Holding

For a temporary injunction in trademark matters the court must assess the comparative strength of the parties’ cases, and on the facts the plaintiff’s mark did not infringe the defendant’s mark, so the injunction was not warranted.

Summary

S.M. Dyachem Ltd. (plaintiff) claimed that its registered trademark “PIKNIK” for food products was infringed by Cadbury (India) Ltd.’s use of “PICNIC” on chocolates and sought a temporary injunction. The High Court set aside the trial court’s injunction, holding that the marks differed in essential features and there was no likelihood of deception. On appeal, the Supreme Court examined whether the validity of the plaintiff’s mark could be contested in interlocutory proceedings, the proper test for granting an injunction, and the comparative strength of the parties’ cases. It held that the court must consider the comparative strength of the parties (not merely a prima facie case) and, on the facts, the plaintiff’s mark did not infringe the defendant’s mark; therefore, no temporary injunction was warranted. The appeal was dismissed, upholding the High Court’s order.

Issues considered

Can the defendant raise a defence that the plaintiff’s trademark is invalid (not distinctive) in an interlocutory injunction application?
Do Sections 31 and 32 of the Trade Marks Act, 1958, bar a defence of invalidity after seven years?
Is the word “PIKNIK” distinctive under Section 9(1)(e) of the Trade Marks Act?
What test governs the grant of a temporary injunction in trademark cases – prima facie case, comparative strength of the parties, or merely a triable issue?
Does the comparative strength of the plaintiff’s case on infringement favour the plaintiff?
Does the comparative strength of the plaintiff’s case on passing‑off favour the plaintiff?
Was there unreasonable delay in filing the suit and was the High Court justified in interfering with the trial court’s interlocutory order?

Legislation cited

Code of Civil Procedure, 1908s. Order 39 Rule 1, s. Order 39 Rule 5
Patents Act, 1970s. 107
Trade and Merchandise Marks Act, 1958s. 105, s. 106, s. 111(5), s. 2(1)(d), s. 23(1), s. 28, s. 31, s. 32, s. 9(1), s. 9(3)

Subjects

trademark infringementtemporary injunctionessential featuresdeceptively similarpassing offcomparative strengthSection 9 distinctivenessTrade Marks ActCPC Order 39American Cyanamid testColgate Palmolive precedent

Judgment

A S.M. DYECHEM LTD.
v.
CADBURY (INDIA) LTD.

MAY 9, 2000

B [M. JAGANNADHA RAO AND Y.K. SABHARWAL, JJ.]

Trade and Merchandise Marks Act, 1958:

Section 106-Trademark matters-Temporary injunction-Grant or
C refusal of-Factors to be considered-Held: Apart from balance ofconvenience
it is necessary to consider the comparative strength of the case of the rival
parties before granting, or refuse to grant, temporary injunction-Code of
Civil Procedure, 1908, 0.39 R.l.

Sections 2(1) (d). 29, 105 and 106-Trademark-lnfringement of+-
D Temporary injunction-Grant of-Tests to determine-Essential features-
Copying of-Burden of proof-Held: Onus to prove 'deception' is on the
plaintiff-Sound of words forming a part of or the whole of the mark has to
be considered-But when device marks a~e compared or when a device mark
is compared with a word mark the considerations would differ-However, i11
E the case of devices and composite marks dissimilarities in essential features
assume importance-The mark must always be considered as the whole thing
and the test is whether the totality of impression given both orally and
visually is such that it is likely to cause mistake, deception or confusion-+-
Jn the circumstances of the case, on an examination of relative strength, there
F is dissimilarity in essential features between the plaintiff's and defendant's
marks and chances are more for the defendant to succeed-Hence plaintiff
not entitled to temporary injunction.

Section I 05 and 106-Jnfringement and passing off- Difference between
-Suits for-Held: On the same facts a suit for passing off may fail a suit for
G infringement may succeed. Passing off-Goods-Defendant's name on-Effect
of-Held: ls an indication that there is no passing off

Passing off-Suit for-Deceiving of buyer-Scope of-Held: Court is
not expected to consider the confusion created due to the ignorance of the
buyer-The buyer is expected to know the distinguishing characteristics of
H the goods he purchases. •
86
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. · 87
Sections 2(/)(d) and 29-Trademark-Jnfringement of - "Deceptively A
similar"-"Deceive" and "confusion" -Difference between-Held: If essential
features are copied the intention to deceive or cause confusion is not relevant
in an infringement action.

Words and Phrases:
B
"Deceptively similar", "deceive" and "confusion" -Meaning of- In the
context of S.2(/)(d) of the Trade and Merchandise Marks Act, 1958.

The appellant-company (plaintifl) claimed that it started business in
1988 in four products like potato chips, potato wafers, corn-pops and C
preparations made of rice and rice flour. In January 1989 it started using
the trademark PIKNIK. It applied for registration on 17-:'-1989 of the said
word in class 29 (for dried and cooked fruit vegetables etc. including all goods
included in class 29). The appellant-plaintiff also applied for registration of
the same trademark in class 30 (for tea, coffee, corns, jaggery etc. including
confectionery chocolates, honey etc.) A third application under the name was D
for beverages, beers, mineral and aerated water. Registration was granted on
29-7-1994 after advertisement on 1-9-1993. The appellant renewed the
trademark for 7 years from 17-2-1996. The respondent-defendant was found
using the mark 'PICNIC' for chocolates. The appellant gave notice on
18-3-1998. The respondent replied on 7-4-1998. Thereafter, the appellant filed E
a suit on 18-2-1999 based on passing off. Pending the suit, the appellant
applied for temporary injunction.

The respondent defendant contended in this interlocutory application
that 'CADBURY'S PICNIC' was introduced in 1998 for chocolates. It was
registered earlier in class 30 of the 4th schedule in 1977 for dairy milk F
chocolates, wafers bar, confectionery etc. The said trademark expired after 7
years and was not renewed. The defendant applied for rectification of the
plaintiff's trademark by application dated 19-3-1999. The defendant had also
filed a subsequent application for registration of CADBURY PICNIC in August
1999. It pleaded that CADBURY PICNIC and/or PICNIC and/or label with the G
said word was registered by the defendant's parent company in over 110
countries all over the world and the defendant had transborder reputation and
goodwill The plaintiff could not claim monopoly to the variations of the
ordinary dictionary word PICNIC or any misspelling thereof. The 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 H
88 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A NAMKINS AND PAPADS. Even otherwise, both labels were different in
essential features. The registration by 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 of the Trade and Merchandise Marks Act, 1958 was invalid. There
was also delay in filing the suit on 18-2-1999 and injunction could not be •
B granted.

The trial court held that the pla intitrs registration of the word PIKNIK
(including for chocolates) was and is in force, that the defendant's earlier
registration had expired, that the ddendant did not oppose registration by
c 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, the
plaintiff had a primafacie case and balance of convenience was in plaintitrs
favour. It held that the defendant's mark was 'deceptively similar' within
Section 2(1)(d) of the Act, that confusion could be created in the minds of
purchasers either because the marks were similar visually or ocularly or
D phonetically. There was a clear phonetic resemblance. The contention that
what was registered was the label not the word 'PIKNIK' could not be accepted.
The 'essential features' of the trademark were similar. Section 2(1)(()
referred to 'mark' as including a device, brand, heading, label ticket, name,
signature, word, letter, numeral or any combination thereof. Even if the
E 'essential features' of the words 'PIKJlllK' were taken into consideration, the
defendant's mark 'PICNIC' was deceptively and phonetically similar. The
defendant had cleverly designed the word 'PICNIC' by change of spelling and
the word was so designed on its label in large letters. On the above reasoning,
the trial court granted temporary injunction in favour of the appellant.

F On appeal by the defendant, High Court reversed the judgment and held
that the word "PIKNIK' could not be called an 'essential feature'. The
plaintifrs 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
letters 'K' and 'N'.The script and the figure of the little boy were the essential
features and not the word 'PIKNIK'. The plaintitrs label had to be looked at
G as a whole. The plaintiff was marketing potato chips and potato wafers in a
polythene pouch and not chocolates, though the plaintiff had registration
under class 30 for chocolates. The defendant was marketing under trade label
'Cadbury's PICNIK' in a polythene pouch and hence both marks were different.
The defendant was not using the plaintiffs label with the caricature of a boy. It
H was true there was phonetic similarity but the word 'PICNIK' was a
-
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. 89
misspelling of the common dictionary word 'PIKNIK' and hence could not to A
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 ifthe defendant used the word 'PICNIC' along
with the word Cadbury, for a different product, there could be no infringement B
Cadbury was a household 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 'Cadbury's Picnic.' There was absolutely no
scopes for deception. There was neither infringement nor passing off. Based
on this reasoning the High Court allowed the appeal of the C
respondent-defendant and set aside the order of temporary injunction. Hence
this appeal.

The following points arose for consideration before this Court:

(1) Whether the defendant could, in the present interlocutory D
proceedings, based on infringement and passing off, raise any defence that
the registration of plaintiffs mark was itself "invalid" because the plaintifrs
mark did not satisfy the ingredients of Section 9(1)(a) to (e) and was, in
particular, not 'distinctive' as required by Section 9(1)(e)?

(2) Whether the plaintiff could rely on the presumption in Section 31 E
and also contend that under Section 32 the "validity" of the registration of
the plaintiffs mark had become conclusive on the expiry of 7 years long before
defence was raised in the suit [such time reckoned from the date of application
for rectification under Section 23(1)) and whether there were any exceptions
to the said bar? F
(3) Whether, assuming that Section 31 and Section 32 did not come in
the way of the defendant, on merits the word 'PIKNIK' was not distinctive and
did not satisfy Section 9(1)(e)?

(4) For grant of temporary injunction, should the Court go by principle G
of prima facie case (apart from balance of convenience) or comparative
strength of the case of either parties or by finding out if the plaintiff has
raised a 'triable issue?'

(5) Whether, assuming that the plaintifrs registration was valid, the
comparative strength of the case on the question of infringement is in favour H

\
90 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A of the plaintiff!
(6) Whether, alternatively, the plaintiff had made out that for grant of
temporary injunction treating tlte suit as a 'passing offaction', the relative
strength of the case, was in plaintiffs favour?

B (7) Whether there was unreasonable delay on the part of the plaintiff in
filing the suit and whether the High Court was justified in interfering in
appeal in interlocutory proceedings?

Dismissing the appeal, this Court

C HELD: Points 1, 2 and 3

1. Any decision on the qm~stion of 'validity' of the appellant's trade
raised as a defence in the present application filed under Order 39 Rule 1 of
the Code of Civil Procedure, 1908 will seriously jeopardise a decision on the
same issue now pending in the rectification proceedings filed by the respondent
D in the High Court. Therefore, it is not necessary to go into the questions of
'validity' or distinctiveness' of the plaintiff's trademark or into the applicability
of the National Bell Co. 's Case as those issues are to be decided in the
rectification proceedings. The present case can be disposed of by considering
whether there is prima facie any deception and hence infringement and
E whether there Is any 'passing off. Points 1, 2 and 3 are, therefore, not
decided. (107-8-C)

National Bell Co. v. Metal Goods Mfg. Co., [1970) 3 SCC 665;
American Cyanamid Co. v. Ethicon Ltd, (1975) 1 All ER 504 (HL) and Colgate
Pamolive (India) Ltd. v. Hindustan Lever Ltd, (1999) 7 SCC 1, referred to.
F
POINT4

2.1. Before American Cyanamid Co. 's case, it was customary for the
Courts to go into prima facie case in trademark cases for grant or refusal of
temporary injunction. But in American Cyanamid, it was observed that it was
G sufficient if the plaintiff presented a 'triable issue' and the merits need not
be gone into. [107-D-E)

2.2. It was observed in American Cyanamid that the relative strength of
the case of each party need not be gone into. Thereafter, this Court in
Pamolive 's case said that the view taken in Series 5 Software's case is correct
H and that American Cyanamid cannot be understood as having laid down
S. M. DYECHEM LTD. v. CADBURY (INDIA) LTD. 91
anything inconsistent with the 'old practice'. Now the Courts in England go A
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. Therefore, in trademark matters, it
is now necessary to go into the question of'comparable strength' of the cases
of earlier party, apart from balance of convenience. (108-A-C)
B
Colgate Pamolive (India) Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC
1, relied on.

Series 5 Software v. Clark, (1995) 1 All ER 853 (Ch.D.), Barclay's Bank
Inc. v. RBS Advanta, (1998) RPC 307; American Cyanamid Co. v. Ethicon
Ltd., (1975) 1 All ER 504 (HL); Wander Ltd. v. Antox India (P) Ltd., (1990) C
Suppl. SCC 727; Power Control Appliances v. Sumeet Machines (P) Ltd.,
[1994) 2 SCC 448; Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC
545, Floyed; Interlocutory Injunctions since Cyanamid, (1983) E 1 PR 238,
Cole: Interlocutory injunctions in U.K. Patent Cases, (1979) E 1 PR 71,
Edenborough Mand Tritton: American Cyanamid Revisited (1996) E 1 PR D
71, Philipps, (1997) JBL 486; 'Law and Contemporary Problems', (1996) Vol.
59, No.2 P.5 at p.14 and A Personal Note on Trade Mark etc. by Milton Handler,
referred to.

POINTS
E
3.1. The plaintiff must prove that essential features of his registered
mark have been copied. The onus to prove 'deception' is on the part of the
plaintiff who alleges infringement. A mark is said to be infringed by another
trader if, even without using the whole of it, the latter uses one or more of its
"essential features". The identification of an essential feature depends partly F
on the courts' own judgment and partly on the burden of the evidence that is
placed before it. Ascertainment of an essential feature is not to be by ocular
test alone; it is impossible to exclude consideration of sound of words forming
part or the whole of the mark. (108-H; 109-A-BJ

Kerly's Law of Trade Marks and Trade Names, 11th Edn., 1983, para G
14. 2 I, referred to.

3.2. It is no answer to a charge of infringement-as contrasted with a
passing of action-that the defendant's mark, whilst including the plaintifrs
mark, includes other matters too. Still less is it an answer that by something
outside that actual mark the defendant has distinguished his goods from those H
92 SUPREME COURT REPORTS (2000] SUPP. I S.C.R.

A of that plaintiff-by adding his own name. But this principle is not absolute. It
is also accepted that addition of his own name by defendant is an element to
be considered and may turn the scales in favour of the defendant. (109-C]
\
Amrithdhara Pharmacy v. Satya Deo Gupta, AIR (1963) SC 449 and
Roche v. Geoffrey Manners & Co. Pvt. Ltd., AIR (1970) SC 2062, relied on.
B
Pianotist Co. 's Application (Piano), (1906) 23 RPC 774 and Kerly 's Law
of Trade Marks and Trade Names, 11th Edn., 1983, para 14.22, referred to.

Jewsbury & Brown v. Andrew & Atkinson, (1911) 28, RPC 293, cited.

C 3.3. But the considerations relating to words, however, differ appreciably
when device marks are to be compared or when device mark is to be compared
with a word mark. However, in the case of devices and composite marks, the
above principle has not been strictly applied. The English Courts have laid
emphasis more on dissimilarities in essential features rather than on
D similarity. The "whole thing" principle is based on first impression as seen
by the Court. (110-B-E]

Kerly's Law a/Trade Marks and Trade Names, 11th Edn., 1983, para
17.07 and Ilalsbury's Laws ofEngland, Vol. 38 3rd Edn., para 986, referred
to.
E
3.4. When the question arises whether a mark applied for bears such
resemblance to another mark as to be likely to deceive, it should be determined
by considering what is the leading character of each. The one night contain
many, even most, of the same elements as the other, and yet the leading, or it
may be the only impression left on the mind might be very different. On the
F other hand, a critical comparison of the two marks might disclose num(!rous
points of difference, and yet the idea which would remain with any person
seeing them apart at different times might be the same. Thus, it is clear that
a mark is infringed if the essential features, or essential particulars of it, are
copied. In cases of device marks, especially, it is helpful before comparing the
G marks, to consider what are the essentials of the plaiAtifrs device. [110-F-H)

Kerly's Law of Trade Mar.ks and Trade Names, llth Edn., 1983, para
17. 08, referred to.

3.5. The trademark is the whole thing-the whole picture on each has
H to be considered. There may be differences in the parts of each mark. but it
S.M. DYECHEMLTD. v. CADBURY (INDIA) LTD. 93
is important to consider the mode in which the parts were put together and to A
judge whether the dissimilarity of the part or parts is enough to make the
whole dissimilar. It has been said that if the only resemblance between two
marks are in parts which are common, so that the owner of the one has taken
nothing which is peculiar to the other, then there is at all events no
infringement, at any rate unless the plaintiff had a distinctive arrangement B
of the common elements. But this approach is hardly suited to a comparison
of word marks; and even in relation to label marks or other features of get-
up, it would be more appropriate to consider the case as a whole, with due
regard to the background provided by any other marks shown to be in use.
(110-H; 111-A-B)

Kerly's Law of Trade Marks and Trade Names, llth Edn., 1983, para
c
17.17, referred to.

3.6. The question is whether the defendant has, - so far as the common
feature is concerned-copied any distinctive arrangement of the common
elements? Or has copied any unusual feature of the common element. The D
marks, names or get-up concerned must always be considered as the whole
thing, as the true test is whether the totality of the impression given both
orally and visually is such that it is likely to cause mistake, deception or
confusion. [I I 1-C-D)

Crispin's Appln., (1917) 34 RPC 249, Kerly's Law of Trade Marks and E
Trade Names, I Ith Edn., 1983, para 17.17, 17.18 and Halsbury Vol. 38, 3rd
Edn., para 987, referred to.

3.7. Where common marks are included in the rival trademarks, more
regard is to be paid to the parts not common and the proper course is to look
at the marks as a whole, but at the same time not to disregard the parts, which F
are common. [Ill-GI

Broadhead's Application, (1950) 67 RPC 209; Coca-Cola Co. of
Canada v. Pepsi Cola Co. of Canada, (1942) 59 RPC 127 and Halsbury's
Laws of England, 3rd Edn., para 992, referred to. G
3.8. Broadly, under the Indian law, stress is laid down on common
features rather than on difforences on essential features. (113-F)

Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR
(1960) SC 142; K.K. Chinna Krishna Chettiar v. Sri Ambal & Co., AIR (1970) H
94 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A SC 146; Roche & Co. v. Geoffrey Manners & Co. Pvt. Ltd., AIR (1970) SC
2062; Parle Products (P) Ltd v. J.P. & Co., AIR (1972) SC 1359; Durga Dutt
Sharma v. Navraratna Pharmaceutical Laboratories, AIR (1965) SC 980 and
Rustom & Hornsby Ltd v. Zamindara Engineering Co., [1969) 2 SCC 727,
relied on.

B Servile Perfumery Ltd. v. Jump Perfect Ltd., (1941) 58 RPC 147 (161),
referred to.

3.9. This Court did not have an occasion to decide an issue where there
were also differences in essential feature nor to consider the extent to which
the differences are to be given importance over similarities. Such a question
C has arisen in the present case. That is why principles of English Law relating
to differences in essential features have been referred to. These principles
are equally applicable in our country. [113-G-H)

3.10. In the instant case it is clear that apart from the word PIKNIK,
the essential features are also the special script of this word in block letters
D and curve in which this word is inscribed and the caricature of the boy with
a hat occurring between the letters Kand N on the plaintiff's mark. On the
other hand, the defendant's script is normal and the word 'Cadbury' is written
above the word PICNIC. Neither the peculiar script nor the boy with a hat is
found in the defendant's mark. It is true that there is phonetic similarity and
E use of the word PICNIK. But what is the effect of the dissimilarities?
(114-8-C)

3.11. This is the crucial part of the case. It is here that sufficient care
is to be taken in applying the principles. In the present case, three tests have
to be applied. The first one is whether there is any special aspect of the common
F feature, which has been copied. The second test will be with reference to the
mode in which the parts are put together differently. That is to say whether
the dissimilarity of the part or parts is enough to mark the whole thing
dissimilar. The third test is whether when there are common elements, should
one not pay more regard to the parts, which are not common, while at the
G same time not disregarding the common parts. (114-D-F)

Kerly 's Law of Trade Marks and Trade Names, I I th Edn., 1983, para
17.17, referred to.

3.12. As to the first test, whether there are any peculiar features of the
common part which have been copied it is seen that the peculiar aspects of
H the common features of PIKNIK, namely, the peculiar script and the curve
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. 95
have not been copied; then, as to the second test, the dissimilarity in the part A
or parts has to be seen and if it has made the whole thing dissimilar. Absence
of the peculiar script in the letters, the curve and the absence of the caricature
of the boy with a hat, have made the whole thing look dissimilar; then as to
the third test, the above three dissimilarities have to be given more importance
than the phonetic similarity or the similarity in the use of the word PICNIC B
for PIKNIK. That is how these three tests have to be applied in this case. On
first impression, the dissimilarities appear to be clear and more striking to
the naked eye than any similarity between the marks. Thus, on the whole, the
essential features are different. (114-F-H; 115-A)

Registrar, Trade Marks v. Ashok Chandra Rakhit, AIR (1955) SC 558, C
held inapplicable.

Pinto v. Badman, (1891) 8 RPC 181, referred to.

3.13. In the result it is held that on the question of infringement that
on an examination of the relative strength of the pleas, it is shown that the D
chance~, on fact are more in favour of the defendant rather than in favour of
the plaintiff and that the plaintiff is not entitled to temporary injunction. This
finding on facts is confined to these inerlocutory proceedings only. (115-D)

3.14. Section 29 of the Trade and Marchandise Marks Act, 1958 uses
the words 'deceptively similar' and Section 2(1)(d) of the Act defines E
'deceptively similar' as situations where one is 'deceiving' others or
'confusing' others. The distinctions between the words 'deceive' and 'confuse'
used in Section 2(1 )(d) has to be kept in view. (115-F)

3.15. If in a given case, the essential features have been copied, the
intention to deceive or to cause confusion is not relevant in an infringement F
action. Even if, without an intention to deceive, a false representation is made,
it can be sufficient. Similarly confusion may be created unintentionally but
yet the purchaser of goods may get confused for he does not have the knowledge
of facts which can enable him not to get confused. (116-E-F)

Roche v. Geoffrey Manners, AIR (1970) SC 2062, relied on. G
Parker-Knoll v. Knoll International, (1962) RPC 265 (HL), referred
to.

3.16. In the present case, it has already been held that the relative
strength of the case is in favour of the defendant. Therefore, it is not necessary H
96 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A to go into the contention of the respondent that the defendant was using the
word PICNIC in other countries over a long period along with the word
'Cadbury' and that a question oftransborder reputation protects the defendant.
(116-G-H)

N.R. Dongre v. Whirpool Corporation, (1996) 5 SCC 714, referred to.
B
POINT6
4.1. The proof of resemblance or similarity in cases of passing off and
infringement are different. In a passing off action additions, get-up or trade-
dress might be relevant to enable the defendant to escape. In infringement
C cases, such facts do not assume relevance. (117-C-D)

Durga Dutt Sharma v. Navaratana Pharmaceutical laboratories Ltd.,
AIR (1965) SC 980; Rustom & Harnsby ltd. v. Zamindara Engineering Co.
AIR (1970) SC 1649 and Wander ltd. v. Antox India Pvt. Ltd., [1990) Suppl.
sec 727, relied on.
D 4.2. It is possible that, on the same facts, a suit for passing off may fail
but a suit for infringement may succeed because the additions, the get-up and
trade-dress may enable a defendant to escape in a passing off action. (117-E)

N.S. Thread & Co. v. James Chadwick & Bros., AIR (1953) SC 357,
relied on.
E
N.S. Thread & Co. v. James Chadwick & Bros., AIR (1948) Mad 481,
approved.

Schweppes Ltd. v. Gibbens, (1905) 22 RPC 601 (HL) and Halsbury:
Trade Marks, 4th Edn., 1984 Vol. 48, para 187, referred to.
F
4.3. In the present case, the defendant's goods contain the words
'Cadbury' on their wrapper. The occurrence ofthe name 'Cadbury' on the
defendant's wrapper is a factor to be considered while deciding the question
of passing off. The presence of the defendant's name on his goods was an
indication that there was no passing off, even if the trade-dress was similar.
G The fact that the defendant's wrapper contains the word 'Cadbury' above the>
words PICNIC is, therefore, a factor, which is to be taken into account.
[118-C-E)

Fisons Ltd. v. E.J. Godwin, (1976) RPC 653; King & Co. Ltd. v. Gillard
& Co. Ltd. 22 RPC 327 and Cadbury-Schweppes Pvt Ltd. v. Pub Squash Ltd.
H (1981) RPC 429, referred to.
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. 97
4.4. As to the scope of a buyer being deceived, in a passing off action, A
the following principles have to be borne in mind: (118-F)

(a) It is a misconception to refer to the confusion that can be created
upon an ignorant customer. The kind of customer that the Courts ought to
think of in these cases is the customer who knows the distinguishing
characteristics of the plaintiff's goods, those characteristics which distinguish B
his goods from other goods in the market so far as relates to general
characteristics. If he does not know that, he is not a customer whose views
can properly be regarded by the Court. If a person is so careless that he does
not look and does not treat the label fairly but takes the bottle without sufficient
j
consideration and without reading what is written very plainly indeed up the
face of the label, it cannot be said that he is deceived. [118-F-H)
c
N.S. Thread & Co. v. Chadwick &Bros., AIR (1948) Mad 481, approved.

·Payton & Co. v. Snelling Lampard & Co., (1900) 17 RPC 48 and
Schweppes Ltd. v. Gibbens, (1905) 22 RPC 601 (HL), referred to. D
4.5. 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. (119-A)

4.6. In the result, on the question of passing off, the relating strength E
of the case again appears to be more in defendant's favour. (119-B)

POINT7

5. On facts, interference was justifiable. If wrong principles were applied
by the trial court under Order 39, Rule 1 of the Code of Civil Procedure, F
1908, the appellate Court could certainly interfere in interlocutory
proceedings under Order 39, Rule 1 CPC. Here, the trial court gave
importance to phonetic similarity and did not refer to the differences in
essential featurts. It did not also have the wary customer in mind. On the
other hand, the High Court's approach in this behalf was right as it noticed
G
the dissimilarities in the essential features and concluded that viewed as a
whole, there was neither similarity nor scope for deception nor confusion.
Thus, when wrong principles were applied by the trial court while refusing
temporary injunction, the High Court could certainly interfere. (119-D-F)

• CIVIL APPELLATE JURISDICTION: Civil Appeal No. 3341 of2000. H
98 SUPREME COURT REPORTS [2000) SUPP. I S.C.R.

A From the Judgment and Order dated 24.8.99 of the Gujarat High Court
in Appeal from Order No. 203 of 1999.

P. Chidambaram, Ms. Pratibha M. Singh, Ms. Kavita Wadia, Ms. Ruchi
Mahajan and Maninder Singh for the Appellants.

B Dushyant Dave, Pratap Venugopal, Ms. Mayuri Nayyar, Sidhartha Dave,
Haris Beeran and K.J. John for the Respondent.

The Judgment of the Court was delivered by

M. JAGANNADHA RAO, J. Leave granted. In trade mark cases, the
C tension is between protectionism on the one hand and allowing competition
on the other. In the late nineteenth century where law was regarded as a
science, the legal formalists laid down principles and legal rules, treating trade
mark as 'property'. In the beginning of this century, legal realists laid emphasis
on pragmatic considerations of economic policies and "real world results" and
the 'likelihood of confusion'. Of late, the tension between protectionism and
D competition has increased. (See Vol.58 'Law and Contemporary Problems,
1996, No. 2 P.5 at p.14) (A Personal Note on Trade Mark etc. by Milton
Handler).

E
This is a plaintiffs appeal against the judgment of the Gujarat High
Court in A.F.O. No. 203 of 1999 datt:d 24.8.1999, by which the High Court of_
Gujarat allowed the appeal prefem:d by the respondent-defendant and set
aside the temporary injunction which was initially granted on 25.2.99 and
-
which was confirmed on 23.3.99. The injunction was sought by the appellant
to restrain the respondent from using the word PICNIC as it allegedly amounted
to infringement of the appellants' registered trade mark for the use of the word
F _PIKNIK. The suit was on the basis of infringement of trade mark and also on
the basis of passing off.

The brief facts of the case are as follows:

The appellant company(plaintiff) claimed that it started business in 1988
G in four products like potato, chips, potato wafers, com-pops and 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. 505531 B. Plaintiff also applied for
registration of same trade mark in class 30 ( for tea, coffee, corns, jaggery etc.
H including confectionery chocolates, honey etc.) under application 505532. A
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] 99

third application under same name was ( for beverages, beers, mineral and A
aerated 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,
B
appellant applied for temporary injunction. (The respondent filed an application
on 19 .3 .1999 in the Bombay High Court for rectification and the same is
pending) .
•
The respondent-defendant contended in this interlocutory application c
that 'CADBURY'S 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 plaintiff's trade mark by application dated 19.3.99. Defendant
had also filed a subsequent application for registration of CADBURY PICNIC D
in August 1999 (appln. No. 712676). It pleaded that CADBURY PICNIC and/
or PICNIC and/or label with the said word was registered by the defendant's
parent company in over 110 countries all over the world and the defendant
had transborder reputation and goodwill. The plaintiff could not claim monopoly
in the variations of the ordinary dictionary word PICNIC or any misspelling E
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 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." F
Registration thereof under section 9 was invalid. There was also delay in filing
the suit on 18.2.1999 and injunction could not be granted.

The trial Court held that the plaintiffs' registration of the word PIKNIK
(including for chocolates) was and is in force, that the defendant's earlier
registration had expired, that the defendant did not oppose registration by
G
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 primafacie case and balance of convenience was in plaintiff's
favour. It held that the defendants' mark was 'deceptively similar' within
.L ..
section 2{l)(d) of the Trade and Merchandise Marks Act, 1958, that confusion H
100 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A 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
B combination thereof. Even if the 'essential features' of the words 'PIKNIK'
were taken into consideration, the defendant's mark 'PICNIC' was deceptively
and phonetically similar. The defendant had cleverly designed the word
'PICNIC' by change of spelling and the word was so designed on its label
in large letters. The plaintiffs trade mark was registered under class 30 which
C 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
D said mark was registered without opposition under section 21. On the above
reasoning, the trial Court granted temporary injunction in favour of the
appellant.

On appeal by the defendant, the High Court reversed the judgment and
E 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
F polythene pouch and not chocolates, though plaintiff had registration under
class 30 for chocolates. Defendant was marketing under trade label 'Cadbury's
PICNIC' in a polythene pouch and hence both marks were 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
G 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
H a household name in India and defendant had been marketing chocolates ..
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] IOI
since 1948. The said word had almost become synonymous with chocolates A
in India as in the case of 'Cadbury Dairy Milk', 'Cadbury Five Star' etc. The
same was true with 'Cadbury 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.
B
In this appeal, learned senior counsel for the appellant-plaintiff Sri P.
Chidambaram contended that the defendants, by merely filing a rectification
application on 19.3.99, after the appellants filed the suit on 18.2.99 for injunction
based on infringement, could not scuttle the suit or this application for
temporary injunction. In the present suit or in the application, the respondent
could not raise a defence that the registration of the plaintiff's trade mark was
c
"invalid" on the ground that the word PIKNIK was not "distinctiv "' and that
it was akin to a dictionary word or that the trade mark did not satisfy various
clauses of section 9( 1). Section 31 raised a presumption of validity of plaintiff's
registered mark. It was sufficient if the plaintiffs mark had became distinct
even by the actual date of registration. For purposes of section 31, the D
deeming clause in section 23(1) did not apply. Under section 32 of the Act,
if seven years had elapsed from the date of registration (i.e. date of application
for registration as deemed by section 23 ), then the plea of invalidity of
registration, namely, that plaintiffs registration of trade mark was not
'distinctive', could not be raised in this suit nor in defence to this application
E
nor even in the rectification proceedings. Seven years had elapsed by 17 .2.96,
Jong before the defern:e in the suit was raised as also by the date of filing
of the rectification application on 19.3.1999. Date of the registration in section
32 [unlike the position under section 31(2)] was to be deemed as date of
application for registration in view of section 23(1 ). Hence the defendant
could not be permitted to raise any plea that the word 'PIKNIK' was not F
'distinctive' by 17.2.89 within section 9. In this context, the decision of this
Court in National Bell Co. v. Metal Goods Mfg. Co., [1970] 3 SCC 665 was
relevant. Learned counsel also argued that under section 2U) and 2(v), 'mark'
included a label. In any event, the plaintiffs trade mark was valid as it fell
within the vario11s clauses of section 9, even if it be assumed that section 32
did not bar the defendant's plea. In view of the rights conferred by registration
G
of the trade mark under section 28, it must be held that the trade mark was
infringed within section 29 inasmuch as the defendant used its mark which
was 'deceptively similar' to the plaintiff's trade mark. Apart from the right
arising out of infringement, the defendant was guilty of 'passing off of the
defendant's goods as the plaintiffs goods. In view of the principles laid down H
::::::;o"
102 SUPREME COURT REPORTS [2000) SUPP. 1 S.C.R.

A in American Cyanamid v. Ethicon Ltd., (1975) I) All. E.R.504 (HL), it is
sufficient if a triable issue is raised. No prima facie case need be proved.
Hence the appellant should be granted temporary injunction.

On the other hand, learned senior counsel for the defendant Sri Dushyant
Dave contended that even if in view of section 111 (5) of the Act, the temporary
B injunction applications could go on, the defence that plaintiffs trade mark
was invalid as it did come within section 9 could be raised in these interlocutory
proceedings. Plaintiffs trade mark was invalid as the conditions in section 9
were not satisfied and in any event, being akin to a dictionary word, it was
not "distinctive" within section 9(l)(e). The presumption under section 31(2)
C did not apply and the bar in section 32 also did not apply since seven yeats
had not elapsed from "the date of rngistration'', by the time the defence was
raised in this suit that plaintiffs mark was not distinctive. In any event, the
case fell within the exceptions mentioned in section 32 and in particular the
one in section 32(e). Counsel also contended that there was no deception
within section 29 read with section 2(d). The plaintiffs mark was the entire
D label and not the word 'PIKNIK' alone. The conditions specified in section
29 were not satisfied. Further, the dc:fendant's mark PICNIC had cross-border
reputation in 110 countries over a long period and the use of the said word
in India would not infringe the plaintiffs trade mark nor would such use
amount to 'passing off defendant's goods as the plaintiffs goods. In view
E of Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd. [1999] 7 SCC 1,
the relative strength of the case above need be considered.

On these contentions, the following points arise for consideration:

(I) Whether the defendant could, in the present interlocutory
F proceedings, based on infringement and passing off, raise any defence that
the registration of plaintiffs mark was itself "invalid' because the plaintiff's
mark did not satisfy the ingredients of clauses (a) to (e) of section 9(1) and
was, in particular, not "distinctive" as required by section 9(1)(e)?

(2) Whether, on the other hand, plaintiff could rely on the presumption
G in section 31 and also contend that under Section 32 the "validity" of the
registration of the plaintiffs mark had become conclusive on the expiry of 7
years long before defence was raised in the suit (such time reckoned from
date of application for rectification under s_ection 23(1)) and whether there
were any exceptions to the said bar?
-
H (3) Whether, assuming that section 31 and section 32 did not come in

-
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] ] 03

the way of the defendant, on merits the word 'PIKNIK' was not distinctive A
and did not satisfy section 9( 1)( e)?

(4) For grant of temporary injunction, should the Court go by principle
of prima facie case (apart from balance of convenience) or comparative
strength of the case of either parties or by finding out if the plaintiff has
raised a 'triable issue'? B
(5) Whether, assuming that plaintiffs registration was valid, the
comparative strength of the case on the question of infringement is in favour
of plaintiff?

(6) Whether, alternatively, the plaintiff had made out that for grant of C
temporary injunction treating the suit as a 'passing off action, the relative
strength of the case, was in plaintiffs favour?

(7) Whether there was unreasonable delay on the part of the plaintiff
in filing suit and whether the High Court was justified in interfering in appeal
in interlocutory proceedings? D
POINT I, 2 and 3:

The provisions of section 111 deal with 'stay of proceedings where the
validity of registration of the trade mark is questioned etc.'. Jn the present
case, while the plaintiff appellant has filed the present suit on 18.2.99 for E
permanent injunction etc. against the defendant-respondent on the ground of
'infringement' and 'passing off, the defenc!.ant 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 later in the High Court cannot preclude the plaintiff from seeking
interim relief in view of section 111 (5). F
Under section 11 l(l)(a), if in any suit the defendant pleads invalidity
under section 9 of the plaintiffs trade mark, then, (i) the Civil Court trying the
infringement suit shall stay the suit if rectification proceedings are pending.
(ii) if no such rectification proceedings are pending, the Civil Court has to raise G
an issue as to validity of plaintiff's trade mark and refer the parties to the High
Court to seek rectification. Under clause (2) if a rectification application is filed
as directed, the suit is to be stayed till rectification proceedings are over. If
such an application is not filed for rectification, it shall be deemed that the
plea is abandoned by defendant. Under section 111(5), even ifthe suit is to be

- stayed pending rectification proceedings, the plaintiff can file and have H
104 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A interlocutory applications for temporary injunction etc. to be disposed of.
The point raised by the learned senior counsel for the appellant Sri P.
Chidambaram is that the policy of the Act is not to allow the defendant to
raise any issue: relating to the "invalidity" of the plaintiff's trade mark as a
defence in a Civil Suit for infring1~ment at any time at the pleasure of the
B defendant and that a question as to validity can be decided only in rectification
proceedings, provided, on facts, such proceedings are in time ( as prescribed
in section 32) and are otherwise maintainable. If such issues cannot be raised
in the main suit itself, they cannot be raised even in interlocutory proceedings.
It is pointed out that even where no rectification proceedings are pending,
if a question relating to the "invalidity" of registration of plaintiffs mark is
c raised in defenc:e, the Court has to direct the defendant to move for rectification
and is to adjourn the suit.

Learned senior counsel, in this context, pointed out the distinction,
between the Trade Marks Act and the Patents Act, by referring us to section
D I 07 of the Patents Act, 1970. That section reads as follows:

"Section 107- Defences. etc. in suits for infringement:

(!) In any suit for infringement of a patent, every ground on which
it may be revoked under section 64 shall be available as a ground for
E defence.

(2) In any suit for infringement of a patent by the making, using or
importation of any machine, apparatus or other article or by the using
of any process or by the importation, use or distribution of any
medicine or drug, it shall be: a ground for defence that such making,
F using, importation or distribution is in accordance with any one or
more of the conditions specified in section 47 ."

It is true that under section I 07 of the Patents Act, it is permissible in any
suit for infringement of a patent, for the defendant to raise all pleas in defence
which he could have raised under section 64 of the Act for revocation and
G there is no similar provision in the Trade Marks Act, 1958. However, the
question is as to what extent under the Trade Marks Act, 1958 sections 31
and 32, come in the way of the defendant.

Now section 9(1) sets down the various requ1S1tes for a "valid"
registration of a trade mark in parts A and B of the register. Section 9(1) is
H to be read alongwith section 9(3) which defines the word 'distinctive' used
-
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.J 105
in section 9(1Xe). Section 9 reads as follows: A
"Section 9: Requisites for registration in Parts A and B of the
register -

( l) A trade mark shall not be registered in Part A of the register unless
it contains or consists of at least one of the following essential B
particulars, namely: -

(a) the name of a company, individual or firm represented in a
special or particular manner;

(b) the signature of the applicant for registration or some predecessor C
in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character
or quality of the goods and not being, according to its ordinary
signification, a geographical name or a surname or a personal D
name or any common abbreviation thereof or the name of a sect
caste or tribe in India;
(e) any other distinctive mark.
(2)
E
(3) For the purposes of this Act, the expression 'distinctive' in
relation to the goods in respect of which a trade mark is proposed
to be registered means adapted to distinguish goods with which
the proprietor of the trade mark is or may be connected in the
course of trade from goods in the case of which no such
connection subsists either generally or, where the trade mark is F
proposed to be registered subject to limitations, in relation to
use within the extent of the registration."

For the present, we are not referring to the other sub- clauses of section 9.
If a trade mark does not satisfy section 9, it is well settled that it is to be G
treated as 'invalid'.

The defence of the defendant-respondent based on section 9(c),(d) and
(e) is that the word 'PIKNIK' is akin to a dictionary word and is not an
inventive word nor a word having no direct relation to the character or quality
of goods nor a distinctive word and hence sub-clauses (c), (d) (e) of section H
106 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A 9(1) do not apply and the registration of the plaintiffs trade mark is in itself
invalid. This brings us to sections 31 and 32 for deciding whether the plea
can be raised in defence in these interlocutory proceedings.
·~
Section 31 states that registration is to be prima facie evidence of
validity. Section 31 reads as follows:
B "Section 31: Registration to be prima facie evidence of validity -
(1) In all legal proceedings relating to a trade mark registered under
this Act (including application under section 56), the original
registration of the trade mark and of all subsequent assignments and
transmissions of the trad~: mark shall be prima facie evidence of the
c validity thereof.
(2) In all legal proceedings as aforesaid a trade mark registered in Part
A of the register shall not be held to be invalid on the ground that
it was not a registrable trade mark under section 9 except upon
evidence of distinctiveness and that such evidence was not submitted
D to the Registrar before registration, in all legal proceedings as aforesaid,
if it is proved that the trade mark had been used by the registered
proprietor or his predecessor in title as to have become distinctive at
the date of registration."
Section 32 deals with conclusive proof of validity of the trade mark and reads
E as follows:
"Section 32: Registration to be conclusive as to validity after
seven years -
Subject to the provisions of section 35 and section 46, in all legal
F proceedings relating to a trade mark registered in Part A of the register
(including applications wider section 56), the original registration of
the trade mark shall after the expiration of seven years from the date
of such registration, be taken to be valid in all respects unless it is
proved -
G (a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provision
of section 11 or offends against the provision of that section on the
date of commencement of the proceedings; or
(c) that the trade mark was not at the commencement of the
H proceedings, distinctive of the goods of the registered proprietor."

J
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] J07
While section 31 raises a presumption as to validity of registration, section A
32 bars any such question being raised after seven years; subject of course
to some exceptions.

In our view, any decision on the question of 'validity' of the appellant's
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 B
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 those issues are to be decided
in the rectification proceedings. We are of the view that the case before us C
can be disposed of by considering whether there is primafacie any deception
and hence infringement and whether there is any 'passing off. Points I, 2
and 3 are therefore not decided.

POINT4:

This point deals with the principles applicable for grant of temporary D
injunction in trade mark cases. Before American Cyanamid Co,. v. Ethicon
Ltd (1975) I ALL E.R. 504 (HL), it was customary for the Courts to go into
primafacie case in trade mark cases for grant or refusal of temporary injunction.
But in American Cyanamid, it was observed that it was sufficient if a "triable
issue" was presented by the plaintiff and the merits need not be gone into. E
The said judgment was referred to by this Court in Wander Ltd. v. Antox India
P. Ltd., [1990] Supple. SCC 727. The judgment in Wander Ltd was followed
in Power Control Appliances v. Sumeet Machines (P) Ltd, [1994] 2 SCC 448.
But in Gujarat Bottling Co. Ltd v. Coca Cola Co., [1995] 5 SCC 545, this
Court again adverted to the primafacie case principle while granting temporary F
injunction.

All these rulings have been reviewed recently in Colgate Palmolive
(India) Ltd v. Hindustan Lever Ltd, [1999] 7 SCC I. It was pointed to this
Court that there was considerable criticism of the principles laid down in
American Cyanamid. (See also Floyd, Interlocutory Injunctions since Cyanamid G
(1983) E I PR 238, (Cole, Interlocutory Injunctions in UK. Patent Cases (I 979)
E I PR 7 I (see also Edenborough M and Tritton, American Cyanamid revisited
(I 996) EI PR 234 and Philipps in 1997 JBL 486. This Court referred to the
recent judgment of Laddie in UK.

In U.K., Laddie, J. reconsidered the principle recently and explained H
108 SUPREME COURT REPORTS [2000] SUPP. I S.C.R,

A American Cyanamid in his judgment in Series 5 Software v. Clark, (1996) l
All ER 853 (Ch.D). The learned Jud1~e observed that in American Cyanamid,
Lord Diplock did not lay down that t.~e relative strength of the case of each
party need not be gone into. Thereafter, this Court in Palmolive case has
referred to Laddie J's view and said that the view of Laddie, J. is correct and
B 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
Barclay's Bank Inc v. R.B.S. Advanta, (1998) RPC 307 where such a question
C 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
decided accordingly.

POINT5:
D
Under this point, we propose to trace the legal principles applicable to
cases of infringement with particular reference to dissimilarities in essential
features of a devise or mark.
Under section 29 of the Act, a plaintiff in a suit on basis of infringement
E has to prove not only that his trade mark is infringed by a person who is not
a registered proprietor of the mark or a registered user thereof but that the
said person is using a mark in the course of his trade, "which is identical with
or deceptively similar to the trade mark of the plaintiff, in such manner as to
render the use of the mark likely to be mistaken as the registered trade mark".
Under section 2(d), the words "deceptively similar" are defined as follows: "a
F mark shall be deemed to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause confusion".

We shall now refer to the broad principles applicable to infringement
actions and in particular to devices, labels and composite marks.

G Essential Features if copied:

It is well-settled that the plaintiff must prove that essential features of
his registered mark have been copied. The onus to prove 'deception' is on
the part of the plaintiff who alleges infringement. A mark is said to be
infringed by another trader if, even without using the whole of it, the latter
H uses one or more of its "essential features". The identification of an essential
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.) ) 09

feature depends partly on the courts' own judgment and partly on the burden A
of the evidence that is placed before it. Ascertainment of an essential feature
is not to be by ocular test alone; it is impossible to exclude consideration
of the sound of words forming part or the whole. of the mark. (Kerly, Law of
Trade Marks and Trade Names, I Ith Ed. 1983, para 14.21).

It is no answer to a charge of infringement - as contrasted with a B
passing off action - that the defendant's mark, whilst including the plaintitr s
mark, includes other matters too. ~till less is it an answer that by something
outside that actual mark the defendant has distinguished his goods from
those of the plaintiff - by adding his own name (Kerly para 14.22). But this
principle is not absolute. It is also accepted that addition of his own name C
by defendant is an element to be considered and may tum the scales in favour
of the defendant. In same para 14.22, Kerly says:

"But the use of the defendant's name as part of the mark complained
of is an element to be considered and in some cases it has turned the
scale in his favour" (Jews bury & Brown v. Andrew & Atkinson, ( 1911) D
28. R.P.C. 293)"
Jewsbury case was a case relating to infringement. (Of course, in para 14.25
Kerly also refers to cases where addition of defendant's name has not turned
the scales).
So far as resemblance in words is concerned, Justice Parker in Pianotist E
Co's Application (Pianola) : (1906) 23 RPC 774 (at 777) has stated as follows:

"You must take the two words. You must judge of them, both by
their look and by their sound. You must consider the goods to which
they are to be applied. You must consider the nature and kind of
customer who would be likely to buy the goods. In fact, you must F
consider all the surrounding circumstances and you must further
consider what is likely to happen if each of these trade marks is used
in a normal way as a trade mark for the goods of the respective owners
of the marks. If considering all those circumstances, you come to the
conclusion that there will be confusion - that is to say, not necessarily G
that one man will be injured and the other will gain illicit benefit, but
there will be confusion in the mind of the public which will lead to
confusion in the goods - then you may refuse registration, or rather
you must refuse registration in that case".

This dictum has been quoted with approval by this Court in Amritdhara H
110 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A Pharmacy v. Satya Dea Gupta, AIR (1963) SC 449 and Roche v. Geoffrey
Manners and Co. Pvt. Ltd., AIR (1970) SC 2062.

Devices and Composite Marks:

But the considerations relating to words, however, differ appreciably
B when device marks are to be compared or when a device mark is to be
compared with a word mark. (Kerly para 17 .07). After referring to the factors
mentioned by Parker, J. in the above case, it is stated in Halsbury's Laws of
England, (Vol. 38, 3rd Ed., para 986) as follows:
"These considerations differ to some extent when device marks are
being compared or when a device mark is compared with a word
c mmk"
Dissimilarity in essential features in devices and composite marks
more important than some similarity:

It has been stressed for the appellant that since the word PICNIC is
D used by defendant while plaintiff is using its misspelling PIKNIK, this is an
essential feature which is similar phonetically or visually, and there is therefore
infringement. It is argued that presence of even one essential feature in
defendant's mark is sufficient. In our opinion, in the case of devices and
composite marks, the above principle has not been strictly applied. The
English Courts have laid emphasis more on dissimilarities in essential features
E rather than on similarity. The "whole thing" principle is based on first impression
as seen by the Court. We shall now rnfer to these principles laid down in the
English cases.
When the question arises whether a mark applied for bears such
resemblance to another mark as to be likely to deceive, it should be determined
F by considering what is the leading character of each. The one might contain
many, even most, of the same elements as the other, and yet the leading, or
it may be the only, impression left on the mind might be very different. On
the other hand, a critical comparison of the two marks might disclose numerous
points of difference, and yet the idea which would remain with any person
G seeing them apart at different times might be the same. Thus, it is clear that
a mark is infringed if the essential features, or essential particulars of it, are
copied. In cases of device marks, especially, it is helpful before comparing the
marks, to consider what are the essentials of the plaintiffs device. (Kerly para
17 .08) The trade mark is the whole thing - the whole picture on each has to
be considered. There may be differences in the parts of each mark, but it is
H important to consider the mode in which the parts are put together and to
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] JJJ
judge whether the dissimilarity of the part or parts is enough to make the A
whole dissimilar. It has been said that if the only resemblances between two
marks are in parts which are common, so that the owner of the one has taken
nothing which is peculiar to the other, then there is at all events no
infringement, at any rate unless the plaintiff had a distinctive arrangement
of the common elements. (But this approach is hardly suited to a comparison B
of word marks; and even in relation to label marks or other features of get-
up, it would be more appropriate to consider the case as a whole, with due
regard to the background provided by any other marks shown to be in use
(Kerly para 17 .17). Therefore, the question is whether the defendant has, - so
far as the common feature is concerned, - copied any distinctive arrangement
of the common elements? Or has copied any unusual feature of the common C
element (Cril'pin's Appln. (1917) 34 RPC 249)(see Kerly para 17.19, fn.77). The
marks, names or get-up concerned must always be considered as the whole
thing, as the true test is whether the totality of the impression given both
orally and visually is such that it is likely to cause mistake, deception or
confusion (Halsbury Vol.38, 3rd Ed. para 987).
D
We next come to the crucial test laid down by Evershed M.R. in
Broadhead's Application, (1950) 67 RPC 209 at 215 which was a case relating
to opposition to registration. The Master of Rolls followed the observations
of Lord Russell in Coca Cola Co. of Canada v. Pepsi Cola Co. of Canada
(which was an infringement action) (1942) 59 RPC 127 and observed as E
follows:

"Where you get a common denominator, you must in looking at the
competing formulas, pay much more regard to the parts of the
formulas which are not common -although it does not flow from that
that you must treat the words as though the common part was not F
there at all".

Where common marks are included in the rival trade marks, more regard
is to be paid to the parts not common and the proper course is to look at the
marks as whole, but at the same time not to disregard the parts which are
common. Halsbury (3rd Ed. para 992) also says: where there are common G
elements to two or more marks, more regard must be paid to the parts that
are not common but the common parts cannot be disregarded. (Coca Cola
Co. a/Canada Ltd v. Pepsi Cola Co. a/Canada Ltd., (1942) 1 All. E.R. 615
(PC).

The above principles have been laid down in English law. H
112 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A Decisions of this Court -infringement, essential features and the whole
thing.

This Court has laid down in Corn Products Refining Co. v. Shangrila
Food Products Ltd, AIR (1960) SC 142, which was a case of infringement,
that it would be for the court to decide whether the marks were similar. It was
B observed that "in deciding the qm~stion of similarity between two marks, the
marks have to be considered as· a whole". Again in K.K. Chinna Krishna
Chettiar v. Sri Ambal and Co. and Anr., AIR (1970) SC 146, where the
question of similarity arose at the stage of opposition to the appellant's mark
by the respondents (who had a registered trade mark), it was observed that:
C "it is for the court to decide the question on a comparison of the competing
tna'r!S as a whole." The resemblance between the two marks must be considered
with reference to the ear as well as the eye". In Roche and Co. v. Geoffrey
Manners and Co. Pvt. Ltd, AIR (1970) SC 2062, the question of 'deceptive
similarity' was raised by the appellant (a registered trade mark holder) for
removal of the respondent's trade mark, in rectification proceedings. (The
D decision is relevant in an infringement action except that the burden of proof
in an infringement action is on the plaintiff while in an application for
rectification it is the applicant). It was again observed in the above case that:
"it is necessary to apply both the visual and phonetic tests". "It is also
important that the marks must be compared as whole". "The true test is
E whether the totality of the proposed trade mark is such that it is likely to
cause deception or confusion or mistake in the minds of persons accustomed
to the existing trade mark". In yet another case of an infringement action,
Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR (1972) SC 1359, the
question was in relation to a wrapper with the words 'Gluco biscuit' and the
particular colour scheme, the general get up used for sale of Parle's Gluco
F Biscuit' soI
printed on the wrapp(:r..
There was a farmyard with a girl in the
centre carrying a pail of water and cows and hens around her in the background
of a fann-house. The defendant was selling biscuits with the name 'Glucose
Biscuits'. The wrapper contained picture of a girl supporting with one hand
a
a bundle of hay on her head and carrying a sickle and bundle of food, with
G cows and hens around, in the background of a building. This Court held, on
those facts, that in an infringement action, it was sufficient if there was
'overall similarity' as would mislead a person usually dealing with one to
accept the other if offered to him. Here the packets were of the same size and
the colour scheme and design were having close resemblance. The marks
should not be kept side by side and compared. The essential features of both
H marking were a girl with one arm raised and carrying something in the other
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] 113

while the cows or hens were near her, in the background of a house. The A
decision of this Court in Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, AIR ( 1965) SC 980, was a case where the respondent-registered
holder of the trade mark opposed the appellant's registration. The question
of deception arose in that context. Both were using the word 'Navratna
Pharmaceutical laboratories' in connection with sale of Ayurvedic medicines. B
It was held that for judging whether the later mark was deceptive, it was
sufficient if the similarity was so close visually, phonetically or otherwise. If
the essential features had been proved to be adopted by the opposite party,
that was sufficient. The fact that the get-up, packing and other writing or
marks on the goods or packets showed marked difference was not material,
though such features could be material in a passing-off action and the C
defendant might escape liability by showing some additional matter to
distinguish his goods. The purpose of comparison was to see if the essential
features were different. The object of inquiry was to find out if the defendant's
mark was as a whole similar to the plaintiffs registered mark. Ruston and
Hornsby Ltd. v. The Zamindara Engineering Co., [1969] 2 SCC 727 was again D
a case of an infringement action. It was admitted that the words 'Ruston and
Rustam' were deceptively similar and the fact that to the latter, "India" was
suffixed made no difference. The court pointed out the difference between an
infringement action and a passing off action and held that if there was
colourable imitation, the fact that the get up was different was not relevant
in an infringement action though it might have had relevance in a passing off E
action, and in that context referred to Saville Perfumery Ltd. v. Jump Perfect
Ltd., (1941) 58 RPC 147 161.

Broadly, under our law as seen above, it can be said that stress is laid
down on common features rather than on differences on essential features,
except for a passing reference to a limited extent in one case. F
Difference in essential features are also relevant under Indian Law:

It appears to us that this Court did not have occasion to decide, as far
as we are able to see, an issue where there were also differences in essential
features nor to consider the extent to which the differences are to be given G
importance over similarities. Such a question has arisen in the present case
and that is why we have referred to the principles of English Law relating to
differences in essential features which principles, in our opinion, are equally
applicable in our country.

Application of Principles to facts of this case: H
114 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A If differences in essential features are relevant, the next question is as
to what is the position on facts.

The first question therefore is as to what, on the facts, are the essential
features of the plaintiffs mark? It is clear that apart from the word PIKNIK,
the essential features are also the special script of these words in block letters
B and the curve in which these words are inscribed and the caricature of the
boy with a hat occurring between the words Kand Non the plaintiffs mark.
On the other hand, the defendant's mark contains the words PICNIC in a
straightline, the script is normal and the words 'Cadbury' are written above
the words PICNIC. Neither the peculiar script nor the curve nor the boy with
C a hat are found in the defendant's mark. It is true that there is phonetic
similarity and use of the word PICNIC. But what is the effect of the
dissimilarities?

This is the crucial part of the case. It is here that sufficient care is to
be taken in applying the principles. In our opinion, in the present case, three
D tests to which reference has been made above, have to be applied. The first
one is this: Is there any special aspect of the common feature which has been
copied? The second test will be with reference to the ·mode in which the parts
are put together differently? That is to say whether the dissimilarity of the
part or parts is enough to mark the whole thing dissimilar (Kerly para 17 .17
E referred to above). The third test is whether When there are common elements,
should one not pay more regard to the parts which are not common, while
at the same time not disregarding the common parts? What is the first
impression?

As to the first test, whether there are any peculiar features of the
p common part which have been copied, it is seen that the peculiar aspects of
the common features of PIKNIK namely the peculiar script and the curve have
not been copied; then, as to the second test, we have to see the dissimilarity
in the part or parts and if it has made the whole thing dissimilar. Absence of
the peculiar script in the letters, the curve and the absence of the caricature
of the boy with a hat, in our view, have made the whole thing look dissimilar.
G Then, as to the third test, the above three dissimilarities have to be given
more importance than the phonetic similarity or the similarity in the use of the
word PICNIC for PIKNIK. That is how these three tests have to be applied
in this case. On first impression, we are of the view that the dissimilarities
appear to be clear and more striking to the naked eye than any similarity
H between the marks. Thus, on the whole, the essential features are different.
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] ll5
I

Learned senior counsel for the respondent had also strongly relied on A
Registrar, Trade Marks v. Ashok Chandra Rakhit, AIR (1955) SC 558 to
contend that, in any event, the plaintiff had registered only the label and not
the words PIKNIK. In that case, this Court quoted (P.565) the following words
from Pinto v. Badman, (1891) 8 RPC 181 at 191 to the following effect:

"The truth is that the label does not consist of each particular part B
of it, but consists of the combination of them all."

We do not propose to go into the applicability of the above decision to the
case before us. There, the question was whether the Registrar could insist
that a particular word contained in the label should be disclaimed.
c
In the result, we hold on the question of infringement that on an
examination of the relative strength of the pleas, as stated in Palmolive, it
is shown that the chances, on facts, are more in favour of the defendant rather
than in favour of the plaintiff and that the plaintiff is not entitled to temporary
injunction. This finding on facts is confined to these interlocutory proceedings D
only.

Deceive or confuse:

Our discussion under this head is again in the context of the relevant
strength of the case of the parties and for the purposes of the temporary
injunction as laid down in Palmolive. E
Section 29 uses the words 'deceptively similar' and section ·2(I)(d)
defines 'deceptively similar' as situations where one is 'deceiving' others or
'confusing' others. We have to keep in view the distinction between the
words 'deceive' and 'confuse' used in section 2(l)(d). These words which F
occur in the various trade mark statutes have been explained in Parker-Knoll
v. Knoll International, (1962) RPC 265 (HL) (pp.273-274)] by Lord Denning
as follows :

"Looking to the natural meaning of the words, I would make two
observations: first, the offending mark must 'so nearly resemble' the G
registered mark as to be 'likely' to deceive or cause confusion. It is
not necessary that it should be intended to deceive or intended to
cause confusion. You do not have to look into the mind of the user
to see what he intended. It is its probable effect on ordinary people
which you have to consider. No doubt, if you find that he did not
intend to deceive or cause confusion, you will give him credit for H
116 SljPREMF "nURT REPORTS [2000] SUPP. I S.C.R.

A success in his intentions. You will not hesitate to hold that his use
of it is likely to deceive or cause confusion. But if he had no such
intention, and was completely honest, then you will look carefully to
see whether it is likely to deceive or cause confusion before you find
him guilty of infringement.

B Secondly, 'to deceive' is one thing. To cause 'confusion' is
another. The difference is this: when you deceive a man, you tell him
a lie. You make a false representation to him and thereby cause him
to believe a thing to be true which is false. You may not do it
knowingly, or intentionally but still you do it, and so you deceive him.
But you may cause confusion without telling him a lie at all, and
c without making any false representation to him. You may indeed tell
him the truth, the whole truth and nothing but the truth, but still you
may cause confusion in his mind, not by any fault of yours, but
because he has not the knowledge or ability to distinguish it from the
other pieces of truth knowri to him or because he may not even take
D the trouble to do so."

The above passage has been quoted by this Court in Roche v. Geoffrey
Manners, AIR (1970) SC 2062 {2064).

Therefore if, in a given case, the essential features have been copied,
E the intention to deceive or to cause confusion is not relevant in an infringement
action. Even if, without an intention to deceive, a false representation is made,
it can be sufficient. Similarly, confusion may be created unintentionally but
yet the purchaser of goods may get confused for he does not have the
knowledge of facts which can enable him not to get confused.
F In the present case, this aspect need not detain us in as much as we
have already held that the relative strength of the case is in favour of the
defendant. Further this aspect is connected with the type of buyer whom the
law has in mind and we shall be presently dealing with this aspect also.

G It is not necessary for us to go into the contention of the respondent
that the defendant was using the word PICNIC in other countries over a long
period along with the word 'Cadbury' and that a question of trans~order
reputation protects the defendant. Reliance is placed for the respondent on
N.R. Dongre v. Whirlpool Corporation and Anr., [1996] 5 SCC 714 for this
purpose. We do not think it necessary to go into this aspect. Such a question,
H if raised in the suit, can be gone into on its own merits.
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J.] JJ7
For the above reasons, we hold that on the question of the relative A
strength, the decision must go in favour of the defendant that there is no
infringement and the High Court was right in refusing temporary injunction.
Point 5 is decided accordingly.

Point 6:
B
Passing off and irifringement-dijferences:

Here the point is in relation to relative strength of the parties on the
question of 'passing off'. As discussed under Point 5, the proof of resemblance
or similarity in cases of passing off and infringement are different. In a
passing off action additions, get up or trade-dress might be relevant to enable
the defendant to escape. In infringement cases, such facts do not assume
c
relevance. [See Durga Dutt Sharma v. Navaratna Phamaceutical Laburatories
Ltd., AIR (1965) SC 980; Ruston & Hornsby Ltd. v. The Zamindara
Engineering Co., AIR (1970) SC 1649 and Wander Ltd v. Antox India Pvt.
Ltd, [1990] Supple. sec 727.
D
It is possible that, on the same facts, a suit for passing off may fail but
a suit for infringement may succeed because the additions, the get up and
trade dress may enable a defendant to escape in a passing off action. A
somewhat similar but interesting situation arose in a dispute between two
companies. In N.S. Thread & Co. v. James Chadwick & Bros., AIR (1948)
Mad. 481, the passing off action failed. But thereafter James Chadwick Co. E
succeeded in an appeal arising out of the registration proceedings and the
said judgment was confirmed by this Court in N.S. Thread & Co. v. James
Chadwick & Bros., AIR (1953) SC 357. It was held that the judgment in the
passing off case could not be relied upon by the opposite side in latter
registration proceedings. F
In the same tone, Halsbury (Trade Marks, 4th Ed., 1984 Vol. 48, para 187)
says that in a passing off action the "degree of similarity of the name, mark
or other features concerned is important but not necessarily decisive, so that
an action for infringement of a registered trade mark may succeed on the same
facts where a passing off action fails or vice versa". As to vice-versa, Kerly G
says (para 16.12), an infringement action may fail where plaintiff cannot prove
registration or that its registration extends to the goods or to all the goods
in question or because the registration is invalid and yet the plaintiff may
show that by imitating the mark or otherwise, the defendant has done what
is calculated to pass off his goods as those of plaintiff.
H
ll8 SUPREME COURT REPORTS [2000] SUPP. I S.C.R.

A In Schweppes Ltd. v. Gibbens, (1905) 22 RPC 601 (HL) Lord Halsbury
said, while dealing with a passing off action that "the whole question in these
cases is whether the thing -taken in its entirety, looking at the whole thing
- is such that in the ordinary course of things a person with reasonable
comprehension and with proper insiight would be deceived".

B Defendant's name on his goods is an indication of there being no case of
passing off:

In the present case, defendant's goods contain the words 'Cadbury' on
their wrapper. As per the principle laid down in Fisons Ltd. v. E.J. Godwin
(1976) RPC 653, the occurrence of the name 'Cadbury' on the defendant's
C wrapper is a factor to be considered while deciding the question of passing
off. Similarly in King & Co. ltd. v. Gillard and Co. ltd., [22 RPC 327] and
Cadbury-Schweppes Pvt. ltd v. The Pub. Squash Ltd, (1981) RPC 429, it was
held that the presence of defendant's name on his goods was an indication
that there was no passing off, even if the trade dress was similar.

D The fact that the defendant's wrapper contains the word 'Cadbury'
above the words PICNIC is therefore a factor which is to be taken into
account

Buyer's ignorance and chances of being deceived:

E As to scope of a buyer being deceived, in a passing off action, the
following principles have to be borne in mind. Lord Romer, LJ has said in
Payton & Co. v. Snelling lampard & Co., (1900) 17 RPC 48 that it is a
misconception to refer to the confusion that can be created upon an ignorant
customer. The kind of customer that the Courts ought to think of in these
F cases is the customer who knows the distinguishing characteristics of the
plaintiff's goods, those characteristics which distinguish his goods from other
goods in the market so far as relates to general characteristics. If he does not
know that, he is not a customer whose views can properly be regarded by
the Court. [See the cases quoted in N.S. Thread & Co. v. Chadwick & Bros.,
AIR (1948) Mad. 481, which was a passing off action]. In Schweppes' case,
G Lord Halsbury said, if a person is so careless that he does not look and does
not treat the label fairly but takes the bottle without sufficient consideration
and without reading what is written very plainly indeed up the face of the
label, you cannot say he is deceived.

In our view, the trial Court in the present case went wrong in principle
H in holding that there was scope for a purchaser being misled. The conclusion
S.M. DYECHEM LTD. v. CADBURY (INDIA) LTD. [M. JAGANNADHA RAO, J .] 119

was arrived at without noticing the above principles. A
In the result, on the question of passing off, the relative strength of
the case again appears to us to be more in defendant's favour. Point 6 is
decided accordingly.

Point 7: B
The issue of !aches of the appellant-plaintiff, though relied upon by the
respondent, does not, in view of our finding at Point 5, assume any significance
in this case.

Coming to the question whether the appellate court was right in C
interfering with the discretion of the trial Court and in vacating injunction, we
are of the view that, on facts, interference was justifiable. If wrong principles
were applied by the trial Court under Order 39, Rule I CPC, the appellate Court
could certainly interfere in interlocutory proceedings under Order 39, Rule I
CPC. Here, the trial Court gave importance to phonetic similarity and did not D
refer to the differences in essential features. It did not also have the wary
customer in mind. On the other hand, the High Court's approach in this behalf
was right as it noticed the dissimilarities in the essential features and concluded
that viewed as a whole, there was neither similarity nor scope for deception
nor confusion. (No doubt both Courts went into the validity of the plaintiff's
registered mark and into the question of' distinctiveness' of the word PIKNIK E
under section 9(1Xe). But in our view that was not necessary). Thus, when
wrong principles were applied by the trial Court while refusing temporary
injunction, the High Court could certainly interfere. Point 7 is decided
accordingly.

In the result, the appeal is dismissed. We, however, reiterate the direction F
given by High Court in regard to maintenance of accounts and the undertaking
to be given by the defendant for damages, if any, that may be granted in the
suit, in case the suit succeeds.

We make it clear that the above findings on facts are for the purpose
of the temporary injunction and will not come in the way of the Court in the G\
suit to decide the matter on the evidence produced.

v.s.s. Appeal dismissed.