In a case that goes back as 2005, between Mondelez India Foods Pvt Ltd, better known as Cadbury, and Neeraj Food Products, the Delhi High Court has finally made its judgement, ruling in favor of the plaintiff.
Cadbury India Ltd. is the trademark owner of registration 'GEMS' for button chocolate covered with colorful candy shells. Additionally, Cadbury also has obtained the copyright registrations for 'GEMS BOND' which has been used over the years for promoting 'GEMS'.
In 2005, Cadbury filed a lawsuit in the Delhi High Court against a competitor, Neeraj Food Products, claiming the infringement of the trademark registration "Gems" in detriment of his IP rights and asking for a permanent injunction and damages.
Cadbury argued that Neeraj Food Products had violated its trademark and copyright rights with the use of the mark 'James Bond' and 'Jamey Bond' with the image of chocolate buttons of similar colors as Cadbury's on its packaging.
Cadbury also claimed that they had used advertising for several years under the 'Gems Bond' name.
After the comparison between both the products, the Court recognized and affirmed the popularity and wide-known reputation of Gems when it comes to chocolate products in India. Furthermore, the Court observed not only the trademark "GEMS" but also the whole packaging with those certain colors' layout, should have been recognized as well-known among consumers which reconnect the mentioned box to the trademark of Cadbury. The court said, "Almost everyone's childhood is associated with the consumption of the plaintiff's 'Cadbury GEMS'/'GEMS'."
In the light of all these conclusions, the Court stated the existence of the trademark infringement made by Neeraj Food Products on detriment of Cadbury's trademark and confirmed a permanent injunction in favor of Cadbury.
Indeed, Section 11(1) of the Indian Trademarks Act, 1999 ("the Act") on relative grounds of refusal, states that if the word/mark applied for the trademark is anyhow identical or similar to any existing trademark for the same/similar good or services and for the different goods or services, then it will not be accepted as a trademark by the registry.
In the light of what above, the Court condemned Neeraj Food Products to pay an actual cost of ₹15.86 lakh worth damages to Cadbury (approximately $18,800).
The decision is worth of note, not only because it has been long awaited by the plaintiff but especially because in his decision, the Court made it clear that the class of customers and the sort of items/products in question should be taken into consideration when applying the test of likelihood of confusion.
In the present case, since the price range of the product in question was just 1 to 5 rupees, there was an "immense likelihood of confusion" among the customers because the mark in question refers to "chocolates," for which the consumers are of all ages.
For this purpose, the Court made a solid conclusion in favor of Cadbury as the color scheme, packaging, and trademarks that were involved in the case were identical or – anyway – falsely similar.
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