Case: M/S. S.M.Dyechem Ltd., Mumbai Vs. M/S.Cadbury (India) Ltd., Mumbai

The appellant company (plaintiff) claimed that it started business in 1988 in four products like potato, chips, potato wafers, corn-pops nd preparations made of rice and rice flour. In January 1989 it started using the trade mark PIKNIK. It applied for registration on 17.2.1989 of the said word in class 29 (for preserved dried and cooked fruit vegetables etc. including all goods included in class 29) under application No. 505531B. Plaintiff also applied for registration of same trade mark in class 30 (for tea, coffee, corns, jaggery atc. including confectionery chocolates, honey etc.) under application 505532. A third application under same name was (for beverages, beers, mineral and irrigated water) under application No. 505533. Registration was granted on 29.7.1994 after advertisement on 1.9.93. The appellant renewed the trade mark last for 7 years from 17.2.1996. Respondent-defendant was found using the mark `PICNIC for chocolates. Appellant gave notice on 16.3.1998. Respondent replied on 7.4.98. Thereafter, the appellant filed the suit on 18.2.1999 based on alleged infringement of trade mark 505532 and passing off. Pending the suit, appellant applied for temporary injunction. (The respondent filed an application on 19.3.1999 in the Bombay High Court for rectification and the same isrespondent-defendant contended in this interlocutory application that `CADBURUYS PICNIC was introduced in 1998 for chocolates. It was registered earlier under No. 329970 in class 30 of 4th schedule in 1977 for dairy milk chocolates, wafers bar, dairy milk chocolate, confectionery etc. (The said trade mark expired after 7 years and was not renewed). Defendant applied for rectification of the plaintiffs trade mark by application dated 19.3.99. Defendant had also filed a subsequent application for registration of CADBURY PICNIC in August 1999 (appln. No. 712676). It pleaded that CADBURY PICNIC andor PICNIC andor label with the said word was registered by the defendants parent company in over 110 countries all over the world and the defendant had tran-sborder reputation and goodwill. The plaintiff could not claim monopoly in the variations of the ordinary dictionary word PICNIC or any misspelling thereof. Plaintiff had never intended to do business in chocolates. Its main business was in dyes and chemicals. Its business in food products was ancillary and fell under NAMKINS and PAPADS. Even otherwise, both labels were different in essential features. The registration by a plaintiff was only of a label and could not be and was not of the word PIKNIK. The said word was a misspelling of an ordinary dictionary word and was not "distinctive." Registration thereof under section 9 was invalid. There was also delay in filing the suit on 18.2.1999 and injunction could not betrial Court held that the plaintiffs registration of the word PIKNIK (including for chocolates) was and is in force, that the defendants earlier registration had expired, that the defendant did not oppose registration by plaintiff, that there was no unreasonable delay in filing the suit, that injunction in these circumstances could not be refused even if there was some delay, plaintiff had a prima facie case and balance of convenience was in plaintiffs favour. It held that the defendants mark was `deceptively similar within section 2(1)(d) of the Trade and Merchandise Marks Act, 1958, that confusion could be created in the minds of purchasers either because the marks were similar visually or ocularly or phonetically. Here there was clear phonetic resemblance. The contention that what was registered was the label and not the word `PIKNIK could not be accepted. The `essential features of the trade marks were similar. Section 2(1)(f) referred to `mark as including a device brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. Even if the `essential features of the words `PIKNIK were taken into consideration the defendants mark `PICNIC was deceptively and phonetically similar. The defendant had cleverly designed the worked `PICNIC by change of spelling and the word was so designed on is label in large letters. The plaintiffs trade mark was registered under class 30 which included `chocolates. Section 9(1)(d) or (e) would not help the defendant inasmuch as the plea that this was a common dictionary word was not correct. In fact the defendant had himself registered the word PICNIC in 1977 in India and the same word was registered in other countries. Defendant had again applied in India in 1998-1999 for registration of the same word. Section 28 of the Act conferred a statutory right on plaintiff on account of registration. The said mark was registered without opposition under section 21. On the above reasoning, the trial Court granted temporary injunction in favour of theappeal by the defendant, the High court reversed the judgment and held that the word PIKNIK could not be called an essential feature. The plaintiffs label consisted of the peculiar script of the word `PIKNIK in a curved fashion with the caricature of a little boy with a hat in between the words `K and `N. The script and the figure of the little boy were the essential features and not the word `PIKNIK. The plaintiffs label had to be looked at as a whole. Plaintiff was marketing potato chips and potato wafers in a polythene pouch and not chocolates, though plaintiff had registration under class 30 for chocolates. Defendant was marketing under trade label `Cadburys PICNIC in a polythene pouch and hence both marks where different. Defendant was not using the plaintiffs label with the caricature of a boy. It was true there was phonetic similarity but the word `PIKNIK was a misspelling of the common dictionary word PICNIC and hence could not be the subject of any proprietary right. Here the products too were different and there was no confusion. The fact that the plaintiff was using the word `PIKNIK could not be compared to cases where well known trade names were under use - like Cadbury - and if the defendant used the word PICNIC along with the word Cadbury, for a different product, there could be no infringement. Cadbury was a household name in India and defendant had been marketing chocolates since 1948. The said word had almost become synonymous with chocolates in India as in the case of `Cadbury Dairy Milk, `Cadbury Five Star etc. The same was true with `Cadbuty Picnic. There was absolutely no scope for deception. There was neither infringement nor passing off. Based on this reasoning the High Court allowed the appeal of the respondent-defendant and set aside the order of temporary injunction.

Reasoning:
The provisions of section 111 deal with `stay of proceedings where the validity of registration of the trade mark is questioned etc.. In the present case, while the plaintiff - appellant has filed the present suit on 18.2.99 for permanent injunction etc. against the defendant-respondent on the ground of `infringement and `passing off, the defendant has filed an application for rectification on 19.3.99 in the High Court of Bombay. Now Section 111 is intended to protect the plaintiff. The defendant, by filing a rectification proceeding late in the High Court cannot preclude the plaintiff from seeking interim relief in view of sectionour view, any decision on the question of `validity of the appellants trade raised as a defence in the present application filed under Order 39 Rule 1 CPC will seriously jeopardise a decision on the same issue now pending in the rectification proceedings filed by the respondent in the Bombay High Court. We would therefore not go into the question of `validity or `distinctiveness of the plaintiffs trade mark nor into the applicability of National Bell Co. Case (1970(3) SCC 665) as thoseare to bedecided in the rectification proceedings. We are of the view that the case before us can be disposed of by considering whether there is prima facie any deception and hence infringement and whether there is any `passing off. Points 1, 2 and 3 are therefore notlearned Judge observed that in American Cyanamid, Lord Diplock did not lay down that the relative strength of the case of each party need not be gone into. Thereafter, this Court in Palmolive case has referred to Laddie, Js view and said hat the view of Laddie, J. is correct and that American Cyanamid cannot be understood as having laid down anything inconsistent with the `old practice. We may also add that now the courts in England go into the question whether the plaintiff is likely or unlikely to win in the suit i.e. into the comparative strength of the case of the rival parties - apart from the question of balance of convenience. See again Laddie, J. in BarclaysBank Inc v. R.B.S. Advanta, 1998 RPC307 where such a question is posed and where Series 5 Software was followed. Therefore, in trade mark matters, it is now necessary to go into the question of `comparable strength of the cases of either party, apart from balance of convenience. Point 4 is decidedour view, the trial Court in the present case went wrong in principle in holding that there was scope for a purchaser being misled. The conclusion was arrived at without noticing the above principles.