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IN THE HIGH COURT OF DELHI
Honble Judges: Gita Mittal, J.
Cadbury India Limited and Ors. - Appellants
Vs.
Neeraj Food Products - Respondent
IA No. 6569/2005 in CS (OS) No. 1170/2005
Decided On: 25.05.2007
Plaintiff, a confectionery manufacturer, filed suit against Defendant for infringement of its registered trademark GEMS and copyright in the artistic work of its pillow pack. Defendant argued that Plaintiff failed to disclose disclaimers on its trademark registrations, that its mark was not distinctive, and that Plaintiff was estopped from seeking relief due to delay. The court held that Plaintiff had a valid registration for the GEMS label without a disclaimer, that Defendant's mark was deceptively similar to Plaintiff's, and that Plaintiff was entitled to an injunction.
Fact of the Case:
Plaintiff, a confectionery manufacturer, filed suit against Defendant for infringement of its registered trademark GEMS and copyright in the artistic work of its pillow pack. Defendant argued that Plaintiff failed to disclose disclaimers on its trademark registrations, that its mark was not distinctive, and that Plaintiff was estopped from seeking relief due to delay.
Finding of the Court:
The court held that Plaintiff had a valid registration for the GEMS label without a disclaimer, that Defendant's mark was deceptively similar to Plaintiff's, and that Plaintiff was entitled to an injunction.
Issues: 1. Whether Plaintiff had a valid trademark registration for GEMS. 2. Whether Defendant's mark was deceptively similar to Plaintiff's. 3. Whether Plaintiff was estopped from seeking relief due to delay.
Ratio Decidendi: 1. The court found that Plaintiff had a valid registration for the GEMS label without a disclaimer. The court noted that Plaintiff had a disclaimer on two of its other trademark registrations, but that it was not required to disclose these disclaimers in its complaint. 2. The court found that Defendant's mark was deceptively similar to Plaintiff's. The court noted that the marks were phonetically similar and that Defendant had adopted every essential feature of Plaintiff's label. 3. The court found that Plaintiff was not estopped from seeking relief due to delay. The court noted that Plaintiff had acted promptly to enforce its rights once it became aware of Defendant's infringement.
Final Decision: The court granted Plaintiff's request for an injunction, enjoining Defendant from using the trademark JAMES and/or JAMES BOND or any other mark deceptively similar to Plaintiff's GEMS trademark, and from using the pillow-packs attached to the complaint or any other packaging deceptively similar to Plaintiff's pillow-packs. The court also enjoined Defendant from passing off its goods as those of Plaintiff and from substantially reproducing any material from the copyright in the artistic work of Plaintiff's pillow-packs.
Gita Mittal, J.
1. This application has been filed by the plaintiffs under Order 39 Rules 1 and 2 of the Code of Civil Procedure praying for grant of an interlocutory injunction against the defendant restraining it from using the trademark JAMES or JAMES BOND or any other trademark deceptively or confusingly similar to the plaintiffs registered trademark Gems or using the pillow packs attached as annexure A to the plaint. The plaintiff has also prayed that a further injunction against the defendant restraining him from passing off its goods of the plaintiff, by reproducing in any material form, the copyright in the artistic work of the pillow packs annexed as annexure A to the plaint.
2. The suit has been filed by the plaintiff on the allegations that the Cadbury India Limited, plaintiff No. 1 began its operation as a trading company in the year 1947. The plaintiff No. 1 was formerly known as Hindustan Cocoa Products Limited by which name it was granted trademark registrations. The plaintiff No. 2 licensed certain trademarks to the plaintiff No. 1 by an agreement dated 25th January, 1994 and filed an application for recording the assignment with the trademark registry on 10th February, 1994. This application has been stated to be still pending with the trademark registry. Both the plaintiffs are stated to be subsidiaries of Cadbury Schweppes plc. of United Kingdom, a manufacturer of confectionery and beverages product.
3. The plaintiff No. 1 claims to be a market leader in the field of manufacturing and marketing of confectionery and chocolate products in India under several brands. Amongst its leading brands the plaintiff has cited the CADBURY DAIRY MILK; CADBURY GEMS; CADBURY FIVESTAR; BOURNVITA AND CADBURY PERK. It is producing several newer brands including CADBURY BYTES, CADBURY CHOCKI; CADBURY DELITE and CADBURY TEMPTATIONS. The plaintiff No. 1 obtained its first registration in respect of the word GEMS as CADBURY MILK CHOCOLATE GEMS on 20th May, 1968 vide registration No. 249360, in Class 30. The registration was granted to the plaintiff with the disclaimer that the registration of the trademark shall give no right to the exclusive use of the word GEMS and the device of tablets. It has been averred that this registration is valid even on date and stands renewed till 20th August, 2010. The plaintiff No. 1 was also granted registration of the device GEMS by registration certificate No. 249841 in Class 30 on 13th June, 1968. This registration was also given subject to the disclaimer that the registration shall give no right to the exclusive use of the word GEMS and the device. This certificate stands renewed till 13th June, 2010.
.4. The plaintiff has placed strong reliance on a third registration of its label CADBURY GEMS granted by the registration certificate bearing No. 291026 in class 30 granted on 21st September, 1973 which stands renewed till 21st September, 2008 in respect of milk chocolate. The labels in respect of which this registration was conferred has been placed before this court. The registration of this label was not subject to any disclaimer and consequently the plaintiff has asserted that it has exclusive right over the same by virtue of Section 31 of the Trademarks Act, 1999.
5. So far as the artistic work of the label is concerned, according to the plaintiff it has applied for copyright registration with the Registrar of Copyright in respect of the artistic work which was titled GEMS BOND which was first published in the year 1988. Copy of the certificate granted by the Registrar of Companies dated 24th July, 1989 and 17th October, 1990 have been placed before this court.
.6. The plaintiff has also placed before this Court copies of the registration No. 582896 of the word mark Cadbury Gems (label) which was granted on 14th October, 1992 which was valid up to 14th October, 2006 in respect of sugar panned chocolate, milk chocolate either plain or containing nuts, fruits, raisins, caramel etc. Th
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