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.
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: firstname.lastname@example.org