A registered trade mark is infringed when a party uses the same/deceptively similar mark in the course of trade, in respect of the same goods. The test for deceptive similarity is whether the infringing party’s use of a mark is likely to cause confusion or deception in the minds of the consumers.
In the case Cadbury Ltd & Ors vs. Tims Foods Private Ltd and Anr 2009 (39) PTC 544 (Del.), the plaintiff, Cadbury Ltd & Ors, and the defendants, Tims Food Pvt Ltd, were engaged in the same business of branded beverages, chocolates/chocolate confectionaries. Cadbury filed a suit against Tims Food seeking permanent injunction and also to restrain Tims Food from infringing copyright in the artistic work comprising of Cadbury’s Chocolate ‘clairs’ and Cadbury Dairy Milk ‘clairs’ labels/wrappers. Cadbury also sought Tims Food to be restrained from infringing the registered trade mark ‘A-GLASS-AND-A-HALF’ for the sale of chocolate and other similar goods. They also claimed ancillary relief, delivery and damages.
On the basis of the evidence, Cadbury contended that they were the registered proprietors of the trade mark in respect of the device of A-GLASS-AND-A-HALF and had introduced ‘clairs’ in 1972 – stating it was registered in their name and had acquired a secondary meaning in relation to their product. Tims Food contended that ‘Eclairs’ was a dictionary word and, even in the trade mark registration of Cadbury, the exclusive right to use the word Eclairs was not granted. It added that Cadbury had failed to prove their trade mark registration, though filed on record.
The Court gave a three-pronged argument to deny this contention. Firstly, it held that Cadbury was not bestowed the right to the exclusive use of the word Eclairs. Secondly, it held that Cadbury had failed to prove their trade mark registration, though filed on record. Thirdly, it held that Cadbury had not made out a case for grant of injunction with respect to use of the word Eclairs by Tims Food in spite of the objection raised in replies sent by them.
The Court did not make out a case of passing off against Tims Pvt. Ltd. It held that once a party has applied for registration and acquired it without exclusive right to any particular word or device in said trade mark, the party having then accepted that registration was not entitled to maintain an action of passing off in relation to the word/device in which registration was disallowed. The Court refused to grant injunction to Cadbury with regard to use of ‘Eclairs’ by Tims Pvt. Ltd.
As regards the claim made by Cadbury over trade dress of the wrapper and label, the Court ruled that the trade dress/wrapper adopted by Tims Pvt. Ltd is deceptively similar to that of Cadbury. Tims Pvt. Ltd had adopted the same colour combination and fonts for their product. The Court elaborated that target markets for the goods were largely small children or their parents, who mostly did not buy it for their own consumption but for gifting purposes. These facts were sufficient to conclude that there had been undue enrichment to Tims Pvt. Ltd to the detriment of Cadbury. Injunction was thus granted to Cadbury. The suit was decreed in favour of Cadbury and it was awarded damages amounting to Rs. 5 Lakhs.
Manisha Singh Nair
Lex Orbis
manisha@lexorbis.com