India: "GLUCON-D" – Not An Exclusive Property

The Mark "GLUCON-D" was granted registration by the Indian Trade Marks Registry under registration No. 305664/30 on May 21, 1975 in relation to "Glucose (for food), Flour and Preparations Made from Cereals, Bread, Biscuits (Not for animals), Pastry and Confectionary (Non-Medicated), Milk Chocolate" in the name of Glaxo Laboratories (Indian) Limited. In the year 1994 the Mark "GLUCON-D" became the property of Heinz Italia S.R.I. The subject Mark had been consistently used by both the proprietors of the Mark and sold in a package which is green in colour, showing a family of three together with the words "GLUCON-D".

In the year July 2002, it came to the knowledge of Heinz that Dabur India Limited had launched a product under the trademark "GLUCOSE-D" in a packet, which was deceptively similar to the package containing product of the "GLUCON-D". Thereby, Heinz and Glaxo filed a suit for infringement and for passing off accompanied with an application for Interim injunction alleging that the package of "GLUCOSE-D" was so very identical to the package of "GLUCON-D" that the overall impression which came to be given out was that any average man of imperfect reflection was bound to get confused. Dabur, however, admitted the use of the Trade Mark "GLUCOSE-D" but denied that the boxes/package used by them were in any manner similar to that of "GLUCON-D". The Respondent further argued that the expression "GLUCOSE" was a generic description of the product being sold by it and no monopoly could be claimed in respect of such an expression by anyone. The Respondent also argued that the expression "GLUCOSE" signifies well known ingredients used in the composition of the product namely, Dextrose Monohydrates and Vitamin-D which constitute Glucose. It was also their case that there was no infringement of the trade mark "GLUCON" by user of the generic description of the goods by the terms "GLUCOSE-D" and that there was no description nor any similarity between the Cartons of the two products in as much as they had specifically used the words "DABUR GLUCOSE-D" and that they had been selling their goods as such, having a green background since 1989 without any objection. They also asserted that that colour green was chosen by the Legislature in the Notification under the provisions of Prevention of Food Adulteration Rules, 1955 as a colour symbolizing "vegetarian food". The Respondent also raised the delay in institution of suit as ground of defence.

The Additional District Judge held that the Plaintiff, that is, Heinz has not been able to make out a prima facie case for ad interim injunction and accordingly the application fro the same was dismissed. The Plaintiff filed in appeal before the High Court of Punjab and Haryana and this Court reconsidered the same limited question.

The High Court looked into the Certified Copy of the Registration Certificate and noted that there were two columns in the registration certificate. Column a was pertaining to the goods description and column (b) was pertaining to conditions/limitations attached, which read as follows:-

"Registration of this trademark shall give no right to the exclusive use of the letter "D""

The third equally relevant factor noted by the High Court was the registration of the trademark type, which said "GLUCON-D".

The goods described under this trade mark, the High Court noted are GLUCOSE for food and it also includes GLUCOSE for flour and preparations made from cereals, Glucose used in bread, GLUCOSE used in biscuits but not for animals, GLUCOSE used in pastry and confectionary which are not medicated and GLUCOSE used in milk chocolates. Thus, the trade mark is GLUCON-D but under its registration it has been clarified that it will contain GLUCOSE used in the aforementioned items for food. The High Court further observed that the word "GLUCOSE" means grape sugar or Dextrose and it is a word which is included in all the dictionaries of the world. Thus the word "GLUCOSE" cannot be said to be a monopoly or an exclusive property of a particular person or an entity. Further the Judge observed that the letter "D" is a letter of the English alphabet and it also cannot be claimed by any individual or a person to be their exclusive prerogative or monopoly. The Court in Appeal also noted the delay in institution of the infringement suit.

In view of the above it was held in appeal that while Heinz and Glaxo, the appellants are using the word "GLUCON-D", the Respondent, Dabur, on the other hand have used two common English words namely "GLUCOSE" and the letter "D". Accordingly there is no prima facie case made out by the Plaintiff for grant of interim injunction and the order passed by the Additional District Judge was confirmed.

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