2023 Supreme(Cal) 1151

IN THE HIGH COURT AT CALCUTTA
Sugato Majumdar, J.
Societe Das Products Nestle S.A. & Anr. – Plaintiffs
Versus
Kit Kat Food Products & Anr. – Respondents
CS/48 of 2000
Decided On : 31-07-2023

A prior user of a trademark is entitled to a permanent injunction against a subsequent user who uses the same or a deceptively similar trademark for similar products, if the subsequent user's use is likely to cause confusion and damage to the reputation and/or goodwill of the prior user's company.

Headnote:

TRADEMARK AND COPYRIGHT - KITKAT - TRADE AND MERCHANDISE MARKS ACT, 1958 - COPYRIGHT ACT, 1957 - INFRINGEMENT - PASSING OFF - SIMILARITY OF MARKS - CONFUSION - PRIOR USER - DISTINGUISHABILITY - INTELLECTUAL PROPERTY APPELLATE BOARD ORDER - SECTION 124(4) OF THE TRADE MARKS ACT, 1999 - COURT BOUND TO FOLLOW - PERMANENT INJUNCTION GRANTED.

Fact of the Case:

Plaintiffs, owners of the trademark "KITKAT" and artistic work "KITKAT" label, sued the defendants for infringement of trademark and copyright. The defendants claimed prior use of the mark "KITKAT" for chanachur and preparations made from cereals. The Intellectual Property Appellate Board (IPAB) allowed the plaintiffs' applications for registration of the trademarks "KITKAT" and refused the defendants' applications.

Finding of the Court:

The court found that the plaintiffs were the prior users of the trademark "KITKAT" and that the defendants' use of the same mark would create confusion since both of them dealt with similar products marketed through the same channel. The court also found that the defendants' use of the mark "KITKAT" was likely to cause damage to the reputation and/or goodwill of the plaintiffs' company.

Issues: 1. Whether the suit is maintainable in its present form or not? 2. Have the Plaintiffs any cause of action to file the instant suit? 3. Whether the Court has jurisdiction to try the suit? 4. Whether the suit is barred by the law of limitation? 5. Whether there is a valid and subsisting license granted by the Plaintiff no. 1 in favour of Plaintiff no. 2? 6. Whether there is valid assignment of the mark “KIT KAT” in favour of the Plaintiff no. 1? 7. Whether the Plaintiffs are entitled to the relief claimed in the plaint? 8. Whether the Plaintiff no. 1 is the proprietor of the trade mark “KIT KAT”? 9. Whether the Plaintiff no. 1 is the owner of the copyright in the artistic work “KIT KAT” label subject matter of the present suit? 10. Whether use of “KIT KAT” as trade mark or trade name by the Defendants in respect of food products including chanachur, confectionary or any preparations made from cereals etc. amount to infringement of trade mark registration nos. 8902 and 473754 of the Plaintiff no. 1? 11. Whether the Defendant no. 1, 2 and 3 are prior users of the mark “KIT KAT” in respect of chanachur and preparations made from cereals and snack foods? 12. Whether the Defendants no. 1, 2 and 3 are the first user of the trade mark “KIT KAT” in India in respect of chanachur and preparations made from cereals and snacks foods? 13. Have the Plaintiffs suffered any loss and damages on account of any wrongful conduct of the Defendant no. 1, 2 and 3 and whether there is any likelihood of Plaintiffs suffering any loss or damage on account of use by the Defendants for the mark “KIT KAT” since the year 1991 in relation to the products manufactured or sold by the Defendant no. 1, 2 and 3? 14. Whether use of “KIT KAT” label, by the Defendants, is substantial imitation of “KIT KAT” label of the Plaintiffs and whether such act amount to infringement of copyright? 15. Whether the Plaintiffs are entitled to any damages against the Defendant no. 1, 2 and 3 for their alleged violation and infringement amounting to passing off?

Ratio Decidendi: The court held that the plaintiffs were entitled to a permanent injunction against the defendants because: * The plaintiffs were the prior users of the trademark "KITKAT". * The defendants' use of the same mark would create confusion since both of them dealt with similar products marketed through the same channel. * The defendants' use of the mark "KITKAT" was likely to cause damage to the reputation and/or goodwill of the plaintiffs' company.

Final Decision: The court granted a permanent injunction restraining the defendants from infringing the plaintiffs' trademark and copyright in the word "Kit Kat" or in any design or artistic work as such, using the trade name or trademark "Kit Kat" or any other deceptively similar trademark or trade name or any name of business of similar or deceptively similar name "Kit Kat"; the defendants were also restrained from infringing the registered trademarks of the plaintiffs namely 8982 and 473754.