JUDGMENT

M. Jagannadha Rao.-Leave granted.

2. In trade mark cases, the 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 competition has increased. (See Vol. 59 Law and Contemporary Problems, 1996, No. 2 P.5 at p. 14) (A Personal) Note on Trade Mark etc. by Milton Handler).

3. This is a plaintiff s appeal against the judgment of the Gujarat High Court in A.F.O. No. 203 of 1999 dated 24.8.1999, by which the High Court of Gujarat allowed the appeal preferred 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 PIKNIK. The suit was on the basis of infringement of trade mark and also on the basis of passing off.

4.The brief facts of the case are as follows :

The appellant company (plaintiff) claimed that it started business in 1988 in four products like potato chips, potato wafers, corn-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. 505531B. Plaintiff also applied for registration of same trade mark in class 30 (for tea, coffee, corns, jaggery etc. including confectionery chocolates, honey etc.) under application 505532. A third application under same name was (for beverages, beers, mineral and irrigated 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 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).

5. The respondent-defendant contended in this interlocutory application 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 had also filed a subsequent application for registration of CADBURY PICNIC in August 1999 (appln. No. 72676). 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 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