M/S Heinz Italia & Anr. v. M/S Dabur India Ltd.

Supreme Court of India | May 18, 2007 | Civil Appeal No. 2756 of 2007 B.P. Singh & Harjit Singh Bedi, JJ.

Background

The trademark “Glucon-D” was originally registered in India in 1975 in the name of Glaxo Laboratories (Class 30 under the Trade and Merchandise Marks Act, 1958), though Glaxo had been using the mark since as early as 1940. In 1994, Glaxo assigned the trademark along with its goodwill and the artistic work used in the packaging to the appellant, M/S Heinz Italia S.R.L. From 1994 to 2002, the appellants used the mark and its distinctive packaging – a green colour scheme with a “happy family” image – without any interference and built substantial goodwill in the market.

In July 2002, the appellants discovered that Dabur India Ltd. had launched a competing glucose product under the name “Glucose-D” using packaging that the appellants alleged was deceptively similar to their “Glucon-D” packaging. After a legal notice to Dabur went unheeded, the appellants filed a suit before the trial court in Gurgaon in 2003 for permanent injunction and accounts of profits, alleging infringement of their registered trademark under Sections 29 and 106 of the Trade and Merchandise Marks Act, 1958 and infringement of copyright under Section 63 of the Copyright Act, 1957. Along with the suit, they filed an application under Order 39 Rules 1 and 2 CPC for an ad-interim injunction.

The trial court rejected the injunction application in December 2003, holding that “Glucose” was a generic word incapable of monopolisation and that the packaging of the two products was not deceptively similar. The Punjab and Haryana High Court confirmed this order in October 2005. The appellants then approached the Supreme Court by way of Special Leave Petition.

Issues for Determination

1. Whether the Supreme Court should interfere with the concurrent refusal of an ad-interim injunction by two courts below, given the discretionary nature of such relief.
2. Whether the word “Glucose-D” was deceptively similar to the registered trademark “Glucon-D” on the basis of phonetic similarity and prior user.
3. Whether the packaging of “Glucose-D” was deceptively similar to the packaging of “Glucon-D” so as to mislead consumers and constitute passing off.
4. Whether prior user of a mark and its packaging was sufficient, at the interlocutory stage, to establish a prima facie case for injunction without waiting for evidence to be recorded.

Key Holdings of the Court

1. Prior user is paramount: The fact that “Glucon-D” and its distinctive packaging had been in use since 1940 – decades before Dabur adopted “Glucose-D” – was sufficient to establish a prima facie case at the interlocutory stage. Prior user is a cardinal test in both infringement and passing off actions.
2. Phonetic similarity found: The Supreme Court held that “Glucon-D” and “Glucose-D” are remarkably phonetically similar, particularly given that both products contain glucose. This similarity is capable of confusing an average buyer.
3. Packaging was deceptively similar: On examining the actual packaging, the Court found the colour scheme and overall trade dress of “Glucose-D” to be so similar to “Glucon-D” – both using a green colour scheme overlaid with a “happy family” image – that it could easily confuse a purchaser. The Court dismissed the respondent’s argument that a “family of four” versus “family of three” made the packaging dissimilar, holding that the overall visual effect controls.
4. Iterative changes reinforce dishonest intent: The fact that Dabur had made incremental changes to its packaging over the years was interpreted not as distancing itself from Heinz’s mark but rather as a continuing attempt to mislead consumers while making it harder for the appellant to pin down the infringement.
5. Injunction granted: The Supreme Court set aside the orders of the trial court and the High Court and allowed the application for ad-interim injunction.

Statutory Provisions Involved

• Section 29, Trade and Merchandise Marks Act, 1958 – Infringement of a registered trademark.
• Section 106, Trade and Merchandise Marks Act, 1958 – Relief in suits for infringement or passing off (including injunctions and accounts of profits).
• Section 63, Copyright Act, 1957 – Infringement of copyright (relevant to artistic work on the packaging).
• Order 39, Rules 1 and 2, Code of Civil Procedure, 1908 – Grant of temporary/ad-interim injunctions.

Reasoning of the Court

On interference with concurrent findings: The Court distinguished the present facts from the rule of non-interference with concurrent judicial discretion laid down in Wander Ltd. vs. Antox India P. Ltd. In Wander, the refusal of injunction was justified because the opposing party had itself proved prior user. Here, the prior user of “Glucon-D” since 1940 was an admitted and uncontroverted fact on record. The Court found that the courts below had erred by overemphasising the generic nature of the word “Glucose” and underweighting the evidence of prior user and deceptive similarity.

On phonetic and visual similarity: Drawing from Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. and Corn Products Refining Co. vs. Shangrila Food Products Ltd., the Court reaffirmed that in passing off and infringement cases, courts must focus on similarities rather than dissimilarities. The test is not whether an expert can identify differences on close examination, but whether an average consumer making an ordinary purchase could be confused. Applying this test, the phonetic proximity of “Glucon-D” and “Glucose-D” combined with nearly identical packaging was sufficient to establish confusing similarity.

On the generic word plea: The Court acknowledged that whether “Glucose” is a generic word and whether exclusive use of it could be justified is a question requiring evidence and will be decided at trial. However, this open question did not defeat the claim for injunction at the interim stage, because the prior user of “Glucon-D” was independently sufficient to warrant interim protection.

On dishonest intention: Citing Corn Products, the Court held that where dishonest intention on the part of the defendant can be prima facie inferred – and the persistent adoption of a similar mark and packaging by Dabur supported such inference – an injunction should ordinarily follow. Delay in filing the suit alone is not a ground to deny injunctive relief where prior user and reputation are clearly established.

Doctrinal Significance

1. Prior user as an independent ground for interim injunction: The judgment firmly establishes that prior, long-standing use of a trademark and its trade dress, when uncontroverted, can independently sustain a claim for ad-interim injunction even when competing legal questions (such as the generic nature of a word) remain open for trial.

2. Overall impression test for trade dress: The Court reinforced the “overall impression” or “global assessment” standard for evaluating deceptive similarity of packaging. Minor variations in detail (such as the size of a depicted family) are insufficient to negate similarity when the colour scheme, layout and visual impact are substantially alike.

3. Incremental packaging changes as evidence of bad faith: The judgment introduces an important evidentiary principle – that a defendant’s habit of making small, iterative alterations to its packaging, rather than adopting a distinctly different trade dress, is itself evidence of a continuing intent to ride on the plaintiff’s goodwill rather than genuinely distinguish the product.

4. Limits of the generic word defence at interlocutory stage: While the Court did not finally decide whether “Glucose” is generic, it made clear that raising the generic word defence does not automatically defeat an application for interim relief where prior user and trade dress similarity are convincingly demonstrated. The generic word question is reserved for the merits stage.

5. Phonetic similarity in glucose/nutritional products: This case is frequently cited in Indian trademark disputes involving nutritional, pharmaceutical and FMCG products for the proposition that phonetic similarity – assessed from the standpoint of an average consumer, not a trained legal analyst – is a decisive factor at the interlocutory stage.

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