9911796707
TMI Blog2007 (5) TMI 653X X X X Extracts X X X X X X X X Extracts X X X X ..... . Heinz Italia S R L is the proprietor of the trademark Glucon-D which has been registered in India under Registration No. 305664 (Class 30) under The Trade and Merchandise Marks Act, 1958 (hereinafter called the Act ). This trademark had earlier been registered in the name of Glaxo on 21st May, 1975 but subsequently vide deed of assignment dated 30th September 1994 had been assigned to the first petitioner along with the goodwill etc. Glaxo Laboratories had also assigned their rights in the artistic work used on the packaging. The plaintiffs-appellants thereupon used the trademark Glucon-D and the packaging from the year 1994 to 2002 without any interference and established a very good name in the market. In July 2002, the appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed a suit in the Calcutta High Court to stop the misuse alongwith an application for interim relief but on an application by the respondent, the proceedings in Calcutta have been stayed pending the decision of the present suit.) The trial Judge in his order dated 11th December 2003 held that the word Glucose was a generic word and as such the appellants could not claim that the use of the word Glucose-D violated their registered trademark Glucon-D . The Court also rejected the plea that the packaging used by the respondent was deceptively similar by making an examination of the two sets of packaging and noticing the dissimilarities between the two. The application was accordingly dismissed. The appellants thereupon filed a first Appeal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... care Ltd. vs. Cadila Pharmaceuticals Ltd. 2001 PTC 300 (SC). He has also pleaded that the mark Glucon-D with its packaging had earned a reputation in the market and it was the intention of the respondent to dishonestly appropriate his goodwill which was impermissible in view of the judgments reported in Corn Products Refining Co. vs. Shangrila Food Products Ltd. AIR 1960 SC 142 and in Midas Hygiene Industries P.Ltd. vs. Sudhir Bhatia Ors. 2004 (28) PTC 121 SC. It has further been pleaded that the word Glucose-D was not a generic word but even assuming it to be so, an injunction could still follow in special circumstances and reference has been made to Godfrey Philips India Ltd. vs. Girnar Food Beverages (P) Ltd. (2004) 5 SCC 257. It ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t. 9. We first take up the objection raised by Mr. Sudhir Chandra i.e. with regard to the interference of this Court in an application for ad-interim injunction. It has been held in Wander Ltd. case (supra) that an interlocutory injunction under Order 39 Rules 1 and 2 of the CPC is in the nature of a discretionary relief and that interference should not be made when two courts have gone against a party. We however find from the facts of the case that in that matter the ad-interim injunction had been held to be rightly refused as the opposite party had claimed and proved prior user on which the passing off action was based. In the present case, however, the fact that the Glucon-D and its distinctive packaging had been used by Glaxo sinc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... epresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. 11. Likewise, it has been repeatedly held that before the use of a particular mark can be appropriated it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... reas in the case of Glucon-D the family was of three and as such the two were dissimilar. We are of the opinion however that the colour scheme and the overall effect of the packaging has to be seen. We have also examined Item D individually which is the exclusive packaging for Glucose-D; the one on the extreme left being the packaging in the year 1989, the one in the middle being the one for the year 2000 (which is impugned in the present suit) and the third on the extreme right which is the subject matter of the suit in Calcutta which has been stayed on the application made by respondent. We are of the opinion that the packaging of Glucose-D is Glucon-D is so similar that it can easily confuse a purchaser. We also feel that mere fact that ..... X X X X Extracts X X X X X X X X Extracts X X X X
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