Judgment :- B. AKBAR BASHA KHADIRI, J. Both the applications have arisen in this way. The application in Orl. Application No. 1 (144 of 1998) is engaged in manufacturing and marketing of biscuits and sweets. The applicant is the registered proprietor of the trade mark GLUCO in respect of biscuits. The trade mark GLUCO was conceived about fifty years ago and was registered on 10-2-1949 under the Trade and Merchandise Marks Act, bearing No. 137633. Due to continuous and exclusive usage the trade mark GLUCO has become distinctive and exclusively identified with the applicant's biscuits. The applicant's turnover exceeds several crores of rupees and the applicant had been spending huge amounts on advertisements. Recently, the applicant came to know that the respondent is selling biscuits under the mark GLUCOGOLD. The two words 'GLUCO' and 'GOLD' combined together to form another word "GLUCOGOLD', which does not have any meaning. This is an attempt by the respondent to indirectly infringe the statutory restrain upon it. When public see the trade mark GLUCOGOLD, they would tend to think that the said product is also that of the applicant. The respondent is deliberately adopting the word 'GLUCOGOLD' to cash in on the wide reputation enjoyed by the applicant in respect of its trade mark GLUCO and to deceive the people that the product emanates from the applicant. There had been exchange of the letters between the applicant and the respondent in this regard which culminated in holding a meeting between the Chief Executives of the applicant and the respondent on 20th November, 1997 at the applicant's office in Mumbai. At the meeting, the respondent's executive offered to, (1) keep the brand name GLUCOGOLD as one word without any dissection; (2) refrain from prominent use of the GLUCO in the present or in future by changing the size, the word GOLD to make the same deceptive; and(3) change the jingle advertised on Television by restraining the use of the word 'G' by way of reference either remotely or through passing off of the same. The proposal was reduced into writing and referred to the applicant's management for consideration. But the same was not approved by the management and the respondent was directed by letter dated 4-12-1997 to discontinue the use of the word GLUCOGOLD. The proposal was reduced into writing and referred to the applicant's management for consideration. But the same was not approved by the management and the respondent was directed by letter dated 4-12-1997 to discontinue the use of the word GLUCOGOLD. But the respondent continues to sell the biscuits under the infringing mark GLUCOGOLD in Madras and is also advertising its biscuits through Television Networks, dailies and periodicals circulated all over India. The respondent's action is causing irreparable loss and hardship to the applicant, which cannot be adequately compensated. Hence, the applicant has filed the main suit and also the application in Orl. Application No. 144 of 1998 for order of ad interim injunction restraining the respondent from manufacturing, marketing, distributing or selling biscuits under the mark GLUCOGOLD or any other mark deceptively to the applicant's registered trade mark GLUCO. 2. The respondent countered the case of the applicant contending that it is manufacturing biscuits for the past twenty years under the registered trade mark BAKEMANS and has a distinctive Chief Device as its logo. In or about of August 1997, the respondent adopted the trade mark GLUCOGOLD. The mark is coined by combination of 'GLUCO' which is defined in the Websters Collegiate Dictionary as (1) Glucose and (2) related to or containing Glucose and 'GOLD' which traditionally stands as a mark of purity. The applicant has registered a generic term as its trade mark, the respondent has filed application under Sections 32 and 46 r/2 Section 56 of the Trade and Merchandise Marks Act for removal of the applicant's registration. The applicant has given up the use of the registered mark GLUCO for more than twenty years and is now selling its products under the trade mark PARLE-G. The trade marks are to be compared as a whole, and taken as a whole the trade marks of the applicant and the respondent, the colour scheme, get-up and lay out of the applicant and respondent's marks are dissimilar different and distinctive. The applicant's biscuits are rectangular in shape and the respondent's biscuits are around in shape. There is no likelihood of causing confusion and deception amongst the trade and public. 3. Further, the applicant has not come with clean hands to seek the equitable relief of injunction. The applicant's biscuits are rectangular in shape and the respondent's biscuits are around in shape. There is no likelihood of causing confusion and deception amongst the trade and public. 3. Further, the applicant has not come with clean hands to seek the equitable relief of injunction. The applicant has not failed to disclose (1) that the respondent had filed application with the Registrar of Trade Marks, Bombay, to expunge the entry relating to the applicant's registration; (2) the respondent has filed a suit on the file of the Additional District Judge, Patiala against the applicant for declaration under Section 120 of the Trade and Merchandise Marks Act and obtained an injunction against the threat of infringement of the trade mark. The respondent has also contended that while it has filed caveats in the High Courts at Bombay, Chandigarh and Delhi, and applicant has deliberately chosen to file the suit at Madras, so that the respondent did not get a chance to defend the plea for grant of ex parte ad interim injunction. According to the respondent, the balance of convenience is in favour of the respondent and the application is therefore to be dismissed. The applicant and the respondent filed further reply affidavits and additional counter affidavits to explain and elucidate their respective pleas. 4. The respondent in Orl. Appl. No. 144 of 1998 has field Application No. 1210 of 1998 for vacation of the ad interim injunction granted raising the same contentions raised in the counter mutatis mutandis. The application opposed this application on the same pleas mutatis mutandis raised in its affidavits. 5. Heard both the sides. The applicant and the respondent are admittedly engaged in identical trade, that is manufacturing of biscuits. The applicant has registered the word GLUCO as its trade mark on 10-2-1949. It is admitted that the respondent is manufacturing and selling the biscuits under the trade mark GLUCOGOLD. The applicant alleges that such usage amounts to infringement of its registered trade mark. According to the applicant, GLUCO is a word and the mark coined exclusively by the applicant to distinguish his biscuits. But the respondent contends that GLUCO is a generic word, descriptive of the usage of Glucose in the product, it has no inherent distinctiveness or secondary meaning. That this is a Common English word found in the Dictionary, over which none can claim monopoly and the word has become publici juris. But the respondent contends that GLUCO is a generic word, descriptive of the usage of Glucose in the product, it has no inherent distinctiveness or secondary meaning. That this is a Common English word found in the Dictionary, over which none can claim monopoly and the word has become publici juris. 6. To stress his points, the learned counsel for the respondent referred to the following decision. In Perry Daviz v. Harbond (7 RPC 336 (H.L.)), it has been held that the usage of the word 'Pain Killer' in medicinal preparation was not a distinctive mark, but was merely descriptive of a quality of the goods and did not distinguish the goods as the plaintiffs'. 7. In G.F. Industries v. Registrar of Trade Marks 1972 AIR(Delhi) 179), the applicant in the case wanted to register 'Janta' as trade mark for its electric torches. It has been held that the word 'Janta' has a dictionary meaning as 'people' and although the applicant had proved that its torches bearing the name 'Janta' had acquired considerable reputation in the market, still it was not capable of distinguishing the applicant's goods but had a direct reference to the character or quality of the goods. 8. In S.B.L. Ltd. v. Himalaya Drug Co. 1997 (1) Delhi(LT) 803 = 1997(2) Arb. LR 650), when a dispute arose whether 'Liv-52' is similar to or deceptive with 'Liv-T' it has been pointed out that 'Liv' is an abbreviation of Liver - an organ of the human body as a constituent of names of medicinal/pharmaceutical preparations with some prefix or suffi-mostly suffixes meant for treatment of ailments or diseases associated with liver, and thus 'Liv' has become a generic term and publici juris. It has also been observed that the two rival marks 'Liv-52' and 'Liv-T' contain a common feature 'Liv' which is not only descriptive but also publici juris, and that a customer will tend to ignore the common feature and will pay more attention to uncommon features, i.e., 52 and T. It has also been pointed that the two do not have phonetic similarity as to make it objectionable. 9. In The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. Canada Ltd. (55 R.P.C. 125), the Canadian Shredded Wheat Co. registered the words 'Shredded Wheat' as trade mark in respect of biscuits and crackers in 1928 and registered it as trade mark for certal foods in 1929. 9. In The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. Canada Ltd. (55 R.P.C. 125), the Canadian Shredded Wheat Co. registered the words 'Shredded Wheat' as trade mark in respect of biscuits and crackers in 1928 and registered it as trade mark for certal foods in 1929. In 1934, the Kellogg Company began to sell in Canada biscuits of shredded wheat made by the same process. The biscuits were of the same shape, but smaller in size and the cartons in which they were sold were quite different from those of the Canadian Company. In an action for infringement of passing off brought by the Canadian Company, it was held by the Canadian Court that the words 'shredded wheat' were descriptive of the goods and had not acquired a secondary meaning. In The Shredded Wheat Co. Ltd. v. Kellogg. Co. of Great Britain Ltd. (194057 R.P.C. 137 (H.L.)), the English Court also came to the same conclusion. 10. With reference to the specific facts of the instant case, the learned Counsel for the respondent referred to the affidavit filed by Mr. Ravinder Pal Singh, attorney of the respondent and documents in Annexures 'D' to 'F' filed along with the affidavit and submitted that at the initial stage, the applicant's predecessors desired to register the trade mark GLUCO for biscuits and confectioneries, but such registration was opposed by M/s. C & E Morton (India) Ltd. on the ground that they had been manufacturing and selling confectioneries, especially Toffee under the name 'Gluco Toffee' and Tablets under the name 'Morton Gluco Tablets'; the word 'GLUCO' indicates that glucose has been used in the preparation of their articles and GLUCO cannot be registered without any distinctiveness thereof. The predecessors in title of the applicants had considered the objections and restrained the registration to the Biscuits only. The learned Counsel submits that lack of distinctiveness in relation to confectioneries equally hold good for biscuits also. 11. The learned Counsel also referred to a judicial pronouncement of the Apex Court in this regard. In Corn Products v. Shangrila Food Products. Their Lordships have referred 'Glucose biscuits', 'Gluco biscuits' and 'Glucoa Lactine biscuits' and observed that 'they are ordinary dictionary words in which no one has any right, and that they are really not marks with a common element or elements. 12. In Corn Products v. Shangrila Food Products. Their Lordships have referred 'Glucose biscuits', 'Gluco biscuits' and 'Glucoa Lactine biscuits' and observed that 'they are ordinary dictionary words in which no one has any right, and that they are really not marks with a common element or elements. 12. The learned Counsel for the applicant submitted that only one 'Gluco' is mentioned in the judgment which is the Gluco Biscuits manufactured by the applicant. Be it so, the observation that 'Gluco' is an ordinary word in which no one has any right has not been assailed. Further, the respondent has produced sample biscuit pockets filed additional affidavit to show that atleast two other manufactures of biscuits used the word 'GLUCO' for their biscuits. Thought the learned Counsel refers to the products of M/s. Surya Food and Agro Industries Pvt. Ltd. and Kwality' Biscuits Limited, a perusal of the typed set of papers would show that Kwality Biscuits Limited is manufacturing 'Glucose Biscuits' and the typed set would reveal that M/s. Surya Food & Agro Pvt. Ltd. is manufacturing 'Gluco-V Biscuits and a manufacturer known as Sudha is manufacturing Gluco Bico. It is thus evident that several biscuits manufacturers use the word GLUCO to indicate that Glucose is an ingredient in the biscuits. I accept the contention of the learned Counsel for the respondent and hold that GLUCO is a generic word descriptive of use of Glucose in the product. The applicant's action, in the language of Fry, Lord Justice in the case of in Re : Dunn 1888 6 RPC 379, is 'struggle to enclose and to appropriate as private property certain little strips of the great open common of the English Language. 13. Neatly, it is argued by the learned Counsel for the applicant that in the case of the registered trade mark, the statutory protection is absolute in the sense that once a mark is shown to offend, the user cannot escape by showing something outside the mark itself. On the other hand the learned Counsel for the respondent submitted that if the offending mark is identical to the plaintiff's mark, Eno further question would arise, but if the offending mark is deceptively similar to the plaintiff's mark, the test is the same as in an action for passing off, the court must ask the question whether there is likelihood of deception and confusion. 14. 14. In view of my earlier finding that the mark" GLUCO' was in vogue before the applicant could register it, it cannot be considered as a word or mark invented by the applicant, because already M/s. G&E Morton was using the same for their confectioneries. The mark is not a distinctive mark, but only a descriptive mark which according to the Apex Court in the decision no one has any right over the same. The mark is in usage in the trade by other biscuit manufactures also. The word or mark which was originally a trade mark has subsequently become publici juris. Therefore, the question whether there is infringement of trade mark need not be gone into. Yet considering the fact that both the Counsel have advanced arguments in extension and the catena of the decisions cited by them, in fairness, this aspect also requires consideration. 15. The respective contentions of the learned Counsel goes to the root of the matter whether same mark is used or a similar mark is used. When a same mark is used, in a sense the public is deceived into purchasing the respondent's goods on the belief that they are applicant's goods, so a registered trade mark is a casuality, it is the duty of the court to protect the trade mark. Therefore, no further question would arise in such a case. In case of similar mark, a duty is cast upon the Court to compare both the marks to find out if the offending mark is deceptively similar to the applicant's mark and to ask the question whether there is likelihood of deception or confusion. In deciding the question, the Judge is the final authority. The Judge must approach the question from the point of view of a man of average intelligence and imperfect recollection. 16. The learned Counsel for the applicant submitted that the need for comparison does not at all arise in this case, because the respondent's using the same mark 'GLUCO' with an appendage 'GOLD' as suffix was of no consequence. The Judge must approach the question from the point of view of a man of average intelligence and imperfect recollection. 16. The learned Counsel for the applicant submitted that the need for comparison does not at all arise in this case, because the respondent's using the same mark 'GLUCO' with an appendage 'GOLD' as suffix was of no consequence. The learned Counsel cited the decision reported in Ruston and Hornby Ltd. v. Z. Engineering Co., wherein their Lordships held that the defendant's using words 'Rustom India' for its diesel engines infringed the plaintiffs trade mark 'Ruston' for diesel engines and the suffix 'India' to 'Rustam' was not a sufficient warning to the purchaser to distinguish the goods and the word 'India' was of no consequence. 17. Reliance is placed by the learned Counsel for the respondent also to refer to the yardstick to be adopted in case of infringement of exact mark and a mark similar to it. 18. In the instant case, neither the applicant not the respondent is using the mark 'GLUCO' on a stand alone basis to apply the 'same mark' yardstick. The applicant is using the mark with a prefix - Parle-G Gluco - and the respondent with a suffix - Glucogold'. Therefore, the yardstick for similar mark has to be applied. Both the products are packed with wrappers. Therefore, the colour, get-up and lettering ought to be compared to find out similarities or the dissimilarities. 19. The applicant biscuits are wrapped in white wax paper with thick yellow vertical stripes making an appearances of alternate white and yellow stripes. There is a red rectangle in which 'Parle-G' is printed in the wax paper colour. To the right of the rectangle, there is a white rectangle space where the names other popular Parle Products are printed. 20. Beneath the rectangle, there is a long red band in which 'Parle-G' is found in the wax paper colour in letter printed horizontally and at both the ends of this red band within the red band 'Parle-G' is printed in small letters, vertically. There is a picture of a child with open hands. The picture is considerably big in size. Above the red band, there is a blue trapezium within which 'Parle' is printed in capital letters in wax paper colour. There is a picture of a child with open hands. The picture is considerably big in size. Above the red band, there is a blue trapezium within which 'Parle' is printed in capital letters in wax paper colour. Beneath the red band 'GLUCO' is printed in red colour with blue border accompanied by the 'biscuits' printed in both letters in blue colour. Beneath the print Gluco Biscuits. There is a blue wavy stripes in which 'the tastier energy food' found printed in white colour letters. 21. Below the red band, there is another rectangle similar in shape to the rectangle above the red band. In this rectangle also 'Parle-G' is printed in wax colour. To the right of the rectangle, again there is white rectangle space where the other popular parle brands are mentioned. 22. Beneath these characters the ingredients of the biscuits are printed in small bold letters in black colour, beneath which there is a yellow rectangle with a red border in which 'Parle-G' Gluco Biscuits' is printed in black colour, below which the net weight, month of packing and price of the biscuit are given. The Net weight of the packet is 100 Gram and the price Rs. 4/-. To the left of this character, the address and other details of the manufacturer are printed in black colour. In the applicant's packet 'Parle-G' is given prominence then 'Gluco'. 23. The respondent's wrapper is gold colour laminated paperwith mild yellow lines. There are three elongated oval shapped red broad horizontal stripes, placed one beneath the other. The stripes have a turbid whitish yellow border. The middle stripe carries the picture of a boy and a girl upto their burst and 'GLUCO GOLD' is printed in turbid whitish yellow colour over which the trade mark 'Brakemen's is printed in black colour in an artistic design with the outline of a chef and two semi-circular lines. On either side of this stripe Bakeman's design is printed in black in whitish yellow background. Over the red middle stripe, the Bakeman's trade mark is black and " GLUCOGOLD' is printed in bold letters, beneath which the ingredients of the biscuits are given with a last line in bold letter "contain added flavours". The bottom red shape has also Bakeman's trade mark and a GLUCOGOLD and other details regarding packing, weight, price, address, etc. are printed in turbid whitish yellow colour. The bottom red shape has also Bakeman's trade mark and a GLUCOGOLD and other details regarding packing, weight, price, address, etc. are printed in turbid whitish yellow colour. The net weight of the packet is 100 gram and the price is Rs. 5/-. 24. The respondent's biscuits are circular and the packet is therefore cylindercal. There is absolutely no similarity between the packet. The dissimilarities are so glaring and flagrant and that even a child would not get confused or mistake one product for the other. Any person with average intelligence and imperfect recollection, or even a gullible child will not get deceived into purchasing one product for the other. 25. The learned Counsel for the applicant cited the following decisions to stress that notwithstanding that each mark contain other matter which distinguishes one from the other, the Courts have held that there had been infringement of a trade mark : Ruston and Hornby Limited v. Zamindira Engg. Co. (supra) Ruston India, K. R. Chinnikrishnan Chatty v. K. Venkatesa Mudaliar and another 1974 AIR(Madras) 7), Shree Ambal Radha Shree Andal, American Home Products Corpn. Wyeth Lab. Ltd. v. Lupin Lab. Ltd. (1996 PTC (16) Bom = 1996(1) Arb. LR 168), Rolac-Toralac the judgment of this court in CIBA Geigy Ltd. and another v. Crosslands Research Laboratories Ltd. (O.S.A. No. 51 of 1995), Emulgel and Emugel; 26. The learned Counsel for the respondent cited the following authorities where after comparison, the Courts have held that there was no likelihood of deception or confusion, Mount Mettur Pharmaceuticals Ltd. v. Ortha Pharmaceuticals Corpn. 1975 AIR(Mad) 74), Utogynol-Orthogynol, INDO-Pharma Pharmaceutical Works Pvt. Ltd. v. Farben Fabriken Bayer, A.G. (1975 RPC 545), Lumindon-Luminol; SOLAVOID Trade Mark 1977 R.P.C. NPC (Trade Mark Trade Name and Passing off cases compilation by P. Narayana in 2nd Edition case No. 1320 at Page 1412) Sclavoid-Polarold, Heleha Rubinstein Ltd's Skin Dev-Skin Deep; Case (1960 RPC 229. Frigking T.M. 1973 RPC 739 Frigking-Thermoking, The Coca Cola Company of Canada Ltd. v. Pesi Cola Co. of Canada Ltd. (1942(59) RPC 127), Pepsi Coca Coca Cola; Square D. Boitech Ltd. v. Plasmon Dietetichi Alimentari SPA and two others (C.S. No. 132 of 1996); Glucon D-Glucosdin; The Anglo Thai Corporation Ltd. v. Mahendra Kumar Maneklal Shah (19772 IPLR 57), Gripewater Case; S.B.L. Ltd. Liv. 52-Liv. T. v. Himalaya Drug Co. of Canada Ltd. (1942(59) RPC 127), Pepsi Coca Coca Cola; Square D. Boitech Ltd. v. Plasmon Dietetichi Alimentari SPA and two others (C.S. No. 132 of 1996); Glucon D-Glucosdin; The Anglo Thai Corporation Ltd. v. Mahendra Kumar Maneklal Shah (19772 IPLR 57), Gripewater Case; S.B.L. Ltd. Liv. 52-Liv. T. v. Himalaya Drug Co. and others (supra), J. R. Kapoor v. Micronix India 1994 PTC 260 = 1994(2) Arb. LR 274), Microtel-Micronix; All the decisions have no applications to the facts of this instant case in that had been some tinge of similarity between the marks either visually or phonetically. In the instant case, the packets containing the applicant's products and the respondent's products are so dissimilar and that none will get cheated either visually or phonetically. 27. Lastly, we come to the aspect of the balance of convenience. It is argued by the learned Counsel for the applicant that the applicant is spending huge amounts towards advertisement and the turnover of the applicant is running to crores; if the respondent is allowed to use the trade name of the applicant, the applicant will be put to grave and irreparable loss which cannot be adequately compensated. On the other hand the learned Counsel for the respondent submitted that the respondent has employed large number of workers and spending crores in promoting its biscuits. If the respondent is injuncted from manufacturing its products, it would not only upset the respondent, but also the future of the labourers leading to chaos. 28. It should be pointed that balance of convenience would become relevant for consideration in the case where the scales are even. If the balance is already titled, the question of consideration of balance of convenience would not arise for consideration. In the instant case, the respondent admits that it is manufacturing different varieties of biscuits like Bakeman's Yums, Bakeman's Eliachi, Cream, Bakeman's English Marie and Bakeman Coconut Cookies, Bakeman's Glucose Biscuits, Bakaman's Glucose Plus, Bakeman's Orange Cream Biscuits. Therefore, injunting the respondent from manufacturing one product would not lead to the closure of the factory itself. Yet in the instant case, the balance of convenience does not like in favour of the applicant. Due to the injunction order, the respondent has not been able to carry on manufacture of Glucogold biscuits. Therefore, injunting the respondent from manufacturing one product would not lead to the closure of the factory itself. Yet in the instant case, the balance of convenience does not like in favour of the applicant. Due to the injunction order, the respondent has not been able to carry on manufacture of Glucogold biscuits. Had there been no injunction, the defendant/respondent's business would have multiplied and in the event of dismissal of the suit, the loss suffered by the respondent defendant cannot be ascertained. On the contrary, if no injunction is granted and the suit is ultimately decreed the loss suffered by the applicant/plaintiff can be ascertained and he can be adequately compensated. 29. In the result, Application No. 1210 of 1998 is allowed. O.A. No. 144 of 1998 is dismissed. Ad interim injunction granted is vacated. Parties to bear their respective costs.