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SC-Jagatjit Industries Limited Vs. The Intellectual Property Appellate Board

# BLENDERS PRIDE TRADEMARK DISPUTE: WHEN A REGISTRY ERROR MEETS OPPOSITION RIGHTS

## Introduction

The case of Jagatjit Industries Limited versus The Intellectual Property Appellate Board decided by the Supreme Court of India on 20th January 2016 touches upon some of the most fundamental questions in trademark law in India. What happens when the Trade Marks Registry issues a registration certificate by mistake, in clear violation of the statutory procedure governing opposition? Can a Registrar exercise suo motu power to correct such an error even when infringement proceedings are pending in a civil court? Does the bar created by Section 125 of the Trade Marks Act, 1999 extend to the Registrar's independent power to maintain the purity of the trademark register? These questions, which have significant practical consequences for trademark proprietors and opponents alike, were squarely addressed by the Supreme Court in this appeal filed by Jagatjit Industries Limited.

## Factual and Procedural Background

The dispute revolves around the trademark "BLENDERS PRIDE," a well-known name in the Indian whisky market. Respondent No. 4, Austin Nichols and Company Incorporated, a corporation registered under the laws of the United States of America and an ultimate subsidiary of Pernod Ricard S.A., claimed to have coined and adopted the trademark BLENDERS PRIDE through its licensee M/s. Seagram Company Limited as far back as 1973. Austin Nichols claimed that on account of extensive sales and marketing worldwide, the trademark had acquired tremendous reputation, and that it had obtained registration in more than 50 countries. In India, it had been selling BLENDERS PRIDE whisky through its licensee Seagram India Private Limited since 1995, and had applied for registration of the trademark under two applications in Class 33, which were pending.

Jagatjit Industries Limited, the appellant, also applied for registration of the identical trademark BLENDERS PRIDE. This application was advertised in the Trademarks Journal Mega-I, which was published on 7th October 2003. Under the Trade Marks Act, 1999, any person wishing to oppose a trademark application must file a notice of opposition within three months from the date of advertisement, with a provision for a further extension of up to one month in aggregate. Austin Nichols, within the statutory three-month period, filed Form TM-44 on 6th January 2004 seeking an extension of one month to file its notice of opposition, citing the need to seek legal advice. On 19th January 2004, Austin Nichols filed its notice of opposition before the Trade Marks Registry, New Delhi, which was duly numbered as DEL-160325.

On 16th February 2004, the Trade Marks Registry issued a notice to Jagatjit Industries Limited under Section 21(2) of the Act, calling upon it to file a counter-statement to the notice of opposition within two months, with a warning that failure to do so would result in the trademark application being deemed abandoned. This letter, as the Court noted, unambiguously reflected that the notice of opposition had been taken on record.

However, despite opposition proceedings being actively pending, Austin Nichols discovered on 20th January 2005 that a trademark registration certificate bearing No. 618414 had already been issued to Jagatjit Industries Limited on 13th January 2004 — that is, before the extended opposition period had even expired and while the opposition proceedings were still very much alive.

Austin Nichols immediately informed the Trade Marks Registry about the pending opposition proceedings. Receiving no response, it filed writ petitions before the Delhi High Court being Writ Petition Nos. 2712 and 2713 of 2005. On 16th February 2005, the Registrar issued a show cause notice to Jagatjit Industries under Section 57(4) of the Trade Marks Act, 1999, stating that the registration certificate had been issued wrongly and proposing to rectify the register by removing the mark. Jagatjit was also directed to return the wrongly issued certificate and not to use it in any proceedings.

Jagatjit challenged this show cause notice by filing Writ Petition Nos. 10080-81 of 2005 and obtained an interim stay. Meanwhile, on 14th January 2005, Jagatjit had already filed a suit for infringement of its trademark in the District Court of Jalandhar against Seagram Distilleries Private Limited, the licensee of Austin Nichols. In the written statement filed in that suit, Seagram took up the plea that Jagatjit's registration was under challenge and hence the suit ought to be stayed.

On 14th November 2005, the Registrar recalled the show cause notice, holding that in view of Section 125 of the Act, jurisdiction had shifted to the Intellectual Property Appellate Board since infringement proceedings were pending in a civil court. In an appeal before the Appellate Board, the Board reversed the Registrar's order on 6th October 2006, holding that the registration of the trademark on 13th January 2004 was contrary to Section 23 of the Act and directing the Registrar to proceed with the opposition proceedings.

Jagatjit challenged the Appellate Board's order before the Delhi High Court. The learned Single Judge, by judgment dated 9th May 2008, set aside the Appellate Board's order and upheld the Registrar's earlier decision to recall the show cause notice, holding that Section 125 applied and that the Whirlpool judgment of the Supreme Court supported this view. In appeal, however, the Division Bench reversed the Single Judge's decision, holding that the registration was issued in violation of Section 23(1) of the Act, that Section 125 did not bar the Registrar's suo motu powers under Section 57(4), and that it was the Registrar's duty to maintain the purity of the register. The Division Bench directed a de novo hearing of the case. It was against this Division Bench judgment that Jagatjit filed the present appeal before the Supreme Court.

## The Dispute

The central legal questions before the Supreme Court can be understood in three parts. First, was the extension of time for filing the opposition validly granted by the Registrar, and was the registration certificate issued on 13th January 2004 therefore illegal? Second, was the show cause notice issued from Bombay by the Registrar valid, given that the trademark proceedings had been conducted in Delhi? Third, and most importantly, does Section 125 of the Trade Marks Act, 1999 bar the Registrar from exercising suo motu power under Section 57(4) to rectify the register once an infringement suit is pending in a civil court where the defendant has challenged the validity of the plaintiff's trademark registration?

## Reasoning and Analysis of the Judges

Justice Rohinton Fali Nariman, who authored the judgment, examined these questions with care and clarity, drawing upon the statutory scheme of the Trade Marks Act, 1999 and relevant precedents.

On the question of whether extension of time was validly granted, the Court noted that Respondent No. 4 had filed Form TM-44 seeking extension of one month within the three-month period, and that the notice of opposition filed on 19th January 2004 was within the extended period. Most critically, the Registrar's letter dated 16th February 2004 had expressly taken the notice of opposition on record and called upon Jagatjit to file a counter-statement. The Court held that this letter itself was sufficient evidence that the Registrar had extended the time for filing opposition. A separate written order was not necessary, as the extension of time by the Registrar under the Act is a ministerial act requiring no formal hearing.

The Court referred to Section 131 of the Trade Marks Act, 1999, which empowers the Registrar to extend time if satisfied that there is sufficient cause, and expressly provides that no hearing is required and no appeal lies from such an order. While technically Section 131 would not apply to the time for filing opposition since that is expressly provided in the Act itself, the Court used it as a pointer to show that such extensions need not be accompanied by formal written orders. The Court also relied upon the principle settled in Kailash v. Nanhku (2005) 4 SCC 480, where the Supreme Court had held that procedural provisions must be construed in a manner that advances justice rather than defeats it, and that parties must not be denied the opportunity to participate in the justice dispensation process unless compelled by express and specific statutory language. Since the Registrar had clearly acted upon the application for extension by taking the notice of opposition on record, the registration certificate issued on 13th January 2004 — before the extended opposition period had even lapsed — was held to be in clear violation of Section 23(1)(a) of the Trade Marks Act, 1999, which mandates that registration can only be granted after the statutory period for filing opposition has expired without any opposition being received, or after an opposition has been decided in favour of the applicant.

The Court also rejected the argument that the show cause notice issued from Bombay was without jurisdiction. This argument had been raised by Jagatjit on the ground that the trademark application and all subsequent proceedings had taken place in Delhi, and therefore the Delhi office ought to have issued the show cause notice. The Court answered this by examining Section 3 of the Trade Marks Act, 1999, which provides that the Central Government appoints a person to be the Controller-General of Patents, Designs and Trade Marks, who is the Registrar of Trade Marks for purposes of the Act. Other officers in various parts of the country act under the superintendence and directions of this Registrar, whose office is in Bombay. Since there is only one Registrar under the Act and the suo motu power under Section 57(4) can only be exercised by the Registrar himself, the show cause notice issued from Bombay was perfectly valid.

The most substantive and legally significant part of the judgment deals with the interpretation of Section 125 of the Trade Marks Act, 1999 and its relationship with Section 57(4). Section 125(1) provides, in essence, that where in a suit for infringement of a registered trademark the defendant pleads that the registration of the plaintiff's trademark is invalid, the issue of validity shall be determined only on an application for rectification of the register, and such application shall be made to the Appellate Board and not to the Registrar, notwithstanding anything contained in Section 47 or Section 57.

Justice Nariman held that Section 125 does not apply to the facts of this case for two independent reasons. The first is factual. Section 125 speaks of proceedings arising in the context of a suit for infringement where the defendant questions the validity of the plaintiff's trademark registration. In the present case, the suit for infringement was filed by Jagatjit in the District Court of Jalandhar against Seagram Distilleries Private Limited. However, Austin Nichols — Respondent No. 4 before the Supreme Court — was not a defendant in that suit. The Court rejected the argument advanced by Jagatjit's counsel, Smt. Prathiba Singh, that since Seagram was merely a licensee of Austin Nichols and the authorized signatory of both companies was the same person, Austin Nichols should be treated as if it were a defendant. The Court found this argument unconvincing because Jagatjit's own plaint in the infringement suit did not even allege that Seagram was the licensee of Austin Nichols. In fact, Jagatjit's plaint stated that the defendant companies had not even applied for registration of the trademark BLENDERS PRIDE in their own names. Austin Nichols not being a defendant in the infringement suit, Section 125(1) could not be invoked.

The second reason is structural and of broader application. Even if Austin Nichols had been a defendant in the infringement suit, the Court held that Section 125(1) does not bar the Registrar's suo motu power under Section 57(4) because Section 125(1) applies only to applications for rectification of the register filed by parties, and not to the Registrar's independent exercise of its statutory duty to maintain the purity of the trademark register.

In reaching this conclusion, Justice Nariman drew upon a comparison with the predecessor legislation, the Trade and Merchandise Marks Act, 1958. Section 107(1) of the 1958 Act used the expression "section 46, section 56 and sub-section (4) of section 47," deliberately specifying only a particular sub-section of Section 47 rather than the whole section. This was because other sub-sections of Section 47 did not concern applications for rectification but explained what defensive trademarks were. In the 1999 Act, the width of the expression "Section 57" in Section 125(1) is restricted by the words "and an application for rectification of the register." Such applications for rectification are referable only to sub-sections (1) and (2) of Section 57, both of which deal with applications by parties. Section 57(4), which deals with the Registrar's suo motu power, does not contemplate any application by any party at all. Therefore, on a literal construction of Section 125(1), Section 57(4) falls outside its reach.

The Court also relied heavily upon the earlier Supreme Court decision in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. (2003) 11 SCC 92, which had firmly established that the Registrar has an independent duty to maintain the purity of the register and that the suo motu power under Section 57(4) serves a public interest function. The Court quoted Hardie's case to the effect that proceedings under Section 56 of the 1958 Act (equivalent to Section 57 of the 1999 Act) are commenced for the purity of the register, which it is in the public interest to maintain. Illustrating the importance of this interpretation, the Court pointed out a practical scenario: if a defendant in an infringement suit raises the plea of invalidity of the plaintiff's trademark registration and then reaches a compromise with the plaintiff and chooses not to file a rectification petition before the Appellate Board, the Registrar's power to clean up the register must remain intact regardless. Accepting the contrary interpretation would leave a wrongly registered trademark permanently on the register simply because private litigation ended without a rectification petition being filed.

The Court then turned to the Whirlpool Corporation v. Registrar of Trade Marks (1998) 8 SCC 1 judgment, which had been strongly relied upon by Jagatjit's counsel. The Court carefully distinguished that case on its facts. In Whirlpool, the rectification notice had been issued suo motu by the Registrar at the request of one of the parties to a suit for passing off — and critically, the court noted that an amendment application to add the relief of infringement had already been filed and was pending, so the suit was effectively on the verge of becoming an infringement suit within the meaning of Section 107(1) of the 1958 Act. The Court observed that no argument had been made in Whirlpool about the independence of Section 57(4) from Section 107(1), and the decision had turned entirely on the peculiar facts of that case. Further, in Whirlpool, one of the parties to the suit had applied for rectification, which distinguished it from the present case where Austin Nichols was not a party to the infringement suit. For these reasons, the Whirlpool judgment was held to have no application to the facts before the Court.

## Final Decision of the Court

The Supreme Court dismissed the appeal filed by Jagatjit Industries Limited and upheld the Division Bench judgment of the Delhi High Court. The Court affirmed that the registration certificate bearing No. 618414 issued to Jagatjit on 13th January 2004 was issued in violation of Section 23(1)(a) of the Trade Marks Act, 1999, as it was granted while the opposition period had not yet expired. The Court confirmed that Section 125(1) of the Trade Marks Act, 1999 did not apply to the facts of the case because Austin Nichols was not a defendant in the infringement suit filed by Jagatjit. The Court further confirmed that even if Section 125(1) had otherwise been applicable, the suo motu power of the Registrar under Section 57(4) would not have been affected, as Section 125(1) operates only upon applications for rectification filed by parties and not upon the Registrar's independent statutory duty to maintain the register. No costs were awarded.

## Point of Law Settled

The Supreme Court settled that the Registrar of Trade Marks can validly grant an extension of time for filing a notice of opposition without passing a separate written order, and that such extension can be inferred from the Registrar's conduct in taking the opposition on record. Any registration certificate issued before the expiry of the extended opposition period is invalid and in contravention of Section 23(1)(a) of the Trade Marks Act, 1999. Equally significantly, the Court settled that Section 125(1) of the Trade Marks Act, 1999, which bars proceedings before the Registrar and requires rectification applications to be made to the Appellate Board in the context of an infringement suit where the defendant challenges the validity of a trademark, applies only to applications for rectification filed by parties under Section 57(1) and (2). It does not bar or restrict the independent suo motu power of the Registrar under Section 57(4) to correct errors in the register and maintain its purity, irrespective of pending infringement proceedings in a civil court.

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**Case Details**

Title: Jagatjit Industries Limited Vs. The Intellectual Property Appellate Board and Ors.

Date of Order: 20th January 2016

Case Number: Civil Appeal No. 430 of 2016 (Arising out of S.L.P. (Civil) No. 14444 of 2009)

Neutral Citation: MANU/SC/0056/2016

Name of Court: Supreme Court of India

Hon'ble Judges: Justice Kurian Joseph and Justice Rohinton Fali Nariman

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*Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.*

*Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi*

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**Headnote**

The Supreme Court of India held that a trademark registration certificate issued by the Trade Marks Registry during a pending opposition period, in violation of Section 23(1)(a) of the Trade Marks Act, 1999, is invalid and liable to be removed from the register. The Registrar's acceptance of a notice of opposition and issuance of a notice calling for a counter-statement constitutes sufficient evidence of implied extension of time under Section 21(1), and no separate written order granting such extension is required. Further, the Court clarified that the bar under Section 125(1) of the Trade Marks Act, 1999 — which requires rectification applications to be made to the Appellate Board rather than the Registrar in cases where an infringement suit is pending and the defendant challenges the validity of the plaintiff's trademark — operates only upon applications for rectification filed by parties under Section 57(1) and (2), and does not curtail or extinguish the Registrar's independent suo motu power under Section 57(4) to correct errors and maintain the purity of the trademark register. The Whirlpool judgment distinguished on facts. Appeal dismissed.

SC-Heinz Italia and Another Vs. Dabur India Ltd.

Goodwill ,consumer confusion and Passing off :Heinz Italia and Another Vs. Dabur India Ltd. by Supreme Court

Introduction

The Supreme Court’s decision in Heinz Italia & Another v. Dabur India Ltd. is an important judgment in Indian trademark and trade dress law concerning deceptive similarity, passing off, infringement of intellectual property rights, and the principles governing grant of interim injunctions. The case arose from a dispute between two well-known manufacturers of glucose-based energy drinks and involved allegations that one party had adopted packaging and presentation deceptively similar to that of a competing product already established in the market.

The judgment is particularly significant because it reinforces the principle that the overall appearance, get-up, colour combination, and visual presentation of a product can be as valuable as the trademark itself. In modern markets, consumers often identify products not merely by their names but also by their packaging and visual identity. The ruling therefore serves as an important precedent for businesses seeking to protect brand goodwill and trade dress from imitation.

The case also clarifies the approach courts should adopt while considering applications for interim injunctions in intellectual property disputes. It demonstrates that where a strong prima facie case of dishonest imitation is established, courts must intervene to prevent confusion among consumers and safeguard commercial reputation. The judgment remains relevant for trademark owners, brand managers, legal practitioners, advertisers, manufacturers, and businesses involved in consumer goods markets.

Factual and Procedural Background

The appellants, Heinz Italia and its associated entity, were proprietors of the well-known trademark “Glucon-D”, a glucose-based energy drink that had enjoyed a substantial reputation in India for several decades. The mark was originally adopted and used by Glaxo Laboratories in 1940 and was subsequently registered under the Trade and Merchandise Marks Act, 1958 in 1975. The trademark, together with the associated goodwill and rights in the artistic packaging and label, was assigned to the appellants in 1994.

Over the years, “Glucon-D” became one of the leading products in the glucose powder segment. Apart from the trademark itself, the product was marketed through a distinctive packaging style incorporating a particular colour scheme and visual presentation which had become associated with the appellants in the minds of consumers.

In July 2002, the appellants discovered that Dabur India Ltd. had launched a competing glucose product under the mark “Glucose-D.” The appellants alleged that the respondent had not only adopted a deceptively similar mark but had also copied the overall trade dress, packaging style, colour combination, and visual presentation of the “Glucon-D” product.

Claiming infringement of trademark rights, copyright in the artistic work of the packaging, and passing off, the appellants instituted a suit seeking permanent injunction against Dabur. Along with the suit, they filed an application seeking ad interim injunction restraining Dabur from using the impugned mark and packaging pending disposal of the suit.

The trial court declined to grant interim relief. The appellants challenged the decision before the Punjab and Haryana High Court. The High Court affirmed the order of the trial court and refused to interfere. Faced with concurrent findings against them, the appellants approached the Supreme Court by way of appeal.

The matter thus reached the Supreme Court for determination of whether interim protection ought to be granted in favour of the proprietor of the “Glucon-D” brand.

Dispute Before the Court

The principal issue before the Supreme Court was whether the appellants had established a sufficient prima facie case for grant of an interim injunction against Dabur’s use of the impugned packaging and trade dress.

The appellants argued that they were the prior users and registered proprietors of the trademark “Glucon-D” and had acquired enormous goodwill through continuous use extending back to 1940. They contended that the respondent’s adoption of “Glucose-D” together with substantially similar packaging was intended to capitalize upon the reputation of the appellants’ product and mislead consumers into believing that the two products were connected.

The appellants further contended that prior use constitutes one of the most important considerations in infringement and passing-off actions. They relied upon the long-standing reputation of “Glucon-D” and argued that even if portions of the mark were descriptive, protection was nevertheless available where the overall presentation had acquired distinctiveness in the market.

The respondent, on the other hand, argued that both the trial court and the High Court had refused interim relief and that the Supreme Court should not interfere with concurrent discretionary orders. Reliance was placed upon the decision in Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727, which emphasizes judicial restraint while reviewing interlocutory orders.

Dabur also contended that “glucose” was a generic and descriptive expression incapable of exclusive appropriation. It was argued that there was no deceptive similarity between the rival products and that the packaging adopted by the respondent was sufficiently distinct. The respondent further pointed out that the mark “Glucose-D” had allegedly been in use since 1989 and that the appellants had approached the court after considerable delay.

The Supreme Court was therefore required to determine whether the appellants had established a prima facie case of deceptive similarity and whether interim injunctive relief was warranted notwithstanding the concurrent findings of the courts below.

Reasoning and Analysis of the Court

The Supreme Court commenced its analysis by examining the principles governing appellate interference with orders relating to temporary injunctions. The respondent had heavily relied upon Wander Ltd. and Another v. Antox India Pvt. Ltd., 1990 Supp SCC 727, where the Court had emphasized that appellate courts should ordinarily refrain from interfering with discretionary orders unless the discretion had been exercised arbitrarily or perversely.

The Court observed, however, that the facts of the present case were materially different. In Wander, the party resisting injunction had established prior user rights. In contrast, the evidence in the present matter clearly demonstrated that “Glucon-D” had been used by Glaxo since 1940 and thereafter by the appellants long before the respondent adopted the competing presentation. The principle in Wander therefore did not prevent interference where the lower courts had failed to properly appreciate the evidence relating to prior use and deceptive similarity.

A major aspect of the Court’s reasoning related to the concept of deceptive similarity. The Court observed that both products were glucose-based beverages and that the marks “Glucon-D” and “Glucose-D” exhibited a significant degree of phonetic resemblance. While the Court did not finally adjudicate upon trademark infringement at the interim stage, it acknowledged the striking similarity between the rival expressions.

More importantly, the Court concentrated on the visual appearance of the rival products. It reiterated the settled principle that in assessing deceptive similarity, courts must consider the overall impression conveyed to an ordinary purchaser rather than undertake a meticulous side-by-side comparison.

The Court found that the colour schemes adopted by the parties were remarkably similar. Both products featured a comparable visual arrangement and prominently displayed images of a happy family. The respondent attempted to distinguish the packaging by arguing that one package depicted a family of four members while the other displayed a family of three members. The Court rejected this argument, observing that consumers do not engage in such minute comparisons while purchasing everyday products. What matters is the overall commercial impression created by the packaging.

The Court concluded that the packaging of “Glucose-D” was sufficiently similar to that of “Glucon-D” and was capable of causing confusion among purchasers. The similarities were not confined to isolated features but extended to the overall trade dress and presentation of the product.

The Court also addressed the respondent’s argument regarding delay. It observed that where dishonest adoption or passing off is prima facie established, mere delay in approaching the court cannot by itself defeat the claim for injunctive relief. A trader cannot acquire legitimacy merely by continuing an allegedly deceptive practice for a period of time. The protection of goodwill and prevention of consumer confusion remain paramount considerations.

The Court further emphasized that where there is prima facie evidence suggesting an intention to pass off goods as those of another trader, an injunction should ordinarily follow. The law of passing off seeks not only to protect the proprietary rights of traders but also to safeguard consumers from deception and confusion.

Accordingly, the Court found that the appellants had established a strong prima facie case based upon prior user, reputation, deceptive similarity of packaging, and likelihood of confusion among consumers. The balance of convenience also favoured protection of the established market reputation enjoyed by the appellants.

Final Decision of the Court

The Supreme Court allowed the appeal and set aside the orders of the trial court as well as the Punjab and Haryana High Court refusing interim relief.

The Court held that the appellants had made out a prima facie case warranting protection of their trade dress and packaging. Consequently, interim injunctive relief was granted against the respondent in relation to the impugned packaging and visual presentation.

At the same time, the Court did not restrain the respondent from using the expression “Glucose-D” pending the proceedings. The injunction granted by the Court was confined to the deceptively similar packaging, get-up, colour scheme, and overall trade dress adopted by the respondent.

The appeal was therefore allowed and the appellants succeeded in obtaining protection against the use of the impugned packaging.

Point of Law Settled

The judgment reinforces the principle that in trademark and passing-off actions, courts must evaluate the overall commercial impression created by a product rather than isolate individual differences in packaging or presentation.

The decision also clarifies that trade dress, colour combinations, visual layout, and packaging can acquire independent goodwill and legal protection. Even where a dispute concerning the word mark itself remains arguable, courts may grant injunctive relief against deceptively similar packaging capable of misleading consumers.

The ruling further establishes that delay alone is not a sufficient defence where prima facie evidence of dishonest adoption or passing off exists. Protection of goodwill and prevention of consumer confusion remain dominant considerations while deciding applications for interim injunctions.

The judgment continues to be a leading authority on deceptive packaging, trade dress protection, passing off, and interim injunctions in intellectual property litigation.

Case Details:

Title of the Case: Heinz Italia & Another Vs. Dabur India Ltd.

Date of Judgment/Order: 18 May 2007

Case Number: Civil Appeal No. 2756 of 2007

Citation: (2007) 6 SCC 1

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice B.P.Singh and H.S.Bedi JJ

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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Headnote of the Judgment:

Heinz Italia & Another v. Dabur India Ltd., Supreme Court of India. The dispute concerned the appellants’ well-known glucose drink sold under the trademark “Glucon-D” and the respondent’s competing product marketed as “Glucose-D”. The appellants alleged deceptive similarity in packaging, colour scheme, and overall trade dress. The trial court and the High Court refused interim injunction. The Supreme Court reversed those orders and held that the overall packaging of the respondent’s product was deceptively similar and capable of confusing consumers. Emphasizing prior user rights, trade dress protection, and the principle that delay alone cannot defeat a claim based on dishonest imitation, the Court granted interim injunction against the impugned packaging while permitting continued use of the expression “Glucose-D”.

Infographic Thumbnail Prompt:

Create a powerful YouTube legal infographic thumbnail in 14:9 ratio, ultra-realistic 8K quality. Show two competing glucose energy drink packs prominently labelled “GLUCON-D” and “GLUCOSE-D” facing each other with a bold red “VS” in the center. Display nearly identical orange packaging, family illustrations, and product designs to highlight consumer confusion. In the background place the Supreme Court of India with dramatic courtroom lighting, a judge’s gavel, trademark symbol ™, copyright symbol ©, and legal scales of justice. Include attention-grabbing headline text: “GLUCON-D vs GLUCOSE-D”, “PACKAGING COPY?” and “Goodwill ,consumer confusion and Passing off "”. Use professional legal-news graphics, high contrast colours, dynamic composition, and modern YouTube legal channel aesthetics emphasizing trademark infringement, trade dress protection, and passing off law. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

SC-Gujarat Bottling Co. Ltd. and Others Vs. Coca Cola Co. and Others

Introduction

The decision of the Supreme Court in Gujarat Bottling Co. Ltd. v. Coca Cola Co. is one of the most important Indian judgments on interim injunctions, negative covenants in commercial contracts, franchise arrangements, and the scope of Section 27 of the Indian Contract Act, 1872. The case arose out of a fierce commercial rivalry between Coca Cola and Pepsi in the Indian soft-drink market and required the Court to determine whether a contractual restriction preventing a franchisee from dealing with competing products could be enforced through an interim injunction during the pendency of a suit.

The judgment assumes continuing relevance for businesses operating through franchise, licensing, distribution, bottling, dealership, and technology-sharing arrangements. It provides authoritative guidance on the circumstances in which courts may grant interlocutory injunctions, the enforceability of negative stipulations in commercial contracts, and the role of equitable considerations while exercising discretionary powers. The ruling remains a leading precedent frequently cited in commercial litigation involving restrictive covenants and contractual obligations.

Factual and Procedural Background

Coca Cola Company entered into agreements with Gujarat Bottling Co. Ltd. (GBC) under which GBC was granted the right to manufacture, bottle, sell, and distribute beverages bearing Coca Cola trademarks and trade names. The relationship was based on a franchise and bottling arrangement through which Coca Cola supplied proprietary formulations, concentrates, and business know-how, while GBC undertook manufacturing and distribution activities in specified territories.

The agreements contained a negative covenant restraining GBC from manufacturing, bottling, selling, dealing in, or otherwise being concerned with beverages of competing brands during the subsistence of the agreement. The contractual framework also contemplated that any transfer of control or ownership affecting GBC required compliance with contractual conditions and the consent of Coca Cola.

Subsequently, control of GBC came into the hands of interests associated with Pepsi, a major competitor of Coca Cola in the soft-drink industry. The transfer of shares was effected without obtaining Coca Cola’s consent in the manner contemplated under the agreement. Instead of resolving the dispute through contractual mechanisms, GBC issued a notice seeking termination of the arrangement.

Apprehending that its proprietary business interests, market share, goodwill, and contractual rights would be adversely affected, Coca Cola instituted proceedings before the Bombay High Court. Coca Cola sought interim protection to prevent GBC and those controlling it from using the bottling facilities for manufacturing or marketing competing beverages.

The Bombay High Court granted an interim injunction restraining the use of GBC’s plants for manufacturing, bottling, selling, or distributing beverages of competing brands. Aggrieved by the order, GBC and other appellants approached the Supreme Court through civil appeals challenging the grant and continuation of the injunction.

Dispute Before the Court

The principal controversy before the Supreme Court concerned whether the negative covenant contained in the franchise and bottling agreement could be enforced through an interim injunction during the pendency of the suit.

The appellants argued that the injunction effectively prevented the operation of the bottling facilities and would result in substantial commercial losses, unemployment, and hardship. They contended that the restriction amounted to an unreasonable restraint and that the balance of convenience required the injunction to be vacated.

Coca Cola, on the other hand, argued that the contractual restriction was voluntarily accepted by GBC and was necessary to protect proprietary rights, confidential business information, trademarks, goodwill, and market position. It was further contended that the transfer of control to Pepsi without contractual compliance constituted a breach of the agreement and that allowing the facilities to be used for competing products would cause irreparable harm incapable of adequate monetary compensation.

The Court was therefore required to determine whether the contractual restriction was legally enforceable, whether interim relief was justified, and how the principles governing interlocutory injunctions should be applied in a commercial dispute involving competing multinational corporations.

Reasoning and Analysis of the Court

The Supreme Court undertook a detailed examination of the principles governing interlocutory injunctions under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The Court reiterated that grant of an interim injunction is an equitable and discretionary remedy. While exercising such discretion, courts ordinarily examine whether the plaintiff has established a prima facie case, whether the balance of convenience lies in its favour, and whether refusal of relief would result in irreparable injury.

The Court relied upon the principles articulated in Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, where the Supreme Court explained the limited scope of appellate interference with discretionary orders relating to temporary injunctions. The Court also referred to the celebrated English decision in American Cyanamid Co. v. Ethicon Ltd., (1975) AC 396 , which discusses the approach to interlocutory relief and balancing competing risks pending trial.

A significant issue concerned the enforceability of the negative covenant contained in the bottling agreement. The Court examined Section 42 of the Specific Relief Act, 1963, which permits enforcement of a negative agreement even where the affirmative part of the contract cannot be specifically enforced, provided the circumstances justify such relief. The Court observed that the provision recognizes the enforceability of negative stipulations and enables courts to grant injunctions restraining conduct contrary to contractual obligations.

The Court also analysed Section 27 of the Indian Contract Act, 1872, which renders agreements in restraint of trade void. The appellants attempted to contend that the contractual restriction amounted to an impermissible restraint on trade. Rejecting this argument, the Court distinguished between restrictions operating during the subsistence of a contract and restrictions operating after termination of contractual relations.

The Court noted that Indian law does not prohibit every contractual restriction. A covenant intended to facilitate and promote a commercial relationship during the life of a contract cannot automatically be characterized as a restraint of trade. The restriction in the present case merely prevented GBC from dealing with competing beverages while enjoying the benefits of the Coca Cola franchise arrangement. Since the covenant operated only during the subsistence of the agreement and not thereafter, it was held not to offend Section 27.

In this context, the Court extensively relied upon Niranjan Shankar Golikari v. Century Spinning and Manufacturing Co. Ltd., : (1967) 2 SCR 378, where a negative covenant operative during the term of employment was upheld. The Court emphasized that restraints operative during the currency of a contractual relationship stand on a different footing from post-termination restraints.

The Court also referred to Ehrman v. Bartholomew, (1927) W.N. 233, and other authorities discussing the circumstances in which negative covenants may be enforced through injunctions. It further considered decisions such as V.B. Rangaraj v. V.B. Gopalakrishnan, (1992) 1 SCC 160, Lalbhai Dalpatbhai & Co. v. Chittaranjan Chandulal Pandya, AIR 1966 Guj 189, and Modern Food Industries India Ltd. v. Shri Krishna Bottlers (P) Ltd., AIR 1984 Del 119 while examining contractual obligations and commercial restraints.

Another important aspect of the judgment concerns equitable conduct. The Court observed that a party seeking equitable relief must itself act fairly. The material before the Court indicated that control of GBC had been transferred without complying with contractual obligations and without obtaining Coca Cola’s consent. The Court found that GBC had, prima facie, acted inconsistently with the agreement. Consequently, it could not successfully invoke equitable considerations to seek vacation of the injunction.

The Court further held that the balance of convenience favoured Coca Cola. If Pepsi-controlled interests were permitted to use the bottling facilities for competing products, Coca Cola would suffer loss of market share, goodwill, and competitive advantage. Such losses would be difficult to quantify and compensate through damages. In contrast, any losses suffered by GBC could be measured and compensated monetarily if the suit ultimately failed.

The Court therefore concluded that Coca Cola had established a strong prima facie case, that the balance of convenience lay in its favour, and that irreparable injury would result if interim protection were denied. The contractual restriction was found to be a legitimate commercial covenant rather than an unlawful restraint of trade.

Final Decision of the Court

The Supreme Court upheld the interim injunction granted by the Bombay High Court and dismissed the challenge mounted by Gujarat Bottling Co. Ltd. and the other appellants.

The Court held that Coca Cola had successfully established a prima facie right to protection of the negative covenant contained in the bottling agreement. The balance of convenience favoured continuation of the injunction, and the potential injury to Coca Cola’s goodwill, market position, and commercial interests could not be adequately compensated by damages.

Consequently, the interim injunction restraining the use of GBC’s facilities for manufacturing, bottling, selling, or distributing competing beverages during the relevant period was allowed to continue, and the appeals were dismissed.

Point of Law Settled

The judgment authoritatively establishes that a negative covenant operating during the subsistence of a commercial contract is generally enforceable and does not necessarily amount to a restraint of trade prohibited by Section 27 of the Indian Contract Act, 1872.

The decision further clarifies that courts may grant interim injunctions to enforce such negative stipulations under Section 42 of the Specific Relief Act, 1963 where the plaintiff demonstrates a prima facie case, balance of convenience, and likelihood of irreparable injury.

The ruling also reinforces the principle that injunctions are equitable remedies and that the conduct of the parties including those seeking vacation of injunction is also a significant consideration in determining whether such relief should be granted, continued, or vacated. The judgment remains a leading precedent in franchise disputes, commercial contracts, licensing arrangements, restrictive covenants, and interim injunction jurisprudence in India.

Case Details:

Title of the Case: Gujarat Bottling Co. Ltd. and Others Vs. Coca Cola Co. and Others

Date of Judgment/Order: 04 August 1995

Case Number: Civil Appeals Nos. 6839-6840 of 1995

Citation: 1995 AIR 2372

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice S.C. Agrawal and Justice S. Saghir Ahmad

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Headnote of the Judgment:

Gujarat Bottling Co. Ltd. and Others v. Coca Cola Co. and Others, Supreme Court of India, Civil Appeals Nos. 6839-6840 of 1995, decided on 04.08.1995. The appeals challenged an interim injunction granted by the Bombay High Court restraining the use of Gujarat Bottling’s facilities for manufacturing and marketing competing beverages after control of the company shifted to interests associated with Pepsi. The Supreme Court upheld the injunction, holding that the negative covenant contained in the bottling and franchise agreement was enforceable during the subsistence of the contract and did not violate Section 27 of the Contract Act. The Court further held that Coca Cola had established a prima facie case, balance of convenience, and irreparable injury warranting continuation of the interim injunction.

SC-.Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd.

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd.: The Supreme Court on Deceptive Similarity and Invented Words in Trade Mark Law

Introduction

In the world of trade marks, two of the most frequently contested questions are: when are two marks so similar that one is likely to be confused with the other, and when can a newly coined word claim the status of an "invented word" eligible for trade mark protection? These questions are not merely academic — they determine whether a business gets to keep its trade mark on the register or must surrender it. The Supreme Court of India addressed both these questions with clarity and precision in its landmark decision in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., decided on September 8, 1969. The judgment, delivered by a Bench of Justice J.C. Shah and Justice V. Ramaswami, arose from a rectification proceeding in which a well-known Swiss pharmaceutical company sought the removal of an Indian company's trade mark from the Register of Trade Marks on the ground that it was deceptively similar to its own registered mark. The case remains, to this day, one of the foundational authorities on the test of deceptive similarity between word marks and the meaning of "invented word" under Indian trade mark law.

Factual and Procedural Background

F. Hoffmann-La Roche & Co. Ltd. is a company incorporated under the laws of Switzerland and has been engaged in the manufacture and sale of pharmaceutical and chemical products on a global scale. On December 2, 1946, the company applied for the registration of its trade mark "PROTOVIT" in India. The application was granted and the mark was registered in Class V in respect of pharmaceutical preparations for human use, veterinary use, infants' foods, and invalids' foods. The company had been using this mark on multi-vitamin preparations — both in liquid and tablet forms — and its goods had been sold under that mark at least since the year 1951. The mark "PROTOVIT" had, therefore, built up a reputation and consumer recognition over several years.

Geoffrey Manner & Co. Pvt. Ltd. is a company incorporated in India under the Companies Act and is also engaged in the manufacture and sale of pharmaceutical products. On January 28, 1957 — over a decade after the registration of "PROTOVIT" — Geoffrey Manner applied for registration of its trade mark "DROPOVIT" in respect of medicinal and pharmaceutical preparations and substances. The application was registered. Unfortunately for Hoffmann-La Roche, the advertisement of Geoffrey Manner's application for registration escaped their notice, and they did not oppose it at the time of registration — a step that, had they taken it, could have nipped the dispute in the bud.

It was only by a letter dated March 4, 1958 from Messrs Voltas Ltd. — the agents of Hoffmann-La Roche in India — that the company's attention was drawn to Geoffrey Manner's trade mark "DROPOVIT." Negotiations followed between the parties, but on March 19, 1958, Geoffrey Manner wrote back refusing to alter its trade mark. Having failed to resolve the matter through negotiation, Hoffmann-La Roche filed an application on January 21, 1959 before the Trade Marks Registry for rectification of the Register by removing the trade mark "DROPOVIT." The ground urged was that the mark "DROPOVIT" so nearly resembled the already-registered mark "PROTOVIT" as to be likely to deceive or cause confusion — which is the standard test for deceptive similarity. On March 9, 1960, Hoffmann-La Roche applied for amendment of the rectification application, adding a further ground — that "DROPOVIT" was not an "invented word" and therefore not entitled to registration. This amendment was allowed by the Registrar.

The Joint Registrar of Trade Marks rejected the rectification application on August 5, 1961, holding that "DROPOVIT" was not deceptively similar to "PROTOVIT" and that, taken as a whole, "DROPOVIT" was not a descriptive word. Hoffmann-La Roche appealed to the Bombay High Court. A learned Single Judge, Mr. Justice Tarkunde, dismissed the appeal on December 7, 1962. Hoffmann-La Roche then preferred an appeal under the Letters Patent, which was heard by a Division Bench consisting of Chief Justice Chainani and Justice Mody. This appeal too was dismissed on August 17, 1964. An important development during the hearing before the Division Bench was that Geoffrey Manner restricted the designation of its goods under the mark "DROPOVIT" to "medicinal and pharmaceutical preparations and substances containing principally vitamins." Hoffmann-La Roche then came to the Supreme Court by certificate.

The Dispute

The dispute before the Supreme Court centred on two distinct but connected questions. The first and primary question was whether the trade mark "DROPOVIT" was deceptively similar to the earlier-registered trade mark "PROTOVIT" — that is, whether it so nearly resembled "PROTOVIT" as to be likely to deceive or cause confusion among consumers. This question was governed by Section 12(1) of the Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958), which prohibits the registration of a trade mark that is identical with or deceptively similar to a trade mark already registered in the name of a different proprietor in respect of the same or descriptive goods. Section 2(1)(d) of the same Act defines "deceptively similar" to mean a mark that so nearly resembles another as to be likely to deceive or cause confusion.

The second question was whether "DROPOVIT" was an "invented word" within the meaning of Section 9(1)(c) of the Act — which is one of the essential particulars required for registration of a trade mark in Part A of the Register — or whether it was merely a combination of common English words and therefore descriptive, disqualifying it from protection as an invented word.

Reasoning and Analysis of the Judges

The Supreme Court began its analysis by setting out the governing legal framework. It noted that even though the application for rectification was filed on January 21, 1959 — before the Trade and Merchandise Marks Act, 1958 came into operation — it was not disputed by either party that by virtue of Section 136(3) of the 1958 Act, the decision of the case was governed by the provisions of that Act. The court then proceeded to consider the two questions in turn.

On the question of deceptive similarity, the court first articulated the fundamental principle: it is not necessary that a mark should be intended to deceive or intended to cause confusion. What matters is the probable effect of the mark on ordinary customers — whether the customers are likely, in the normal course of commerce, to be deceived or confused. The court drew upon a rich body of English trade mark jurisprudence to frame the correct tests.

The court referred to Parker-Knoll Ltd. v. Knoll International Ltd., 1962 RPC 265, where Lord Denning had drawn a clear distinction between "deceiving" a person and "causing confusion." To deceive is to make a false representation — to tell a lie, in effect, whether or not intentionally — that causes someone to believe something false. To cause confusion, however, does not require any false representation at all. A person may be confused without being deceived, simply because they lack the knowledge or ability to distinguish between two true but similar things, or because they do not take the trouble to do so. This distinction is important because the trade mark law is concerned with both forms of mischief.

The court then cited the classic formulation of the test for comparing two word marks, laid down by Lord Parker in Pionotist Co. Ltd.'s Application, 23 RPC 774. According to this test, the two marks must be judged both by their look and by their sound; the nature of the goods to which they are applied must be considered; the kind of customer likely to buy those goods must be assessed; and all surrounding circumstances must be weighed, including what is likely to happen if each mark is used in the normal way for the respective owner's goods. If, considering all these factors, the conclusion is that there will be confusion in the public mind — meaning not necessarily that one trader will be harmed and the other will gain illicit benefit, but that the public will be confused and led to confuse the goods — then registration must be refused.

The court then applied what is known as the visual and phonetic test — that marks must be assessed both for how they look and for how they sound. It referred to the decision of the House of Lords in Aristoc Ltd. v. Rysta Ltd., 62 RPC 65, a case concerning the resemblance between "Aristoc" and "Rysta." Viscount Maugham in that case adopted the exposition of Lord Justice Luxmoore in the Court of Appeal, which the Supreme Court found to be the correct statement of law: the test of resemblance between two marks must not be conducted by meticulous comparison letter by letter and syllable by syllable, as pronounced by a teacher of elocution. The comparison must take into account imperfect recollection, careless pronunciation, and the habits of ordinary buyers and shop assistants. This is because it is the person who knows only one mark and has an imperfect recollection of it — not the person familiar with both marks — who is likely to be deceived or confused.

The court further laid down the important principle that marks must always be compared as wholes. It is wrong to isolate a portion of a word, note that that portion differs from the corresponding portion of the other mark, and then conclude that there is no similarity. The true test is whether the totality of the proposed trade mark is such as to be likely to cause deception or confusion in the minds of persons accustomed to the existing mark. On this point, the court cited Tokalon Ltd. v. Davidson & Co., 32 RPC 133, where Lord Johnston had observed that the comparison is not like a microscopic analysis of letters — it must be from the general and even casual point of view of a customer walking into a shop.

Applying these principles to the two marks "PROTOVIT" and "DROPOVIT," the Supreme Court conducted a careful analysis. Each of the two words consists of eight letters. The last three letters — "VIT" — are common to both. However, the court noted that this common suffix "VIT" is a well-known and widely-used abbreviation in the pharmaceutical trade to denote vitamin preparations. The affidavit of one Frank Murdoch, filed in the proceedings on January 11, 1961, revealed that there were as many as 57 trade marks on the Register of Trade Marks with the common suffix "VIT," all indicating that the goods in question were vitamin preparations. The court concluded that the terminal syllable "VIT" was both descriptive and common to the trade, and therefore lesser weight was to be attached to it when comparing the two marks.

When greater attention is paid to the uncommon elements of the two words — the letters that differ between them — the picture becomes clear. In "DROPOVIT," the uncommon portion comprises the letters "D-R-O-P-O," while in "PROTOVIT," the uncommon portion is "P-R-O-T-O." The court observed that the letters "D" and "P" in "DROPOVIT" and the corresponding letters "P" and "T" in "PROTOVIT" cannot possibly be slurred over in pronunciation — they produce quite distinct sounds. Taking the words as wholes and considering both their visual appearance and their phonetic sound, the court was satisfied that the words were so dissimilar that there was no reasonable probability of confusion between them, either visually or phonetically.

The court also took into account the specific context in which the goods bearing these marks would be purchased. Since both marks were being applied to vitamin preparations — pharmaceutical products — most customers would obtain a prescription from a doctor and present it to a pharmacist or chemist before making a purchase. The court reasoned that in such a situation, except in cases where the doctor's handwriting was very bad or illegible, the chance of confusion was remote. Moreover, given that as many as 57 trade marks on the Register shared the "VIT" suffix, an average customer familiar with vitamin products would naturally exercise greater care and attention when purchasing such goods, knowing that the "VIT" suffix appears in a large number of trade marks.

An additional factor reinforcing this conclusion was the regulatory framework under the Drug Rules, 1945. Under Rule 61(2) of those Rules, vitamin preparations fall under item 5 in Schedule C-(1), and a licence is required to stock and retail such preparations. This means that the goods bearing either of the two rival trade marks would be sold only by licensed dealers — not at any general shop. The court held that this fact of the seller being a licensed dealer further reduced the possibility of confusion to a considerable extent, since a licensed pharmacist would be expected to know the difference between "PROTOVIT" and "DROPOVIT."

Weighing all these circumstances together — the dissimilarity in the uncommon parts of the two words, the descriptive and common nature of the "VIT" suffix, the prescription-based purchase of such products, the prevalence of "VIT"-suffixed trade marks in the pharmaceutical register, and the requirement of a licensed dealer for sale — the court concluded that there was no real, tangible danger of confusion if "DROPOVIT" was allowed to continue on the Register. The Joint Registrar of Trade Marks and the Bombay High Court were both right in dismissing the rectification application on this ground.

The court then turned to the second question — whether "DROPOVIT" was an "invented word." Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958 provides that a trade mark is eligible for registration in Part A of the Register if it contains or consists of one or more invented words. Hoffmann-La Roche argued that "DROPOVIT" was nothing more than a combination of three ordinary English words — "DROP," "OF" (with "of" misspelled as "o"), and "VIT" (shorthand for "Vitamins") — joined together. The argument was that "DROPOVIT" simply meant "Drop of Vitamins" and was therefore not an invented word but a descriptive combination of common words.

To determine what constitutes an "invented word," the court turned to the celebrated Diabolo case, 25 RPC 565, where Parker J. had explained that to be an invented word within the meaning of the Act, a word must not only be newly coined — in the sense of not being already current in the English language — but must also be such that it does not convey any meaning, or at least any obvious meaning, to ordinary English-speaking persons. It must be a word that has no meaning or no obvious meaning until a meaning has been assigned to it. The Privy Council in De Cordova and Others v. Vick Chemical Co., 68 RPC 103 had described this formulation by Parker J. as "the best standing interpretation," and the Supreme Court adopted it.

The court then asked whether the word "DROPOVIT" would strike an ordinary English-speaking person as meaning "Drop of Vitamin." In addressing this, the court made a telling observation: the original rectification application filed by Hoffmann-La Roche on January 21, 1959 did not contain the ground that "DROPOVIT" was descriptive. This ground was added only by amendment on March 9, 1960 — more than a year later. The court drew the inference that the word "DROPOVIT" had not struck even the legal advisers of Hoffmann-La Roche — Messrs Depenning and De-Penning, who were experienced attorneys — as being descriptive when they first filed the application. Further, Mr. Justice Tarkunde himself had remarked, at the hearing before the Single Judge, that when the case was first opened before him, he did not understand that "DROPOVIT" meant "Drop of Vitamin" until the explanation was given to him. These two facts — that experienced lawyers did not initially perceive the word as descriptive, and that even a learned judge did not spontaneously understand its purported meaning — powerfully supported the conclusion that "DROPOVIT" did not, as a matter of first impression, convey any obvious meaning to ordinary persons.

The court acknowledged that "DROPOVIT" had been coined out of words commonly used by and known to ordinary English-speaking persons. But the critical point was that the resulting combination produced a new, newly coined word that did not remind an ordinary person of the original component words — unless they were specifically told of the derivation or unless they devoted deliberate thought to it. This is precisely the kind of word that qualifies as an "invented word." The court therefore held that "DROPOVIT" was an invented word, entitled to be registered as a trade mark, and was not liable to be removed from the Register.

Final Decision of the Court

The Supreme Court dismissed the appeal with costs. The court upheld the findings of the Joint Registrar of Trade Marks and the Bombay High Court (both the Single Judge and the Division Bench), confirming that "DROPOVIT" was neither deceptively similar to "PROTOVIT" nor a non-invented descriptive word. The trade mark "DROPOVIT" was held entitled to remain on the Register of Trade Marks, limited to medicinal and pharmaceutical preparations and substances containing principally vitamins — the restriction voluntarily offered by Geoffrey Manner before the Division Bench of the Bombay High Court.

Point of Law Settled

This judgment settled several important points of trade mark law. First, the test for deceptive similarity between two word marks is not a microscopic, letter-by-letter comparison but a holistic assessment — the marks must be compared as wholes, from the visual and phonetic point of view, having regard to the probable effect on ordinary consumers with imperfect recollection. Second, elements that are descriptive and common to the trade — such as the suffix "VIT" for vitamin preparations — carry lesser weight in the comparison and must not be allowed to dominate the analysis. Third, the nature of the goods and the manner of their purchase — such as sale through licensed pharmacists on prescription — are highly relevant factors in assessing the likelihood of confusion. Fourth, an invented word need not be completely meaningless; it suffices if the word, as a newly coined combination, does not convey any obvious meaning to ordinary persons at first impression. If the resulting combination does not readily remind an ordinary person of the component words from which it is formed unless they think hard about it or are told, the word qualifies as an invented word under Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958.

Case Details

Title: F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd.

Date of Order: September 8, 1969

Case Number: Civil Appeal No. 1330 of 1966

Neutral Citation: MANU/SC/0302/1969; Equivalent Citations: AIR 1970 SC 2062; (1969) 2 SCC 716; [1970] 2 SCR 213; 1982 (2) PTC 335 (SC); 1971 (73) BOMLR 119; 1971 MhLJ 354

Name of Court: Supreme Court of India

Name of Hon'ble Judges: Justice J.C. Shah and Justice V. Ramaswami

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Holistic Test for Trade Mark Comparison: Supreme Court's Ruling in PROTOVIT vs DROPOVIT Case
Trade Mark Rectification and Deceptive Similarity: Lessons from F. Hoffmann-La Roche v. Geoffrey Manner
When Is a Coined Word an "Invented Word" Under Trade Mark Law? Supreme Court Settles the Law
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Headnote

The Supreme Court of India, in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., Civil Appeal No. 1330 of 1966, decided on September 8, 1969, reported at AIR 1970 SC 2062 and (1969) 2 SCC 716, held that the trade mark "DROPOVIT" was neither deceptively similar to the registered trade mark "PROTOVIT" nor a non-invented descriptive word, and accordingly dismissed the rectification application. The court laid down that the test of deceptive similarity requires a holistic comparison of two marks — both visually and phonetically — taking into account the probable effect on ordinary consumers with imperfect recollection, the nature and class of goods, the mode of purchase, and the regulatory environment. Elements that are descriptive and common to the trade must receive lesser weight in the comparison. Since the suffix "VIT" appeared in as many as 57 registered trade marks for vitamin preparations and was thus common to the pharmaceutical trade, the comparison between "PROTOVIT" and "DROPOVIT" had to focus on the dissimilar elements, which were found to be clearly distinct both in appearance and sound. The court further held that a word qualifies as an "invented word" under Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958 if, as a newly coined combination, it does not convey any obvious meaning to an ordinary English-speaking person at first impression — even if it is composed of common English words — so long as the composite word does not readily reveal its component parts without deliberate thought. The appeal was dismissed with costs.

Thursday, May 28, 2026

SC-T.V. Venugopal v. Ushodaya Enterprises Ltd

Can a Common Word Become a Protected Trademark?

Introduction

The intersection of language, commerce, and intellectual property often gives rise to disputes of profound complexity. When a word drawn from everyday vernacular acquires such deep commercial resonance that it becomes synonymous with a business enterprise, its unauthorised use by another trader raises questions that go to the heart of fair competition and consumer protection. The Supreme Court of India's judgment in T.V. Venugopal v. Ushodaya Enterprises Ltd. and Anr., decided on 3rd March 2011, is a landmark ruling that grapples with precisely these tensions. The case explores whether the word 'Eenadu', a common word in the Telugu language meaning 'Today' or 'This Day', could be monopolised by a newspaper house, and whether its use by an incense stick manufacturer in a different state and a different product category amounted to the tort of passing off.

The judgment, delivered by the Supreme Court affirmed the High Court's ruling in favour of the respondent newspaper company, holding that the adoption of the mark 'Eenadu' by the appellant was fraudulent and mala fide from inception, designed to ride upon the extraordinary goodwill and reputation that the Respondent company had built over decades in the State of Andhra Pradesh.

The case is essentially about this: if a word has become so strongly associated with one business in the minds of the public in a particular region, can another trader use that same word even for an entirely different product? The Supreme Court's answer, in the specific facts of this case, was an emphatic no.

Factual and Procedural Background

The appellant, T.V. Venugopal, was the sole proprietor of a Bangalore-based firm called Ashika Incense Incorporated, engaged in the manufacture and sale of incense sticks commonly known as agarbathis. He started his business in the year 1988 and, according to his own account, adopted the trade mark 'Ashika's Eenadu' for his product. He claimed that the word 'Eenadu' in Kannada language means 'this land' and in Telugu it means 'Today', and that he adopted it to signify the daily use of agarbathis, which are commonly used in daily religious worship.

The appellant applied for registration of his trade mark label on 10th February 1994, bearing Application No. 619177. He further made an application to the Registrar of Trade Marks for a certificate under the proviso to Section 45(1) of the Copyright Act, 1957, and obtained the certificate on 7th March 1996. An application for registration of copyright was subsequently made on 14th March 1997. The appellant's business grew substantially, and by the time of the appeal before the Supreme Court, his annual turnover from agarbathi sales was approximately Rupees Eleven Crores per annum.

On the other side, the respondent, Ushodaya Enterprises Ltd., was an Andhra Pradesh-based media and business conglomerate. It was the publisher of the Telugu newspaper 'Eenadu', one of the largest regional dailies in India, and was reportedly the largest-circulated newspaper in Andhra Pradesh. The respondent company also had interests in television broadcasting under the ETV brand, along with other business activities.

In 1995, the respondent company served a cease and desist notice upon the appellant. The appellant replied on 8th March 1995. Despite this notice, the appellant continued to sell his agarbathis, and his sales reportedly grew from approximately Rupees Two Crores to close to Rupees Ten Crores in the years following the notice, largely from markets within the State of Andhra Pradesh. In 1999, the respondent company filed a civil suit [O.S. No. 555 of 1999] in the Court of Second Additional Chief Judge, City Civil Court, Hyderabad, seeking an injunction against the appellant for infringement of copyright and passing off of the trade mark 'Eenadu'.

On 24th November 1999, the trial court granted an ex-parte ad interim injunction restraining the appellant from using the word 'Eenadu'. This was confirmed on 27th December 1999. The High Court of Andhra Pradesh, on an appeal by the appellant, suspended the injunction but permitted the appellant to sell only finished stock worth Rupees One Crore and goods in the process of manufacture worth Rupees 78 Lakhs.

The trial court partially decreed the suit on 24th July 2000, injuncting the appellant from using the word 'Eenadu' only within the State of Andhra Pradesh, while permitting its use elsewhere in India. Both parties appealed. A learned Single Judge of the Andhra Pradesh High Court, on 29th December 2000, allowed the appellant's appeal and dismissed the respondent's appeal. Aggrieved, the respondent company filed Letters Patent Appeals before a Division Bench of the Andhra Pradesh High Court, which allowed the appeals on 15th June 2001, fully decreeing the suit in favour of the respondent company. The appellant then approached the Supreme Court of India, leading to the Civil Appeal Nos. 6314-15 of 2001.

The Dispute

The central question before the Supreme Court was whether the use of the word 'Eenadu' by the appellant on his agarbathi products amounted to passing off the goods of the respondent company, even though the two businesses were operating in entirely different product categories , one being a newspaper and media house and the other being a manufacturer of incense sticks.

The appellant's core argument was that 'Eenadu' is a common Telugu word meaning 'Today' or 'This Day', and that no trader can claim a monopoly over such a commonly understood, descriptive, and generic word. He pointed to the widespread use of the word 'Eenadu' by numerous third parties across Andhra Pradesh and Karnataka , for products like turmeric powder, matchsticks, playing cards, ayurvedic soaps, dresses, chilly powder, washing powder, coffee, tobacco, and even a Telugu feature film released by UTV Productions , to demonstrate that the word had not acquired exclusivity in favour of any single trader. He argued that the mark at best had secondary meaning only in relation to newspapers, not across all product categories, and certainly not in relation to agarbathis, for which the word 'Eenadu' was entirely arbitrary and had no descriptive significance whatsoever.

The appellant also raised important procedural and doctrinal challenges. He contended that the suit was governed by the older Trade and Merchandise Marks Act, 1958, and not the Trade Marks Act, 1999, since the litigation was already pending when the new Act came into force on 15th September 2003. This was relevant because certain advanced doctrines such as the protection of well-known marks and dilution, which are statutorily recognised under the Trade Marks Act, 1999, were not part of the statutory framework under the old law. He further argued that the respondent company had been aware of the appellant's use since at least February 1995 but filed the suit only in 1999, indicating either acquiescence or undue delay, which should disentitle it to relief.

The respondent company countered that 'Eenadu' had acquired an extraordinary secondary meaning and was so thoroughly associated with the respondent company's business in the minds of the Telugu-speaking public of Andhra Pradesh that its use by anyone else for any product would cause confusion as to source, ride upon the respondent's goodwill, and damage its reputation. The respondent submitted that the group was collectively known as the 'Eenadu Margadarshi Group', that the ETV television channel was also part of the 'Eenadu' family of enterprises, and that the word 'Eenadu' had become a household name in Andhra Pradesh in the widest possible sense.

Reasoning and Analysis of the Court:

The Supreme Court's analysis drew upon a rich tapestry of Indian and English decisions on the law of passing off, secondary meaning, goodwill, and the scope of protection available to well-known marks. What follows is a discussion of how the court reasoned through the legal issues with reference to the authorities it considered.

On the Nature of the Mark and Secondary Meaning: The court acknowledged that 'Eenadu' is a descriptive word in the Telugu language, meaning 'Today'. However, the court held that even a descriptive word can acquire a secondary meaning through long and extensive use, such that in the minds of consumers it becomes identified with a particular trader rather than with its literal meaning. This principle was drawn from the celebrated English case of Reddaway and Co. and Anr. v. Banham and Co. and Anr., (1895-99) All ER 133, where the House of Lords held that the term 'camel hair' had acquired a secondary meaning in the trade to signify goods manufactured by the plaintiff, even though its primary meaning was merely descriptive of the material. The court in Venugopal applied this reasoning to hold that in the State of Andhra Pradesh, 'Eenadu' had come to mean not merely 'Today' but specifically the products and services emanating from the respondent company's house.

Similarly, the court relied on the passage from Halsbury's Laws of England, Volume 48, 4th Edition, page 190, which states that it is possible for a wholly descriptive word to become so associated with one trader's goods that its use by another would amount to a misrepresentation that the goods are those of the first trader. It also noted the position in McCarthy on Trademarks and Unfair Competition, Volume 2, 3rd Edition, paragraph 12.5(2), which holds that a user of a generic term must prove some false or confusing usage above and beyond the mere use of the generic name to obtain relief in a passing off claim.

On the Classic Elements of Passing Off: The court extensively cited the three-part test for passing off as laid down by the House of Lords in Reckitt and Colman Products Ltd. v. Borden Inc. and Ors., (1990) 1 All ER 873. This test requires the plaintiff to establish: (i) that its goods have acquired a reputation or goodwill in the market; (ii) that the defendant has made a misrepresentation to the public, whether intentional or not, which is likely to lead the public to believe that the defendant's goods are those of the plaintiff; and (iii) that the plaintiff has suffered or is likely to suffer damage from such erroneous belief. The court held that all three elements were satisfied in the present case, particularly given the extraordinary reputation of 'Eenadu' in Andhra Pradesh and the fact that the appellant had deliberately adopted the same word, same artistic script, same font, and same method of writing the name.

The court also referred to the basic principle of passing off as stated in Perry v. Truefitt, (1842) 6 Beav. 66, 73, where Lord Langdale summarised the law in one sentence: 'A man is not to sell his own goods under the pretence that they are the goods of another man.' This foundational principle was confirmed as the bedrock of the respondent's case.

On Goodwill Extending Beyond the Direct Field of Activity: One of the most significant aspects of the case was the argument that the businesses of the appellant and the respondent were entirely different , one sold agarbathis and the other published newspapers and ran television channels. The appellant contended that there could be no passing off when there is no common field of activity. The court rejected this rigid interpretation by relying on several authorities.

In Laxmikant V. Patel v. Chetanbhai Shah and Anr., (2002) 3 SCC 65, this Court had held that the law does not permit any person to carry on business in such a way as to persuade customers into believing that the goods or services belong to someone else, whether the deception is fraudulent or not. The court noted that the propensity of diverting customers and causing injury to the original trader was sufficient.

The court referred to Satyam Infoway Ltd. v. Sifynet Solutions (P) Limited, (2004) 6 SCC 145, where it had been held that a passing off action is available to the owner of a distinctive trademark to safeguard against the defendant deceiving the public into thinking the defendant's goods are the plaintiff's. The court noted the importance of prior use and the volume of sales and advertising in establishing reputation.

The court drew upon the principle of extended passing off from the Champagne cases in English law. In Taittinger and Ors. v. Allbev Limited and Ors., (1994) 4 All ER 75, the English Court of Appeal granted an injunction to champagne houses restraining the defendant from using the word 'champagne' in connection with elderflower-based drinks, on the ground that permitting such use would erode the distinctiveness of the word 'champagne' and damage the goodwill of the champagne houses. The court held that erosion of distinctiveness itself constitutes a form of damage to goodwill, even without direct competition in the same field.

The landmark ruling in Harrods Limited v. R. Harrod Limited, (1924) RPC 74, was also cited to show that a well-known 'fancy name' cannot be adopted by any person if its only purpose is to pass off as the well-known business. In that case, a company formed for moneylending was restrained from using the name 'R. Harrod Limited' because the name 'Harrods' was already a famous name in commerce and the adoption could lead to deception even though the fields of business were different.

The principle that a well-known name like Benz, Mahindra, Honda, or Harrods enjoys broad protection regardless of the field of activity was underscored by reference to Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan, AIR 1994 Delhi 239. In that case, the Delhi High Court had held that even a small trader who uses the name 'Benz' for unrelated goods like undergarments commits a dilution of a world-famous mark and cannot be permitted to do so. The court held that the Trade Mark law is not intended to protect those who deliberately take the benefit of someone else's reputation.

In Honda Motors Company Limited v. Charanjit Singh and Ors., (2002) 101 DLT 359, the Delhi High Court had held that the globally renowned mark 'Honda', used by the defendant for pressure cookers, would mislead the public into believing that the pressure cookers also came from the House of Honda, and this use was held to dilute and debase the goodwill of the plaintiff. The Supreme Court found this reasoning applicable to the Eenadu situation in Andhra Pradesh.

The court also referred to Mahendra and Mahendra Paper Mills Limited v. Mahindra and Mahindra Limited, (2002) 2 SCC 147, where this Court had held that the name 'Mahindra' had acquired distinctiveness and a secondary meaning over five decades such that any attempt by another person to use it would create an impression of connection with the Mahindra group. The court confirmed that this test was applicable to the facts in the present case as well.

On Dishonest Adoption: A critical finding of the Supreme Court was that the appellant's adoption of the word 'Eenadu' was not innocent. The court noted several indicia of dishonest conduct. First, the appellant, a Karnataka-based company, chose to use the exact same artistic script, font, and method of writing the word 'Eenadu' as used by the respondent company's newspaper , a fact that was regarded as no coincidence. Second, after adopting the name 'Eenadu', the appellant's agarbathi sales from Andhra Pradesh shot up to account for 90% of his total business — suggesting that the mark's commercial power in that state was being harvested by the appellant. Third, the appellant applied for registration of the trade mark 'Eenadu' not merely for incense sticks but across as many as 34 classes of goods under the Trade Marks Act, which revealed an intent far beyond the legitimate requirements of his agarbathi business. The court relied on Midas Hygiene Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors., (2004) 3 SCC 90, which had held that where the adoption of a mark is itself dishonest, the grant of an injunction becomes necessary and mere delay in bringing the action does not defeat the plaintiff's claim.

The court also discussed the ruling in Madhubhan Holiday Inn v. Holiday Inn Inc., (2002) 100 DLT 306 (DB), In that case, the Division Bench had held that the adoption of the words 'Holiday Inn' was ex facie fraudulent and mala fide, made for the purpose of riding on the global reputation of the respondent. The Supreme Court found striking parallels between that case and the present one.

On Delay and Acquiescence: The appellant argued that the respondent company knew of his use since at least 1995 but filed the suit only in 1999, and that this delay and acquiescence should disentitle it to equitable relief. The court, relying on M/s. Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company and Anr., (1997) 1 SCC 99, held that passing off is a continuing tort, and therefore at every moment the wrongful use continues, a fresh cause of action arises. As the act of passing off is a recurring act of deceit, Section 22 of the Limitation Act, 1963 provides that in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the tort's continuation. The court in Bengal Waterproof had held that bar under Order 2 Rule 2(3) of the Code of Civil Procedure also cannot be invoked in cases of continuous or recurring causes of action.

The court also relied on Ramdev Food Products (P) Limited v. Arvindbhai Rambhai Patel and Ors., (2006) 8 SCC 726, to clarify the principle of acquiescence, which requires positive acts of assent or 'laying by' and not merely silence or inaction. Since the respondent company had not positively assented to the appellant's continued use, there was no acquiescence. Similarly, Heinz Italia and Anr. v. Dabur India Limited, (2007) 6 SCC 1 was cited to reiterate that once there is a dishonest intention on the part of the defendant, an injunction should ordinarily follow and mere delay does not defeat the plaintiff's case.

On Use of Wikipedia as Evidence: An interesting evidentiary point arose in this case. The respondent company produced printouts from Wikipedia dated 13th April 2009 to show that 'Eenadu' was a household name. The appellant challenged this, relying on two American judicial decisions: Taylor Mary Campbell v. Secretary of Health and Human Services, 69 Fed. Cl. 775 (2006), decided by the United States Court of Federal Claims, and Lamilem Badasa v. Michael B. Mukasey, 540 F.3d 909, decided by the United States Court of Appeals, both of which had held that Wikipedia does not have evidentiary value in court proceedings. While the Supreme Court did not expressly rule on whether Wikipedia was admissible in Indian courts, it implicitly proceeded on the basis of the totality of facts and findings recorded by the courts below rather than on the Wikipedia evidence alone.

Final Decision of the Court

The Supreme Court dismissed the appeals filed by T.V. Venugopal and confirmed the judgment of the Division Bench of the Andhra Pradesh High Court. The court made the following principal findings and conclusions. The respondent company's mark 'Eenadu' had acquired extraordinary reputation and goodwill in the State of Andhra Pradesh, and was so thoroughly identified with the respondent company that it effectively meant, in popular understanding, the products and services of the respondent company. The appellant could therefore not be termed an honest concurrent user of the mark. The adoption of the word 'Eenadu' by the appellant was ex facie fraudulent and mala fide from inception, designed to ride upon the respondent's goodwill. Permitting the appellant to continue would amount to the court placing a seal of approval on dishonest and illegal conduct. The appellant's continued use of the mark 'Eenadu' in Andhra Pradesh was calculated to make consumers believe that the agarbathis originated from the respondent company's house, amounting to fraud on consumers and an invasion of the respondent's proprietary rights. Such use would also erode the extraordinary goodwill acquired by the respondent over decades. Honesty and fair play ought to be the foundation of trade and business. Accordingly, the court fully upheld the injunction granted by the Division Bench of the Andhra Pradesh High Court restraining the appellant from using the word 'Eenadu' for his agarbathi products.

Point of Law Settled

This judgment settles and clarifies several important principles of intellectual property and unfair competition law in India. Even a common, descriptive, or generic word can acquire such a powerful secondary meaning through long and extensive use in a particular territory that it becomes exclusively associated with one trader in the minds of the public in that region. When this happens, any other trader's use of the same word, even for entirely different goods, can constitute the tort of passing off, provided the necessary elements of goodwill, misrepresentation, and damage are established.

The court affirmed that a passing off action does not require the plaintiff and defendant to be operating in the same field of business. The modern law of passing off is broad enough to protect a trader's goodwill even against use in an unrelated product category, provided the plaintiff's mark is sufficiently well known and the use by the defendant is such as to suggest a false association or origin.

The court also clarified that dishonest adoption of a mark is a weighty factor that tilts the balance decisively in favour of granting an injunction, and that mere delay in instituting legal proceedings does not defeat the plaintiff's case where the wrong being committed is a continuing one. The court further confirmed that in cases of continuing torts like passing off, a fresh cause of action accrues at every moment of the continued wrong, and the limitation provisions of Section 22 of the Limitation Act, 1963 apply.

Finally, the judgment draws a practical distinction between the law of passing off applicable under the Trade and Merchandise Marks Act, 1958, and the newer statutory concept of dilution under the Trade Marks Act, 1999, making clear that even under the old law, strong enough goodwill in a distinctive name justifies protection across product categories through the common law remedy of passing off, without needing to invoke the statutory dilution provisions of the new Act.

Case Title: T.V. Venugopal v. Ushodaya Enterprises Ltd. and Anr.

Date of Order: 3rd March 2011

Case Number: Civil Appeal Nos. 6314-15 of 2001

Citation: (2011) 4 SCC 85

Court: Supreme Court of India

Coram: Justice Dalveer Bhandari and Justice K.S. Panicker Radhakrishnan

Disclaimer: Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Headnote

Trade Marks — Passing Off — Descriptive Word Acquiring Secondary Meaning — Dishonest Adoption — Cross-Category Protection — Continuing Tort — Limitation

Held, that even a common, descriptive word used in everyday language can acquire secondary meaning through long, extensive, and exclusive association with one trader in a particular territory, such that its use by any other trader for any product — even in a wholly different product category — constitutes the tort of passing off. The Supreme Court confirmed that the modern law of passing off does not require the parties to be in direct competition with each other; it suffices that the defendant's use of the plaintiff's mark or name is likely to mislead the public into believing that the defendant's goods emanate from or are associated with the plaintiff. Where the adoption of the offending mark is dishonest and mala fide, evidenced by the deliberate use of the same script, font, and presentation as the plaintiff's mark with the object of riding upon the plaintiff's extraordinary goodwill, an injunction must follow. Delay in filing the suit does not defeat the plaintiff's claim because passing off is a continuing tort and a fresh cause of action accrues at every moment of the continued wrong by operation of Section 22 of the Limitation Act, 1963. Wikipedia printouts carry limited evidentiary weight in legal proceedings. The extraordinary goodwill of the 'Eenadu' brand in Andhra Pradesh, built by Ushodaya Enterprises Ltd. over decades through publishing the Eenadu newspaper and through allied broadcasting activities, was fully established on record, and the adoption of the identical word, script, and font by the Karnataka-based agarbathi manufacturer T.V. Venugopal was held to be ex facie fraudulent and mala fide, entitling the respondent company to a permanent injunction.

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