Glucon-D vs. Glucose-D: How the Supreme Court of India Drew the Line on Passing Off, Phonetic Similarity, and Packaging Deception
Introduction
Trademark law, at its heart, seeks to protect honest traders from those who seek to ride on their hard-built reputation by imitating their marks or packaging. Among the remedies available in such situations, an injunction — particularly an ad interim injunction — is the most urgent weapon in a plaintiff's arsenal. It prevents an infringer from continuing the wrongful act while the court is still examining the matter in full. However, granting or refusing such a remedy involves a careful judicial balancing act.
The Supreme Court of India, in Heinz Italia and Another v. Dabur India Ltd., decided on May 18, 2007, and reported as (2007) 6 SCC 1, took up this very challenge. The case brought before it a dispute between two glucose-based energy drink products — "Glucon-D" and "Glucose-D" — and asked a deceptively simple question: were these products and their packaging so similar as to confuse an ordinary consumer? The case also raised important questions about prior use, phonetic similarity of marks, the relevance of delay in approaching courts, and the standard courts must apply when two courts below have already refused relief. The answers given by a Bench of Justices B.P. Singh and H.S. Bedi settled principles that continue to guide intellectual property jurisprudence in India.
Factual and Procedural Background
The story of this case begins not in a courtroom but in the marketplace, and goes back several decades. The trade mark "Glucon-D" was first used by Glaxo Laboratories in India as far back as the year 1940. It was registered in India in the name of Glaxo under Registration No. 305664 (Class 30) under the Trade and Merchandise Marks Act, 1958. Along with the trade mark, Glaxo had also developed a distinctive packaging — predominantly green in colour — with the image of a happy family superimposed on it, giving the product a warm, familiar identity in the Indian market.
In the year 1994, Glaxo assigned this trade mark along with the goodwill attached to it and the rights in the artistic work used on the packaging, to the first petitioner, M/s Heinz Italia SRL, by a deed of assignment dated September 30, 1994. Glaxo Laboratories also separately assigned their rights in the artistic work used on the packaging to the appellants. From 1994 to 2002, the appellants — Heinz Italia — used the trade mark "Glucon-D" and the distinctive packaging without any interference and established a strong name in the market.
The trouble began in July 2002, when the appellants discovered that the respondent, Dabur India Ltd., one of India's large and established consumer goods companies, had launched a competing product under the name "Glucose-D." The appellants alleged that the packaging used by Dabur for its "Glucose-D" product was deceptively similar to the distinctive packaging of their own "Glucon-D" product. Through their advocate, they promptly served a notice on Dabur calling upon it to stop using both the mark and the deceptive packaging. When no satisfactory reply was received, the appellants filed a suit in court for a permanent injunction and accounts of profits, alleging infringement of the trade mark under Sections 29 and 106 of the Trade and Merchandise Marks Act, 1958, and infringement of copyright in the artistic work used on the packaging under Section 63 of the Copyright Act, 1957. Alongside the main suit, an application was also filed under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an ad interim injunction to restrain Dabur from using the trade mark "Glucose-D" or any other trade mark and deceptively similar packaging until the suit was finally decided. It is worth noting that a similar suit was also filed before the Calcutta High Court to stop the alleged misuse, but upon Dabur's application, the Calcutta proceedings were stayed pending the outcome of the present suit.
Dabur defended itself by filing a written statement. It took the position that the word "Glucose" was nothing but a generic expression of the product being sold — essentially a description of the ingredient — and therefore no one, including Heinz, could claim any monopoly over it or its derivatives. Dabur also denied any similarity between "Glucon-D" and "Dabur Glucose-D" as trade marks, and further contended that the packaging of the two products was entirely different. It is also admitted on record that Dabur had been using the term "Glucose-D" since the year 1989 and that the disputed packaging (with the happy family imagery) had been in use since the year 2000.
The trial judge decided the interim application by order dated December 11, 2003, and ruled in Dabur's favour. The court held that the word "Glucose" was a generic word and as such, the appellants could not claim that Dabur's use of the word "Glucose-D" violated their registered trade mark "Glucon-D." The trial court also rejected the claim about packaging similarity, after comparing the two sets of packaging and observing the dissimilarities between them. The interim application was accordingly dismissed.
The appellants challenged this decision by filing a first appeal before the Punjab and Haryana High Court. By judgment and order dated October 27, 2005, the High Court confirmed the trial court's decision and dismissed the appeal. The appellants then approached the Supreme Court of India by way of a Special Leave Petition (SLP (C) No. 59 of 2006), which was tagged and decided as Civil Appeal No. 2756 of 2007.
The Dispute Before the Supreme Court
The matter before the Supreme Court was limited in scope. As Justice Harjit Singh Bedi, who authored the judgment, was careful to note in paragraph 7, the court was concerned only with the ad interim injunction application and was confining itself to that limited aspect, leaving all larger issues for decision in the full trial. With that clarity, the court framed two essential disputes:
First, whether the Supreme Court should interfere at all with an ad interim injunction that had been refused concurrently by two courts below. Second, on the merits, whether "Glucon-D" and "Glucose-D" and their respective packaging were so similar as to warrant the grant of interim relief in favour of the appellants on the principles governing passing off and trademark infringement.
Representing the appellants, Senior Counsel Dr. A.M. Singhvi (with Senior Advocate Arun Jaitley and others) made several arguments. He argued that being a prior user of a trade mark is the cardinal test in cases of infringement and passing off — not registration. The mark "Glucon-D" had been in use since 1940 by Glaxo and had been registered in 1975. By contrast, "Glucose-D" had only appeared in 1989. This established the appellants' superior prior use beyond doubt. He also contended that the green packaging with the happy family image had been in use since 1980 by the appellants and for about a decade earlier by Glaxo, which further cemented the case of prior user. He submitted that "Glucon-D" was not a generic word and that even if it were generic, an injunction could follow in special circumstances, placing reliance on Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257. He further argued that Dabur had dishonestly appropriated the goodwill and reputation of "Glucon-D," and that this dishonest intention alone would ordinarily entitle the appellants to an injunction. On the issue of delay in filing the suit, he argued that mere delay cannot defeat the case of a plaintiff when dishonest intention is established.
Senior Advocate Sudhir Chandra, appearing for Dabur, countered on multiple fronts. He relied primarily on Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, a well-known Supreme Court decision which holds that an interlocutory injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure is a discretionary relief and that interference should ordinarily not be made when two courts below have both gone against a party. He further argued that the suit had been filed only in 2003, long after the mark "Glucose-D" had been used since 1989, and this delay was itself a ground to refuse interim relief. He argued that no substantial evidence of deceptive similarity between the marks or the packaging had been placed on record to justify ad interim relief, relying on J.B. Williams v. H. Bronnley, (1909) 26 RPC 765 (CA). He also reiterated the trial court's finding that "Glucose" was a generic word and could not be the subject of any monopoly claim.
Reasoning and Analysis of the Court
The Supreme Court, speaking through Justice H.S. Bedi, carefully examined each argument and rendered a judgment that is analytically rich and practically significant.
On the Question of Supreme Court's Interference
The court began by addressing the threshold objection raised by Dabur based on Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727. In that case, the Supreme Court had laid down that an interlocutory injunction is discretionary and that courts should generally not interfere when two courts have concurrently refused it. However, Justice Bedi noted that the facts of the Wander case were materially different. In Wander, the ad interim injunction had been rightly refused because the opposite party itself had claimed and proved prior user, which formed the very basis of the passing-off action. In the present case, by contrast, the prior use of "Glucon-D" by Glaxo since 1940 and by the appellants thereafter was a matter of clear record — established beyond doubt. The challenge in the present proceedings was to the mark and packaging being used in Gurgaon from the year 2000 onwards. On these facts, the court distinguished the Wander case and rejected Dabur's first objection.
On the Law of Passing Off and Prior User
The court then turned to the substantive law. It drew upon two significant precedents to lay down the governing principles. In Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250, it had been held that in an action for passing off, the plaintiff must establish prior user to secure an injunction and that registration of the mark, or registration of a similar mark, at the relevant point in time, is entirely irrelevant. What matters is who was using the mark earlier.
The court also extensively relied upon Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 : 2001 PTC 300, in which the modern tort of passing off had been elaborately discussed. Borrowing from the formulation of Lord Diplock in the English case Erven Warnink BV v. J. Townend & Sons, 1979 AC 731 : (1979) 3 WLR 68 : (1979) 2 All ER 927, the court noted that the modern tort of passing off has five elements: first, a misrepresentation; second, made by a trader in the course of trade; third, to prospective customers or ultimate consumers of goods or services supplied by the trader; fourth, which is calculated to injure the business or goodwill of another trader, in the sense that this is a reasonably foreseeable consequence; and fifth, which causes actual damage to a business or goodwill of the trader, or will probably do so. The Cadila Health Care case had also clearly laid down that in passing-off actions, a court must take note of similarities rather than dissimilarities, and the principle of phonetic similarity cannot be ignored. The test is whether a particular mark has obtained such acceptability in the market as to confuse a buyer about the nature of the product being purchased.
The court further considered the principle from Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, which observed that the principle of similarity cannot be very rigidly applied and that if there is prima facie evidence of dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow, and mere delay in bringing the matter to court is not sufficient ground to defeat the plaintiff's case.
On Phonetic Similarity
Applying these principles to the facts, the court made a significant finding on phonetic similarity. It observed that both "Glucon-D" and "Glucose-D" are items containing glucose and that there is a remarkable degree of phonetic similarity between these two words. The court expressed this opinion clearly in paragraph 17 of the judgment, holding that the principle from the Cadila Health Care case applied squarely — the test of phonetic similarity is whether a mark has obtained acceptability in the market such as to confuse a buyer about what he is purchasing. The fact that the dominant component of both names relates to glucose, combined with the similar structure of the names, was, in the court's view, enough to establish the requisite phonetic similarity.
On Packaging and Overall Effect
The court then examined the packaging in great detail, particularly Item D of Annexure P-6 placed before it, which was the packaging in dispute. The court found that the colour scheme of "Glucose-D" and "Glucon-D" were almost identical — a green background with a happy family image superimposed on it. Dabur had pointed out that in its "Glucose-D" packaging the family consisted of four members, while in the "Glucon-D" packaging the family was of three members, arguing that the two were therefore dissimilar. The court categorically rejected this argument. It held that the colour scheme and the overall effect of the packaging must be seen as a whole and not broken down into its individual components. Looking at the product from different years — the 1989 packaging for Glucose-D on the extreme left, the 2000 version in the middle (which was the subject-matter of the suit), and the version pending in the Calcutta proceedings on the right — the court found that the packaging was so similar that it could easily confuse a purchaser.
In a particularly telling observation, the court noted that the respondents had time and again made small changes to their packaging. The court read this pattern not as an innocent evolution of product design but as a deliberate attempt to continue misleading the purchaser while making it more difficult for the appellants to protect their mark. The record showed that Glucon-D had acquired an enviable reputation in the market, and the court found that this was being sought to be exploited by Dabur.
On the Question of Delay
The court dealt with Dabur's argument about delay in filing the suit — that the suit was filed only in 2003 though Dabur had been using "Glucose-D" since 1989. The court did not find this argument persuasive. It drew upon the Corn Products case principle to hold that mere delay in bringing the matter to court is not a ground to defeat the case of the plaintiff, particularly when there is prima facie dishonest intention on the part of the defendant. It is significant to note that the impugned packaging (with the happy family image) had been in use only from the year 2000, and the suit was filed in 2003 — a delay of barely three years qua the specific packaging which was the subject-matter of the present proceedings.
On Prior User as the Decisive Factor
The court returned to the foundational principle that prior user is the cardinal test. The fact that "Glucon-D" and its distinctive packaging had been used by Glaxo since 1940 and thereafter by the appellants, long before the respondent adopted "Glucose-D," was clearly established on record. The registration of a trade mark, while helpful, is subordinate to the fact of prior use. Since prior use stood established, the court held that the case of prior user needed no further evidence in the present circumstances and that the factual question of whether "Glucose-D" was a generic word or not could await the full trial.
The Final Decision
The Supreme Court allowed the Civil Appeal filed by Heinz Italia. It set aside the order of the trial court dated December 11, 2003, and the order of the Punjab and Haryana High Court dated October 27, 2005. The application for ad interim injunction was allowed in terms of prayer clause (ii) of the application — which related to the packaging.
Crucially, however, the injunction was confined to the packaging and did not extend to the use of the word "Glucose-D" itself. The court did not restrain Dabur from using the name "Glucose-D" as a trade mark. This is a nuanced and somewhat controversial aspect of the judgment. The court made a passing observation that there was remarkable phonetic similarity between the two marks but ultimately limited the injunction only to the packaging aspect. The court clarified that any observation made in this order — being confined to an ad interim injunction — would not bind the trial judge in the main proceedings in the suit.
Points of Law Settled
This judgment is significant for several legal propositions it settles and consolidates:
The first and most important point settled is that in a passing-off action, the prior user of a mark is the cardinal test, and the registration of the mark, or of a similar mark, at the relevant point in time, is irrelevant. This principle, drawn from Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250, was reaffirmed emphatically.
Second, the court settled that in passing-off cases, the focus must be on similarities between the marks or the packaging rather than on the dissimilarities. Courts cannot defeat a plaintiff's case by picking out minor differences between competing products. The overall effect on the mind of an ordinary purchaser is the touchstone.
Third, the principle of phonetic similarity was reaffirmed as a critical test. If two marks sound alike when spoken, they are likely to cause confusion in the minds of buyers, especially in a country with diverse literacy levels. The court quoted and applied the phonetic similarity doctrine from Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.
Fourth, the court settled that changes made to an infringing packaging or mark over time, while maintaining its basic similarity with the original, are of no help to the infringer. If anything, such incremental changes to packaging suggest an attempt to mislead the consumer while avoiding direct confrontation with the senior user. This is an important practical principle for trademark enforcement.
Fifth, the court clarified the limited scope of the Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 doctrine. The principle that a court should not interfere when two courts below have concurrently refused an injunction is not an absolute rule. It can be overridden where the facts clearly establish prior use and a prima facie case of passing off by the respondent. The court distinguished Wander on facts rather than overruling it, thereby contributing to a nuanced understanding of that precedent.
Sixth, on the question of delay, the court held that mere delay in bringing a matter to court is not by itself a ground to defeat the case of the plaintiff, especially when there is prima facie evidence of dishonest intention on the part of the defendant.
Case Details
Title: Heinz Italia and Another Vs. Dabur India Ltd.
Court: Supreme Court of India
Bench: Before B.P. Singh and H.S. Bedi, JJ.
Case Number: Civil Appeal No. 2756 of 2007 (Arising out of SLP (C) No. 59 of 2006)
Date of Order: May 18, 2007
Neutral Citation / Reported As: (2007) 6 SCC 1; (2007) 6 Supreme Court Cases 1
From: Final Judgment and Order dated October 27, 2005, of the High Court of Punjab and Haryana at Chandigarh in FAO No. 233 of 2004
Name of Hon'ble Judge (Author of Judgment): Justice Harjit Singh Bedi, J.
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
Suggested SEO Titles
Heinz Italia v. Dabur India Ltd. (2007) 6 SCC 1 — Supreme Court on Passing Off and Phonetic Similarity of Trade Marks
Glucon-D vs Glucose-D: How the Supreme Court Protected Trade Mark Packaging Rights in India
Passing Off Action in India: Prior User, Phonetic Similarity and Packaging Deception — Heinz Italia v. Dabur India
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Headnote
Heinz Italia and Another v. Dabur India Ltd., (2007) 6 SCC 1
Supreme Court of India | B.P. Singh and H.S. Bedi, JJ. | Civil Appeal No. 2756 of 2007 | Decided May 18, 2007
The appellant, proprietor of the registered trade mark "Glucon-D" (originally used by Glaxo Laboratories since 1940 and registered in 1975 under the Trade and Merchandise Marks Act, 1958, assigned to the appellant in 1994), filed a suit for permanent injunction alleging that the respondent's product "Glucose-D," launched in 2002 with packaging deceptively similar to the appellant's distinctive green packaging with a happy family image, amounted to infringement of the trade mark and copyright in the artistic work, and passing off. The trial court and the High Court both refused the application for ad interim injunction, holding that "Glucose" was a generic word and that the packaging was dissimilar. On appeal, the Supreme Court held: (i) prior user is the cardinal test in passing-off actions and registration of the mark is irrelevant; (ii) in passing-off cases, similarities between marks and packaging must be emphasised over dissimilarities, and phonetic similarity between "Glucon-D" and "Glucose-D" was remarkable; (iii) the colour scheme and overall effect of packaging — both prominently featuring a green background and a happy family image — were so similar as to easily confuse a purchaser; (iv) incremental changes made by the respondent to its packaging over time, while maintaining basic similarity, constituted an attempt to mislead consumers and did not assist the respondent; (v) mere delay in filing the suit is not a ground to defeat the plaintiff's case where dishonest intention is established; (vi) the Wander Ltd. v. Antox India principle of non-interference where two courts have refused injunction is not absolute and is distinguishable on facts. Ad interim injunction granted limited to the packaging. The use of the trade mark "Glucose-D" as a word was not restrained.
Trade Marks Act, 1999, S. 29 — Copyright Act, 1957, S. 63 — Civil Procedure Code, 1908, Or. 39 Rr. 1 & 2 — Passing off — Prior user — Phonetic similarity — Packaging — Interim injunction.
