Heinz secures Supreme Court backing in GLUCON-D Case

In Heinz Italia v Dabur India Ltd (Civil Appeal 2576/2007, May 18 2007), the Supreme Court of India has overturned earlier interlocutory orders of the trial court and the appellate High Court.

Heinz Italia owns the registered mark GLUCON-D in Class 30 of the Nice Classification. Heinz or its predecessor in title has used the mark GLUCON-D since 1940. Since at least 1980, its Glucon-D products have been sold in packaging material featuring the concept of a 'happy family' and a distinctive green colour scheme.

Dabur India Ltd has been using a GLUCOSE-D mark since 1989 and the packaging of the food product sold under that mark incorporated a similar 'happy family' concept to that used by Heinz.

Heinz initiated action against Dabur in the year 2003 and applied for interlocutory relief on account of infringement and passing off. Both the trial court and the appellate High Court rejected Heinz's application on the basis that 'glucose' is a generic term and that there was considerable delay on Heinz's part in initiating action. Heinz appealed.

The Supreme Court overturned the earlier rulings and ordered an injunction preventing, Dabur from using:

• the mark GLUCOSE-D on the basis that it is phonetically similar to Heinz's registered mark GLUCON-D; and
  
  
• the packaging material copying the 'happy family' concept and the overall colour scheme of Heinz's Glucon-D products.
  

The Supreme Court's decision included the following points of note:

• The GLUCOSE-D mark was deceptively similar to GLUCON-D and the fact that 'glucose' is a generic term did not prevent the grant of an injunction.
  
  
• The packaging material of the GLUCOSE-D products copied the concept of a 'happy family' used by Heinz and in which it had established a reputation. The fact that there were certain dissimilarities between the packaging material of the two products was immaterial.
  
  
• When there is prima facie evidence of dishonesty in the sense that there is a close resemblance between the marks at issue (ie, GLUCON-D and GLUCOSE-D in the case at hand) and the packaging material (here, the colour scheme and the overall concept of a 'happy family' having been copied by Dabur), even long delays in initiating action will not prevent the grant of an interlocutory injunction and this is the case even if such an injunction has been refused by the trial courts in the exercise of their discretion.
  

Mustafa Safiyuddin, DSK Legal, Mumbai