Court Rejects Dyechem Plea On Piknik Brand

In a landmark judgment, the Supreme Court has dismissed SM Dyechem's appeal that Cadbury (India) had infringed on its trade mark, Piknik, by marketing a similar sounding chocolate product with different spelling, Picnic.

Dyechem had earlier got an interim injunction against Cadbury in Gujarat, but the high court there had vacated the order. The company then appealed to the Supreme Court.

In a 40-page judgment delivered by Justice M Jagannadha Rao and Justice Y K Sabharwal, the appeal was dismissed after laying down several principles on the trade mark law.

The court held that in trade mark cases, attention must be paid to the question of "comparable strength" of the cases of the contesting parties, besides the balance of convenience.

 

Whether the company which files the complaint is likely to win the suit should be considered by the court, the judgment stressed. In this case, the judges said the relative strength of the case was in favour of Cadbury.Dyechem had argued that its trade mark _ Piknik- using the misspelling, was an essential feature which is similar phonetically and visually with Picnic, the word used by Cadbury. The adoption of even one essential feature by the rival company would infringe the law. The court rejected the contention.

The judgment laid down three tests to be applied in cases like this. These are:

* Is there any special aspect of the common feature which has been copied?

* Is the dissimilarity on the part or parts enough to mark the whole thing dissimilar?

* 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, and what is the first impression?