THE USE OF A GENERIC TERM AS A TRADEMARK DOES NOT INFRINGE THE RIGHTS OF THE OWNER OF A REGISTERED TRADEMARK FOR A SIMILAR TERM, AND THAT THE PACKAGING OF TWO PRODUCTS MUST BE CONSIDERED WHEN DETERMINING WHETHER THERE IS A LIKELIHOOD OF CONFUSION OR DECEPTION.

B. Akbar Basha Khadiri, J. - Both the applications have arisen in this way :

The application in Orl. Application No. 1 (144 of 1998) is engaged in manufacturing and marketing of biscuits and sweets. The applicant is the registered proprietor of the trade mark GLUCO in respect of biscuits. The trade mark GLUCO was conceived about fifty years ago and was registered on 10-2-1949 under the Trade and Merchandise Marks Act, bearing No. 137633. Due to continuous and exclusive usage the trade mark GLUCO has become distinctive and exclusively identified with the applicant's biscuits. The applicant's turnover exceeds several crores of rupees and the applicant had been spending huge amounts on advertisements. Recently, the applicant came to know that the respondent is selling biscuits under the mark GLUCOGOLD. The two words 'GLUCO' and 'GOLD' combined together to form another word "GLUCOGOLD', which does not have any meaning. This is an attempt by the respondent to indirectly infringe the statutory restrain upon it. When public see the trade mark GLUCOGOLD, they would tend to think that the said product is also that of the applicant. The respondent is deliberately adopting the word 'GLUCOGOLD' to cash in on the wide reputation enjoyed by the applicant in respect of its trade mark GLUCO and to deceive the people that the product emanates from the applicant. There had been exchange of the letters between the applicant and the respondent in this regard which culminated in holding a meeting between the Chief Executives of the applicant and the respondent on 20th November, 1997 at the applicant's office in Mumbai. At the meeting, the respondent's executive offered to.

(1) keep the brand name GLUCOGOLD as one word without any dissection;

(2) refrain from prominent use of the GLUCO in the present or in future by changing the size, the word GOLD to make the same deceptive; and

(3) change the jingle advertised on Television by restraining the use of the word 'G' by way of reference either remotely or through passing off of the same.

The proposal was reduced into writing and referred to the applicant's management for consideration. But the same was not approved by the management and the respondent was directed by letter dated 4-12-1997 to discontinue the use of the word GLUCOGOLD. But the respondent continues to sell the biscuits under the infringing mark GLUCOGOLD in Madras and is also advertising its biscuits through Television Networks, dailies and periodicals circulated all over India. The respondent's action is causing irreparable loss and hardship to the applicant, which cannot be adequately compensated. Hence, the applicant has filed the main suit and also the application in Orl. Application No. 144 of 1998 for order of ad interim injunction restraining the respondent from manufacturing, marketing, distributing or selling biscuits under the mark GLUCOGOLD or any other mark deceptively to the applicant's registered trade mark GLUCO.

2. The respondent countered the case of the applicant contending that it is manufacturing biscuits for the past twenty years under the registered trade mark BAKEMANS and has a distinctive Chief Device as its logo. In or about of August 1997, the respondent adopted the trade mark GLUCOGOLD. The mark is coined by combination of 'GLUCO' which is defined in the Websters Collegiate Dictionary as (1) Glucose and (2) related to or containing Glucose and 'GOLD' which traditionally stands as a mark of purity. The applicant has registered a generic term as its trade mark, the respondent has filed application under Sections 32 and 46 r/2 Section 56 of the Trade and Merchandise Marks Act for removal of the applicant's registration. The applicant has given up the use of the registered mark GLUCO for more than twenty years and is now selling its products under the trade mark PARLE-G. The trade marks are to be compared as a whole, and taken as a whole the trade marks of the applicant and the respondent, the colour sche