S.M. DYECHEM LTD. versus CADBURY (INDIA) LTD.

Citation: [2000] SUPP. 1 S.C.R. 86 · Decided: 09-05-2000 · Supreme Court of India · Bench: M. JAGANNADHA RAO · Disposal: Dismissed
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Judgment (excerpt)

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 of convenience 
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. 
D 
Sections 2(1) (d). 29, 105 and 106-Trademark-lnfringement of+-
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: 
"Deceptively similar", "deceive" and "confusion" -Meaning of- In the 
context of S.2(/)(d) of the Trade and Merchandise Marks Act, 1958. 
B 
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 inte
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