The judgment established the importance of prior use, reputation in the market, and the test of similarity in determining trademark infringement and passing off.

JUDGMENT:

CIVIL APPEAL No 2756/2007

(arising out of S.L.P.(C) No. 59/2006)

HARJIT SINGH BEDI,J.

1. Leave granted.

2. This appeal arises out of the judgment and order dated 27th October 2005 of the Punjab and Haryana High Court whereby the order of the trial court dated 11th December 2003 rejecting an application moved by the appellants under Order 39 Rules 1 and 2 of the Code of Civil Procedure praying for the grant of ad-interim injunction, has been confirmed.

3. The plaintiffs-appellants M/s. 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 appellants learnt that the defendant-respondent, Dabur India had launched a similar product under the name "Glucose-D" by using packaging which was deceptively similar to the packaging used for "Glucon-D". The appellants thereupon, through their Advocate, served a notice on the respondent calling upon it to desist from using the mark and the deceptive packaging, but as no satisfactory reply was forth coming, filed a suit for permanent injunction and accounts of profits for infringement of the trademark under Sections 29 and 106 of the Act and infringement of copy right under Section 63 of the Copyright Act. Along with the suit the appellants also filed an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure for the grant of an ad-interim injunction to restrain the respondent from using the trademark "Glucose-D" or any other trademark and deceptively similar packaging as well. In the plaint it was pleaded inter alia that the respondent was trying to impinge on the goodwill and reputation that the product "Glucon-D" enjoyed in the market. The respondent filed a written statement and took the plea that the word Glucose was a generic expression of the product being sold and as such no monopoly could be claimed by the appellants or anyone else on the said word or its derivatives. It was also pleaded that there was no similarity between the trademark "Glucon-D" and "Dabur Glucose-D" and that the packaging was also dissimilar. (It appears that the appellants have also filed 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 in the Punjab and Haryana High Court but that too was dismissed on 27th October 2005 confirming the judgment of the trial court. It is in these circumstances that the matter has come to this Court.

4. We have heard the learned counsel for the parties at great length and examined the case law cited by them. At the outset, it must be pointed out that we are presently concerned only with the proceedings for ad-interim injunction claimed by the appellants under Order 39 Rules 1 and