as close as possible to the packaging and trade dress of the appellants and to trade upon the reputation and goodwill of the appellants. Therefore the appellants instituted a suit being C.S. No. 138 of 2003 on the file of this Court. The appellants similarly filed an application under Order 29 Rules 1 and 2 of the Code of Civil Procedure, 1908 for grant of ad interim injunction restraining the respondents from using the trade mark GLUCOSE-D for any other trade mark deceptively similar to the appellants trade mark GLUCON-D and from using any packaging/trade dress deceptively similar to that of the appellants. On 8th May, 2003 this Hon'ble Court was pleased to pass an order of ad interim injunction against the respondents in terms of prayer (b) which was again modified on 15th May, 2003 to the extent that the respondent No. 1 be restrained from using the trade mark of the appellants which was GLUCON-D and was deceptively similar to the copyright of the appellants. The respondents was further directed to keep accounts in respect of the sale of the product and furnish the copy of such accounts to the appellants every month, and later by an order dated 9th June, 2003 the word South stated earlier was clarified so as to mean the 'month' beginning from 'the first to the last of the month'. On August 29, 2003 the said injunction application was heard and dismissed on the ground that the present suit was not maintainable in absence of leave of the Gurgoan Court where the suit was instituted. The Hon'ble Court also directed that the modified interim order dated 15th May, 2003 would be continued for a further period of 15 days from the date hereof.
3. Being aggrieved by the judgment and order dated 29th August, 2003 the appellants moved an appeal before the Division Bench of this Hon'ble Court.
4. The Hon'ble Division Bench on 2nd December, 2003 after hearing the said appeal was pleased to set aside the judgment and order passed by the learned Single Judge of the First Court and remanded the injunction petition to the First Court for being heard and decided as early as possible with the observation that the learned Judge of the First Court proceeded on an erroneous basis by holding that the suit filed in Calcutta High Court was not prima facie maintainable. The Division Bench also directed that the interim order dated 15th May, 2003 would continue till the final hearing of the injunction petition and that the application for stay of the suit should be heard along with the injunction petition.
5. On 11th December, 2003 the learned Additional District Judge, Gurgoan was pleased to dismiss the appellants' application under Order 29 Rules 1 and 2 of the Code of Civil Procedure on the ground that no prima facie case was made out by the appellants to get an order of ad interim order of injunction. Against the said order on 10th January, 2004 the appellants filed an appeal being F.A.O. No. 233 of 2004 before the Hon'ble High Court of Punjab and Haryana at Chandigarrah. On 27th October, 2004 the Hon'ble High Court of Punjab and Haryana affirmed the findings of the Trial Court and dismissed the appeal filed by the appellants on the ground that the respondents have used the word GLUCOSE which is a common English word along with letter D and had taken sufficient care to mention the word Dabur clearly indicating that it was the product of their company.
6. However, the respondent No. 1 filed an application under Section 10 of the Code of Civil Procedure, 1908 in this Court with a prayer for stay of the suit and dismissal of interlocutory application (G.A. No. 1675 of 2003) asserting that the matter in issue in the present suit is directly and substantially in issue in the previously instituted suit. The said application together with the appellants' application for grant of interlocutory injunction came up for hearing before the Hon'ble Justice J.K. Biswas on 2nd April, 2004. The learned Judge, after hearing was pleased to direct that the application for ad interim injunction filed by the appellants along with the suit in Calcutta would remain stayed till the disposal of the suit in Gurgoan. Since the appellants became aggrieved by the judgment and order dated 27th October, 2005 passed by the Hon'ble Punjab and Haryana High Court an appeal was preferred before the Supreme Court and the Hon'ble Supreme Court by its judgment and order dated 18th May, 2007 was pleased to allow the Special Leave Petition and set aside the order of the learned Additional District Judge, Gurgoan dated 11th December, 2003 and the judgment of the Hon'ble High Court of Punjab and Haryana dated 27th October, 2005. The Hon'ble Apex Court was pleased to allow ad interim injunction in terms of Clause 2 of the petition and passed an order granting interim injunction restraining the respondents herein or his agents or representatives from using in relation to goods the packet design which is a copy of the appellants packaging and design for the goods being sold under the trade mark GLUCON-D and or any other packet design which is an infringement of the appellants copyright in the artistic work. The appellants stated that the Hon'ble Supreme Court in its order dated 18th May, 2007 observed as follows:
We feel that mere fact 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.
7. It is further asserted by the appellants that in spite of Hon'ble Apex Court's order the respondents contrary to its own pleaded in the present case have taken a different stand that the order of the Hon'ble Court does not cover the packaging which is the subject-matter of the present suit. On enquiry being conducted it reveals that in spite of the order of the Apex Court the respondent is selling its products in the impugned packaging in huge quantities, as a result of which, the appellants suffer enormous damages, and therefore, the appellants made an application before this Hon'ble Court praying for an order of injunction restraining the respondents, its successors or agents, representatives, dealers and servants from using the trade mark GLUCOSE-D or any other trade mark deceptively similar to the registered trade mark of the appellants GLUCON-D and/or using trade dress/packaging being deceptively similar and/or reminiscent of the appellants trade dress/packaging used with relation to goods sold in the trade mark GLUCON-D. The said application was heard by Hon'ble Justice Maharaj Sinha and His Lordship by an order dated 11th June, 2007 was pleased to give direction for filing affidavit but refused to pass an order of injunction against the respondent.
8. Being aggrieved by, and dissatisfied with, the said order dated 11th June, 2007, appellants preferred an appeal before this Hon'ble Court with a prayer for injunction restraining the respondents and/or successors, agents, dealers or nominees from using the trade mark GLUCON-D or any other deceptively similar registered trade mark together with other prayers set out in the memorandum of application.
9. The respondent No. 1 by filling an affidavit-in-opposition contended that the order dated 11th June, 2007 should not be called in question and the order passed by the Apex Court confined itself to the Gurgoan packaging which cannot be extended to the Calcutta packaging and the subject matter of Gurgoan suit with regard to packaging had already been discontinued by the respondents, since January, 2003. The packaging in the present proceeding was not injuncted by the Hon'ble Supreme Court though it was noticed and the packaging in the present proceeding is neither deceptively similar not a colourable imitation of GLUCON-D packaging. The respondents' packaging is distinctive and different in its overall get up and, as such, there is no likelihood of confusion or deception on its account. Therefore, there is no occasion for this Hon'ble Court to be called upon by the appellant to burden with task of adjudicating the issue deceptive similarity at interlocutory stage for the purpose of interim injunction in respect of discontinued packaging. There is no order of injunction passed by the Hon'ble Supreme Court against the mark GLUCOSE-D, GLUCOSE-D is a genetic mark and the respondent has legitimate and statutory right to use thereof permitted by Section 30(2)(a) as well as Section 35 of the Trade Marks Act, 1999. Dabur GLUCOSE-D packaging which is the subject matter of the present proceeding is not similar to the Dabur GLUCOSE-D packaging, subject-matter of Gurgoan suit. According to the respondent No. 1 the appellant itself has pleaded for injunction against GLUCOSE-D on the ground that it amounts to infringement of appellants' trade mark GLUCON-D. It is a plea pertaining to infringement of trade mark whereas the plea of packaging pertains to copyright. According to respondent No. 1, in the facts and circumstances of the case, the order under challenge should not be entertained by this Court and the appeal together with application should be dismissed by this Court with exemplary costs.
10. Mr. S.K. Kapoor, learned Advocate appearing on behalf of the appellants submits that the subject-matter of Gurgoan suit and the subject-matter of the present suit are altogether different and, therefore, the stay order passed under Section 10 of the Code of Civil Procedure by the Hon'ble Court should be set aside in view of order dated 2nd December, 2003 passed by the Division Bench of this Hon'ble Court in G.A. No. 3263 of 2003 with A.P.O.T. No. 518 of 2003, C.S. No. 138 of 2003 where the Hon'ble Court observed that the Gurgoan suit was the first suit but the facts of the present suit are entirely different. The present suit was filed in view of the subsequent change in stand taken by the respondent by changing their packaging and so on those grounds the present suit was filed and the jurisdiction of this Court was the learned Judge of the First Court who proceeded on erroneous basis by holding that the suit filed in Calcutta was not prima facie maintainable. Mr. Kapoor further contended that the Hon'ble Supreme Court by an order dated 18th May, 2007 passed an ad interim injunction against the respondents in terms of the prayer Clause (ii) of the application filed by the appellants in a Civil Appeal No. 2756 of 2007 arising out of Special Leave Petition (C) No. 59 of 2006. According to Mr. Kapoor this order also covers the business carried on by respondent in Calcutta under the name and style GLUCOSE-D by using packaging which is deceptively similar to the packaging used for GLUCON-D. Mr. Kapoor referring to the order passed by the Supreme 'Court also submits that the Hon'ble Court noticed that the respondents have time and again made small changes in their packaging in an attempt to continue to mislead the purchaser and to make more difficult for the appellants' to protect their mark which has acquired an enviable reputation in the market sought to be exploited by the respondents. Mr. Kapoor highlighting the infirmity of the impugned order passed by the learned Single Judge of this Court submitted that for protecting the interest of the appellants and for ends of justice this Court should pass an order of injunction specifying the terms against the respondents in terms of the prayer made in the application.
11. Mr. S. Pal, learned senior Advocate appearing for the respondents, drawing our attention to the application as also documents annexed therein submits that the respondents have changed the get up of the packaging and also incorporated therein Dabur GLUCOSE-D and it is for the Court to determine the subject-matter of the present proceeding on its own facts after the decision of the Gurgoan suit. It is also submitted by him that there is no order of the Hon'ble Supreme Court restraining the respondent from using the mark GLUCOSE-D or/Calcutta packaging in any manner. According to Mr. Pal no order of ad interim injunction should be passed by this Court in connection with the present proceeding as no prima facie case has been made out by the appellant in support of their prayer for injunction.
12. It is true that the trade mark GLUCON-D was assigned to the first appellant by Glaxo India Ltd. along with the goodwill of the business in which the mark was used by a Deed of Assignment dated 30lh September, 1994. The said Glaxo India Limited also assigned their rights in the artistic work used on the packaging to the said trade mark to the first appellant. The Certificate of Registration of trade mark appearing at page 23 of the paper book does not stand in the name of the appellants. That apart, the copyrights as appearing at page 25 of the paper book stands in the name of Glaxo Laboratories. No document has been filed by the appellants to show that their names have been registered with the Trade Mark Registry and the Registrar of the Copyrights. The packaging appearance of GLUCON-D at page 24 of the paper book shows a triangular trade mark with inscription inside GLUCON-D under instant energy. Under the said trade mark the word Original is written which starts from left side to upward in white colour and below that there is picture of a family of three comprising father, mother and child drinking GLUCON-D and the base colour of the packaging is deep green on the top of the package there is a yellow horizontal line above the trade mark GLUCON-D and inside the yellow horizontal line there is written 25% free in capital letter thereafter 25% free in capital letter and lastly 25% free in capital letter. Below the photograph of the family covering their bodies there is a red horizontal line wherein 99.4% pure glucose is written in capital letters bearing yellow colour. Inside the trade mark there is another triangle in it with blue colour with the inscription GD in white colour. On the right side below the triangular trade mark there is written pure quality within a circle of light brown colour. On the third part of the package at the bottom within artistic design of light red colour there appears in white colour Heinz.
13. However, the trade dress of Dabur GLUCOSE-D appearing at page 18 of the affidavit-in-opposition filed by the respondent No. 1 shows the picture of a boy dancing within an artistic design having different colours. The entire package displays light green colour with a deep yellow horizontal border on the top wherein 33% free has been written in green colour whereas last part of the said package inside the yellow colour the word 33% free has been written in red colour. Below the yellow horizontal line there is a trade mark Dabur GLUCOSE-D written in white colour which starts from left side to upward right side and below that there is a yellow line which starts from left to upward right wherein non stop energy TM has been written in black colour. On the second part of the package there is a picture of glass filled with orange colour water and on the right side of the package there is trophy cup of golden colour. The fourth part of the package shows the picture of a white colour tree and below that Dabur is written in white colour. So apparently, the pictures appearing on the packages using trade mark GLUCON-D and the other is using Dabur GLUCOSE-D are different, the colours are also different and the writings of the two with the trade mark are also different in their appearance. So at a glance it cannot be said that the appearance of the two products displayed in their packages is same. In the absence of proof of the fact that the appellants have registered their names with the Registrar of Trade Mark and Copyrights in place of Glaxo India Ltd. since acquisition of their right in 1994, it cannot be said that the respondent No. 1 by selling their product in the market under the trade mark Dabur GLUCOSE-D practically infringed the trade mark and copyright of the appellants.
14. It is true that another case is pending before Gurgoan Court in respect of the same subject-matter between the parties where an interim injunction was granted by the Apex Court against the respondents. But the case before us is different because get up of trade mark or package relating to trade mark GLUCON-D and the Dabur GLUCOSE-D is different. Since the appellants could not produce any document to show that their names have been registered with the Registrar of Trade Mark and Copyright and since the get up trade dress including the colour of the package and the trade mark used by Dabur GLUCOSE-D are not similar to that of GLUCON-D and since is no phonetic similarity between the two and since the trade dress relating to trade mark of Dabur GLUCOSE-D has little scope to mislead the customers causing financial loss to the appellants it cannot be said that the appellants having a prima facie case, the balance of convenience is in their favour to get an order of injunction. We therefore, feel that it is not a fit case to grant any order of injunction as prayed by the appellants against the respondents. The appeal is, therefore, dismissed.
We only request the Hon'ble Judge to hear out the matter at His Lordship's earliest convenience.
Pinaki Chandra Ghose, J.
I agree.