Cadbury Loses Trade Mark Battle

 

31st October, 2013 was a dooms day for Cadbury when it lost 4 of its éclair related trademarks on the basis of rectification petitions made by ITC. S. Usha, the Vice-Chairperson of the Intellectual Property Appellate Board (IPAB), ordered with a direction to the Registrar of Trade Marks to remove the trade marks registered under Nos. 298102, 353398, 436335 and 327607 from the Register.  She also dismissed ORA/28/05/TM/KOL stating that “nothing survives in the said trademarks.”  The catalyst for the rectification petitions was a civil suit for trademark infringement filed by Cadbury, in 2005, against ITC with a prayer for an injunction restraining ITC using the word ‘éclair’ in conjunction with ITC’s trademarks.

In a counter to the trademark infringement suit filed by Cadbury, ITC filed rectification petitions against the four trademarks.

The four trademarks are as follows:

 ORA/25/05/TM/KOL relates to Cadbury’s Chocolate Éclairs (a label mark) under No.298102 in class 30, registered on 24.01.1976. ORA/26/05/TM/KOL relates to Cadbury Chocolate Éclairs (a label mark) under No.353398 in class 30 and registered on 31.10.1985. ORA/28/05/TM/KOL relates to the trade mark Chocolate Éclairs Pop (a label mark) under No.436335 in class 30 registered on 31.10.2002. ORA/29/05/TM/KOL relates to the Trade Mark Cadburys Orange flavoured Chocolate Éclairs (a label mark) under No.327607 in class 30 and registered on 31.01.1985.

Facts of the case:

M/s ITC Limited (herein after Applicant) is an existing company which is one of the leading reputed corporate in India and has been engaged in the business of marketing and manufacturing consumer goods since 1910. The applicant’s trade mark has acquired an immense goodwill and reputation owing to high quality of the goods manufactured by them.

The applicant started the business of marketing confectionery products in the year 2002 under the brand names “Minto – O” & Candyman. The applicant started marketing the éclairs confectionery in or about August, 2003. Since then, the applicant has been continuously and extensively using the trade mark Éclairs in conjunction with its famous trade mark “Candyman” which was well recognized by the customers.

On the other hand respondent is one of the largest international beverage and confectionery companies in the world.  The trade mark Cadbury Eclair was adopted by the respondent’s predecessors several decades ago. The trade mark has been used continuously since its adoption. The trade mark Cadbury Eclair is used in respect of a milk chocolate with a chewing caramel shell.

The respondent introduced a product under the name Cadbury Chocolate Eclairs/Eclair in the year 1972 in India. The trade mark Cadbury Chocolate Eclairs was registered under No.298102 in Class 30 as early as 01.08.1974 in respect of Milk Chocolates and Chocolate sweets. As such, the respondent has the exclusive right to use the trade mark. The respondent’s trade mark is registered in various other countries.

On 05.04.2005, the applicants received an order of exparte injunction dated 01.04.2005 restraining the applicant from using the trade mark “Eclairs” or any other deceptively similar trade mark. The said order was passed by the City Civil Court Judge, Ahmedabad in a suit filed by M/s Cadbury Schweppes (registered proprietor/respondent herein.)

Being aggrieved by the injunction order, the applicants approached the Hon’ble High Court of Gujarat and the High Court of Gujarat passed a modified order dated 15.4.2005 allowing the applicants to manufacture and sell their éclairs products as Candyman Choco éclairs since other manufacturers, too, have been using the word Eclairs.

When the matter came up for oral arguments in front of the IPAB, Cadbury’s counsel reportedly informed the Court that the company was taking steps to withdraw the petitions and was not interested to argue the matter on merits. ITC however pushed for a hearing because of the injunction they had received from the Civil Court in Ahmedabad on behalf of Cadbury. Thereafter, IPAB revoked all the four trademarks for non-use.

Under section 47of the Trade Marks Act, 1999 IPAB can order the removal of the registered marks on the grounds of Non- Use, or if there has been no proof to show the usage of that mark for a period of five continuous years from the date of application.

Analysis:

It was rather shocking to see that Cadbury decided to abandon the four Trademarks which they have kept, maintained and used for past 40 years without even arguing in front of IPAB. It was more puzzling as to why Cadbury could not prove usage of the marks by providing evidences of advertisements of the product and availability of the product in the market.

According to the spokesperson of Cadbury India the label mark for Cadbury India which formed the subject matter of the case was no longer used by Cadbury and they had no plans to use it in future as well.

Thus, the implications of the said order would not allow Cadbury India to be the owner of the four trademarks and thus it cannot hold anyone for infringement of these marks in the future.

About the Author: Ms Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at: sheetal@khuranaandkhurana.com

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010