Heinz Italia Vs Dabur India Ltd

Heinz Italia Vs Dabur India Ltd- Trademark Infringement and Passing Off: An Examination of "Glucon-D" vs "Glucose-D"

Case Title: Heinz Italia & Anr vs  Dabur India Ltd

Date of Order: 18 May 2007

Case No.: Civil Appeal No. 2756 of 2007

Neutral Citation: 2007 (35) PTC 1 SC

Court: Supreme Court of India

Judges: Hon'ble Justice Shri B.P. Singh and Shri  Harjit Singh Bedi

Introduction:This case revolves around allegations of trademark infringement and passing off brought by Heinz Italia against Dabur India. The dispute concerns the use of the trademark "Glucon-D" and its packaging, which Heinz claims was deceptively copied by Dabur's product "Glucose-D." The Supreme Court of India adjudicated on the issue of granting an ad-interim injunction to prevent Dabur from using allegedly infringing marks and packaging.

Background: Heinz Italia, the successor to Glaxo Laboratories, owns the registered trademark "Glucon-D," which was first registered in 1975. The trademark, along with its goodwill and packaging rights, was assigned to Heinz in 1994. Dabur launched its product "Glucose-D" in 1989 and adopted packaging in 2000 that Heinz alleged was deceptively similar to its own.

The legal battle began when Heinz filed a suit for permanent injunction, accounts of profits, and damages, asserting that Dabur's actions constituted infringement under Sections 29 and 106 of the Trademarks Act, 1958, and copyright infringement under Section 63 of the Copyright Act, 1957.

Trademark Ownership:Heinz Italia owns the registered trademark "Glucon-D," originally registered in 1975 by Glaxo and assigned to Heinz in 1994. The packaging includes a distinctive green color and a "happy family" depiction.Allegations Against Dabur:Heinz alleged that Dabur's product "Glucose-D" used deceptively similar packaging and phonetic resemblance to "Glucon-D," which could mislead consumers.

Initial Proceedings: The Trial Court (2003): Rejected Heinz's application for ad-interim injunction, holding "Glucose" as a generic term and finding dissimilarities in packaging. Punjab and Haryana High Court (2005): Upheld the Trial Court's decision.

Supreme Court Appeal (2007): Heinz appealed against the denial of interim relief, seeking to restrain Dabur from using the disputed mark and packaging.

Issues Raised:  Whether the term "Glucose-D" constitutes a generic term, precluding exclusive trademark right? Whether Dabur's packaging was deceptively similar to Heinz's "Glucon-D" packaging. Whether prior use of the mark by Heinz established its goodwill and reputation in the market? Whether the delay in filing the suit by Heinz precluded the grant of interim relief? 

Submissions of the Parties:

Appellant (Heinz Italia) submission: Prior Use and Goodwill: The trademark "Glucon-D" and its packaging had been in use since 1940 (by Glaxo) and acquired significant goodwill. Deceptive Similarity: The phonetic resemblance between "Glucon-D" and "Glucose-D," coupled with similar packaging, was likely to confuse consumers.

Respondent (Dabur India) submission: Generic Nature of "Glucose": Argued that "Glucose" is a generic term, and no monopoly could be claimed over it. Dissimilar Packaging: Highlighted differences in the depiction of the "happy family" and overall design. Delay in Filing: Contended that Heinz's delay in initiating legal action indicated a lack of urgency.

Key Citations:

Century Traders v. Roshan Lal Duggar & Co. (AIR 1978 Delhi 250):In an action for passing off, the plaintiff must establish prior use of the trademark to secure an injunction. The registration of the mark, while relevant, is secondary to the principle of prior use. The Court relied on this judgment to emphasize that Heinz Italia's trademark "Glucon-D" had been in use since 1940 (by Glaxo) and subsequently by Heinz from 1994. The respondent, Dabur, began using "Glucose-D" much later, in 1989, making Heinz the prior user. This principle was crucial in granting interim relief to Heinz.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001 PTC 300 SC): This judgment laid down the test for deceptive similarity in trademark cases, focusing on the likelihood of consumer confusion. It emphasized that phonetic similarity and the overall impression created by the marks must be considered. The Court analyzed the phonetic similarity between "Glucon-D" and "Glucose-D," noting that the resemblance was likely to confuse consumers. The similarity in packaging, particularly the color scheme and depiction of a "happy family," further supported the argument of deceptive similarity.

Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142): In cases of passing off, the intention to deceive and the likelihood of consumer confusion are critical factors. If a dishonest intention to exploit the goodwill of an established brand is evident, an injunction should follow. The Court found that Dabur's use of similar packaging and phonetic resemblance suggested an attempt to exploit the goodwill of Heinz's "Glucon-D." This dishonest intention was inferred from the similarities and Dabur's repeated modifications to its packaging.

Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia & Ors. 2004 (28) PTC 121 SC: In cases of trademark infringement or passing off, injunctions should be granted promptly if the plaintiff demonstrates a prima facie case of deceptive similarity. Delay in filing the suit does not defeat the plaintiff's right to protection. The Court rejected Dabur's argument that Heinz's delay in filing the suit (in 2003, despite Dabur's use since 1989) should preclude interim relief. The Court held that the delay did not negate Heinz's right to seek protection for its trademark.

Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd. (2004) 5 SCC 257: The Court held that even if a term is generic, exclusive rights may be claimed if it has acquired a secondary meaning or distinctiveness in the market. While Dabur argued that "Glucose" is a generic term, the Court noted that the addition of "D" and the distinctive packaging had given "Glucon-D" a unique identity in the market. The Court emphasized that generic terms could still warrant protection under special circumstances.

Wander Ltd. v. Antox India P. Ltd. (1990 Supp. SCC 727): Interim injunctions under Order 39 Rules 1 and 2 of the CPC are discretionary and appellate courts should not interfere lightly unless the discretion has been exercised arbitrarily or capriciously. The Court acknowledged this principle but distinguished the present case. Unlike Wander Ltd., where prior use was proven by the defendant, Heinz's long-standing use of "Glucon-D" warranted interference by the Supreme Court to grant interim relief.

J.B. Williams v. H. Bronnley (1909) RPC 765: This judgment discusses the standard for assessing similarity in trademarks and the need for evidence to substantiate claims of confusion. Dabur cited this case to argue that the alleged similarity between the marks and packaging required detailed evidence, which could only be assessed at trial. However, the Supreme Court held that the prima facie similarity and Heinz's established goodwill justified an interim injunction.

Provisions of Law Discussed:

Trademarks Act, 1958: Sections 29 (infringement of trademark) and 106 (remedies).

Copyright Act, 1957: Section 63 (infringement of copyright).

Code of Civil Procedure: Order 39 Rules 1 and 2 (injunctions).

Analysis and Reasoning:

Prior Use: The Court held that "Glucon-D" had been in use long before "Glucose-D," establishing its reputation.Deceptive Similarity: Despite minor differences, the overall resemblance in packaging and phonetic similarity was likely to mislead consumers.Generic Term Argument: While "Glucose" is generic, the addition of "D" and distinctive packaging gave "Glucon-D" a unique identity.Delay: The Court found that delay did not negate the right to protection against infringement.

Decision: The Supreme Court granted an interim injunction in favor of Heinz Italia, restraining Dabur from using the trademark "Glucose-D" and its packaging.

Concluding Note: This case underscores the importance of protecting established trademarks and the goodwill associated with them. It also highlights the Court's role in balancing competing interests while addressing deceptive similarities in trademarks.

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Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney], High Court of Delhi