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13. The Defendant has also relied on a catena of precedents, first amongst which is M/s. S.M. Dyechem Ltd. case (supra) in which the rival marks were PICNIC used by the Defendant and PIKNIK of the Plaintiff. The Plaintiff started business, principally in four products like potato chips and wafers, corn-pops and preparations made of rice. It thereafter applied for registration for other products including confectionery chocolates etc., which was granted after advertisement on 1.9.1993. The Respondent contended that `CADBURY PICNIC' was introduced in 1998 for chocolates etc. It applied for the rectification of the Plaintiff's mark on 19.3.1999. It also contended that `CADBURY PICNIC' and/or PICNIC and/or the Label had been registered in over 110 countries, and had attained a transborder reputation and goodwill. The Plaintiff had never intended to transact business in chocolates. The Apex Court condensed the contentions into seven compartments as under:

(6) Whether, alternatively, the plaintiff had made out that for grant of temporary injunction treating the suit as a `passing off' action, the relative strength of the case, was in plaintiff's favor?
(7) Whether there was unreasonable delay on the part of the plaintiff in filing suit and whether the High Court was justified in interfering in appeal in interlocutory proceedings?

14. On the first three issues the Court opined that if rectification proceedings had been initiated the suit must be stayed to await the verdict, but the Court could still pass temporary injunctions. It was their Lordships opinion that it would be impermissable for the Civil Court to go into the question of `validity' or `distinctiveness' of the Plaintiff's Trade Mark as these issue would properly be decided in the rectification proceedings. The Hon'ble Supreme Court further observed that the case could well be disposed off "by considering whether there is prima facie any deception and hence infringement and whether there is any `passing off'." On the 4th issue their Lordships held that the test of the existence of a `triable issue' must give way in trade mark matters to the principle of `comparable strength' of the cases of the adversaries. The methodology employed by their Lordships for deciding with the 5th point is of special significance, as it would have a direct bearing on the resolution of the controversies raised in the present application. It was opined that "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.........Ascertainment of an essential features is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark.......It is no answer to a charge of infringement - as contrasted with a passing off action - that the defendant's mark, whilst including the plaintiff's 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 of the plaintiff - by adding his own name (Kerly para 14.22). But this principle is not absolute. It is also accepted that the addition of his own name by the defendant is an element to be considered and may turn the scales in favor of the defendant. It was further observed that whilst resemblance was important in the instance of words, in the cases of devices and composite marks dissimilarity in essential features is more important than similarity. The leading character of each i.e. the "whole thing" both orally and visually would be the relevant indicia; where marks are of similar nature, more regard must be had to the parts that are not common, since this will be the indicator of what impression is left on the mind. The Court should ascertain whether the Defendant has copied any of the distinctive arrangements of the common elements. These principles were applied by the Court in resolving the dispute between PIKNIK and PICNIC by holding that apart from the word the script was also an essential feature; but that the "dissimilarities appear to be clear and more striking to the naked eye than any similarity between the marks". It applied the Palmolive case test of `relative strength of pleas' to decline a temporary injunction to the Plaintiff. The Apex Court further observed that where the essential features have been copied, the Court would not return a finding on whether there was an intention to deceive or cause confusion in infringement actions. It is significant that their Lordships considered it unnecessary to delve into the aspect of transborder reputation in the facts of the case. It was further opined that 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 of action. Diverging from previous decisions it was held that "the fact that the Defendant's wrapper contains the word `Cadbury' above the words PICNIC is therefore a factor to be taken into account."