The concept of goodwill is derived from reputation, and the reputation need not be necessarily a local reputation. It can even be a spill over in India of the international reputation enjoyed by the Plaintiff’s mark.

1. IA No. 10425 of 2013 has been filed by Cadbury UK Limited (Plaintiff No.1) and Cadbury India Limited (Plaintiff No.2) under Order XXXIX Rules 1 and 2 CPC seeking to restrain the Defendant Lotte India Corporation Ltd. from manufacturing, selling, marketing, promoting or in any other manner whatsoever, or attempting to use or asserting any right to use or applying to register any of the marks Choclairs/ Parry’s Choclairs/Lotte Choclairs/Chocolairs/Lotte Chocolairs or any other mark similar to the trade mark Choclairs of the Plaintiffs.

2. IA No. 12219 of 2013 is by the Defendant under Order XXXIX Rule 4 CPC seeking vacation of the interim order passed by the Court in favour of the Plaintiffs on 8th July 2013.

The case of the Plaintiffs

3. The case of Plaintiff No.1, Cadbury U.K. Limited and Plaintiff No.2, Cadbury India Limited, is that they have been using the trade mark ‘Cadbury’ for the last 150 years. Some of its products are Choclairs/Cadbury Choclairs. The conception and adoption of the brand ‘Choclairs’ goes as far back as 1953 when the trade mark ‘Choclairs’ was coined and adopted by the predecessor-in-title of Plaintiff No.1. The details of the registration of the trade mark ‘Choclairs’ in favour of Plaintiff No.1 in U.K. have been set out in para 6.

4. It is stated that in 1996, Cadbury Schweppes Plc., the predecessor-in-title of Plaintiff No.1, acquired from George Weston the assets of Neilson Cadbury which was one of Canada’s leading confectionery manufacturers comprising of portfolio of brands such as Choclairs, etc. It is stated that the Plaintiffs and their predecessor-in-title have secured and/or applied for registration of the trade mark ‘Choclairs’ in several countries throughout the world, including India. It is stated that the product under the brand ‘Nielson Choclairs’ was also heavily advertised in the 1990s and the brand ‘Choclairs’ has been used for chocolate candy sold in major markets such as South Africa, Indonesia and Malaysia. The plaint sets out the images of different representations of the packaging for the product ‘Choclairs’ used by the Plaintiffs at different points of time in various countries. It is stated that the Plaintiffs have been extensively using the prior trade mark/brand ‘Choclairs/Cadbury Choclairs’ promoting, marketing and selling the products with several flavours and packaging formats. The sales and advertisement figures of Cadbury Choclairs in Indonesia, Malaysia and South Africa have been set out.

5. It is stated by the Plaintiffs that with a view to extending the well-known product ‘Choclairs’ to India, the product ‘Eclairs/Cadbury Eclairs’ has been rebranded in India and has been recently launched as Choclairs/Cadbury Choclairs in June 2013. The images of the packaging and the approximate figures of the volumes of sales of the said product in India for June and July 2013 have been set out in the plaint.

6. It is stated that in March/April 2012, a trade mark search was conducted with the Indian Trade Marks Registry. It was revealed that ‘Parry’ confectionery had applied for registration of the trade mark ‘Choclairs’ and the status of the same was reflected as ‘removed’. Nevertheless, the Plaintiff conducted an internet search and found that there was no past or current use of the mark ‘Choclairs’ by Parry. In May 2012, the Plaintiffs instructed their attorneys to file a trade mark application for the trade mark ‘Choclairs’. A routine check done in April 2013 showed that two new applications have been filed by the Defendant for the marks ‘Lotte’ on 30th October 2012 and for ‘Choclairs’ on 1st April 2013 stating that they were ‘proposed to be used’.

7. The Defendant filed Suit No. 372 of 2012 in the Madras High Court to restrain the Plaintiffs from launching its product under the brand Choclairs/Cadbury Choclairs. It is stated that no interim relief has been granted in favour of the Defendant in the said suit. In the said suit, the Defendant had relied upon a registration