The Hon'ble Supreme Court in [M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd on 9 May, 2000] held that while "PICNIC" and "PIKNIK" were phonetically similar, the overall dissimilarities in the essential features of the rival marks were more significant than the similarities, and hence there was no infringement of the Petitioner's registered trademark.
Facts of the Case:
The Petitioner, M/S S.M. Dyechem Ltd., started its business in 1988, dealing in products like potato chips, potato wafers, corn-pops, and preparations made of rice and rice flour. In January 1989, the Petitioner started using the trademark "PIKNIK."
The Petitioner applied for registration of the said trademark on February 17, 1989, under Application No. 505531B in Class 29 (for preserved, dried, and cooked fruits, vegetables, etc.), Application No. 505532 in Class 30 (for tea, coffee, confectionery, chocolates, honey, etc.), and Application No. 505533 in Class 32 (for beverages, beers, mineral and aerated waters). Registration was granted on July 29, 1994, after advertisement on September 1, 1993. The Petitioner renewed the trademark for 7 years from February 17, 1996.
The Respondent, M/S Cadbury (India) Ltd., was found using the mark "PICNIC" for chocolates. The Petitioner gave a notice to the Respondent on March 16, 1998. The Respondent replied on April 7, 1998.
The Respondent had earlier registered the mark "PICNIC" under No. 329970 in Class 30 in 1977 for dairy milk chocolates, wafer bars, dairy milk chocolate, confectionery, etc. However, the said trademark expired after 7 years and was not renewed. The Respondent applied for rectification of the Petitioner's trademark by an application dated March 19, 1999, in the Bombay High Court, which was pending.
The Petitioner filed a suit on February 18, 1999, based on alleged infringement of trademark 505532 and passing off. Pending the suit, the Petitioner applied for a temporary injunction, which was initially granted on February 25, 1999, and confirmed on March 23, 1999.
The trial court granted a temporary injunction in favor of the Petitioner, holding that the Petitioner's registration of the word "PIKNIK" (including for chocolates) was in force, the Respondent's earlier registration had expired, the Respondent did not oppose the Petitioner's registration, there was no unreasonable delay in filing the suit, and the Respondent's mark was "deceptively similar" within Section 2(1)(d) of the Trade and Merchandise Marks Act, 1958, among other reasons.
The Respondent appealed against the temporary injunction, and the High Court of Gujarat allowed the appeal and set aside the injunction. Aggrieved by the High Court's order, the Petitioner filed an appeal before the Supreme Court.
Issue:
Whether the High Court was correct in setting aside the temporary injunction granted to the Petitioner by the trial court in a suit for infringement of trademark and passing off?
Held:
The Hon'ble Supreme Court, in the citation M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd held that:
While the words "PICNIC" and "PIKNIK" were phonetically similar, the overall dissimilarities in the essential features of the rival marks, such as the peculiar script, the curve, and the caricature of a boy in the Petitioner's mark, were more striking and significant than the similarities.
Applying the principles laid down in English law, where there are common elements in rival marks, more regard must be paid to the parts that are not common, while not disregarding the common parts. In the present case, the dissimilarities in the essential features were enough to make the whole thing dissimilar.
On the question of infringement, the relative strength of the case appeared to be more in favor of the Respondent than the Petitioner.
Regarding passing off, the presence of the Respondent's name "Cadbury" on its product wrapper was an indication that there was no passing off, even if the trade dress was similar.
The trial court erred in holding that there was scope for a purchaser being misled, without considering the principles that the courts should have in mind a wary customer who knows the distinguishing characteristics of the goods.
On the question of passing off as well, the relative strength of the case appeared to be more in favor of the Respondent.
The High Court rightly interfered with the trial court's discretion in granting a temporary injunction, as the trial court had applied wrong principles under Order 39, Rule 1 of the Code of Civil Procedure.
The Supreme Court dismissed the Petitioner's appeal but reiterated the direction given by the High Court regarding the maintenance of accounts and the undertaking to be given by the Respondent for damages, if any, that may be granted in the suit, in case the suit succeeds.
______________________________________________________________________
DISCLAIMER: The views expressed are strictly of the author and NLF Tax and Legal Advisory. The contents of this article are solely for informational purposes and for the reader’s personal non-commercial use. It does not constitute professional advice or a recommendation of the firm. Neither the author nor the firm and its affiliates accept any liabilities for any loss or damage of any kind arising out of any information in this article nor for any actions taken in reliance thereon. Further, no portion of our article or newsletter should be used for any purpose(s) unless authorized in writing, and we reserve the legal right for any infringement on usage of our article or newsletter without prior permission.
Comments