INTELLECTUAL PROPERTY APPELLATE BOARD

 

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600 018

 

(Circuit Bench sitting at Kolkata)

 

THURSDAY, THIS THE    31st     DAY OF OCTOBER, 2013

 

ORA/25, 26, 28 and 29 /2005/TM/KOL

 

Hon'ble Ms.  S.Usha                                                          …  Vice   Chairman     

 

Hon’ble Mr.V.Ravi                                                            …Technical Member                                                                                                           .                                                                                                 (Trade Marks)

M/s ITC Limited,

Having office at Virginia House,

37 J.L.Nehru Road,

Kolkatta -700 071.                                                           … Applicant in all applications

  

 

(Represented by Shri  S.Majumdar & Co.,  )

 

 

Vs.

 

M/s.Cadbury Schweppes Overseas Ltd.,

Company existing under Laws United Kingdom,’

Office at Bournville Lane,

Bournville, Birmingham B30, 2LH,

England, U.K.                                                                 …Respondent in all applications                                                                                                                          

     

(Represented by Biswarup Chkaraburthy  )

                                                               

COMMON ORDER:-   (239 of 2013)

 

Hon’ble Ms.S.Usha, Vice Chairman

  

     All the original rectification applications are for the removal of the Trade Marks                    Cadbury’s Chocolate Eclairs registered under Nos. 298102, 353398, 436335 & 327607 in Class 30   under the provisions of the Trade Marks Act, 1999.

 

2. The brief facts of the applicants case is that:-

The applicant an existing company is one of the leading reputed corporate in India and has been engaged in the business of marketing and manufacturing consumer goods since 1910. The applicant’s trade mark has acquired an immense goodwill and reputation owing to high quality of the goods manufactured by them. 

3. The applicant started business of marketing confectionery products in the year 2002 under the brand names “Minto – O”  & .Candyman. The applicant started marketing the éclairs confectionery in or about August, 2003. Since then, the applicant has been continuously and extensively using the trade mark Éclairs in conjunction with its famous trade mark “Candyman” which was well recognized by the customers.

 

4.   On 05.04.2005, the applicants were shocked to receive an order of exparte injunction dated 01.04.2005 restraining the applicant from using the trade mark “Eclairs” or any other deceptively similar trade mark. The said order  was passed by the City Civil Court Judge, Ahmedabad in a suit filed by the registered proprietor/respondent herein.

 

5.  The applicants’ further state that there were other manufacturers-marketers of confectioneries under the trade mark éclairs since 1987.  Being aggrieved by the injunction order, the applicants approached the Hon’ble High Court of Gujarat and the High Court of Gujarat passed a modified order dated 15.4.2005 stating that the applicants to manufacture and sell their éclairs products as Candyman Chaco eclairs.

 

6. The trade mark Éclairs is liable to be removed as it is not used since the year 1994.  Secondly, the Registrar ought to have imposed a disclaimer condition in respect of the word éclair.  Eclair is common to trade. The applicant has a group turnover of Rs.12,000  crores during the year 2004-2005.

 

7. The impugned trade mark was wrongly registered and wrongly remains on the register.  The registration is in contravention of the provisions of Sections 9, 11 & 18 (1) of the Act. The impugned trade mark is not distinctive of the registered proprietor at the time of filing of the present petition. The existence of the impugned entry affects the purity of the register of Trade Marks.  The registration remains on the register without sufficient cause.

8.  The respondents filed their counter statement. The respondents stated that the application for rectification is liable to be dismissed as the affidavit which is the requirement of Rule 8 (1) (1) of the IPAB (Procedure) Rules were not filed.  This application for rectification is a counter blast to the civil suit filed by the respondents. The ground of non user is not maintainable as the respondents have been using the trade mark continuously and extensively without any interruption.

 

9. The respondents is one of the largest international beverage and confectionery companies in the world.  The trade mark Cadbury Eclair was adopted by the respondent’s predecessors several decades ago. The trade mark has been used continuously since its adoption. The trade mark Cadbury Eclair is used in respect of a milk chocolate with a chewing caramel shell.

 

10.  The respondent introduced a product under the name Cadbury Chocolate Eclairs/Eclair in the year 1972 in India. The trade mark Cadbury Chocolate Eclairs was registered under No.298102 in Class 30 as early as 01.08.1974 in respect of Milk Chocolates and Chocolate sweets. As such, the respondent has the exclusive right to use the trade mark. The respondent’s trade mark is registered in various other countries.

 

11. The onus to prove non user has not been discharged by the applicant. The word Eclairs  only forms part of the mark and does not constitute the whole mark against which the applicant has filed the application for rectification. The applicants allegation mark is not distinctive is completely misplaced and absurd.  The other averments are all denied by the respondents.

 

12.  When the matter was listed for hearing, learned counsel for the respondent submitted that they are taking necessary steps for withdrawing these registrations and therefore are not arguing the matter on merits.  The learned counsel for the applicant submitted that the matter may be heard and decided on merits as there was an injunction order operating against them. We therefore heard the applicants alone.

 

13.  The learned counsel for the applicant submitted that the respondents had filed a civil suit before the City Civil Court, Ahmedbad and therefore being aggrieved   by that, the applicants filed these rectification applications.

 

14. ORA/25/05/TM/KOL relates to Cadbury’s Chocolate Éclairs (a label mark) under No.298102 in class 30 and registered on  24.01.1976. ORA/26/05/TM/KOL relates to Cadbury Chocolate Éclairs (a label mark) under No.353398 in class 30 and registered on 31.10.1985. ORA/28/05/TM/KOL relates to the trade mark Chocolate Éclairs Pop (a label mark) under No.436335 in class 30 registered on 31.10.2002. ORA/29/05/TM/KOL relates to the Trade Mark Cadburys Orange flavoured Chocolate Éclairs (a label mark) under No.327607 in class 30 and registered on  31.01.1985.

 

15.  The counsel further submitted the trade mark Cadbury Éclairs Pop was not used by the respondent and therefore hit by Section  47 of the Act. The trade mark Éclair is descriptive and therefore is in contravention of Section 9 of the Act.  The word Éclair has a dictionary meaning – “a small oblong pasting shell filled with custard on whipped cream and usually iced with chocolate“

 

16.  Annexure A is the interim order passed by the City Civil Court Judge, Ahmedbad. The only defence of the respondent is that they are registered proprietors both in India and abroad.  Though the respondents claim user since 1972 there is no evidence for the same. The applicants have filed few third party affidavits to prove the ground of non user.

 

17.  As regards ORA/28/2005/TM/KOL the rectification of the trade mark Cadbury’s Chocolate Éclair Top the registration has not been renewed after 1.04.2006 and therefore the mark has been removed as seen from the computer granted application status. As the marks are descriptive, the marks ought to be removed.

 

18.  We have considered the arguments of the applicant’s counsel and have gone through the pleadings and documents of both the applicants and the respondents. All the four matters were heard together and a common order is passed as the parties and the issues are one and the same except for the marks. We give below the four label marks:-

 

ORA/25/05/TM/KOL – No.298102

 

 

 

 

 

 

 

ORA/26/05/TM/KOL – No.353398

 

 

 

 

 

 

 

 

 

 

ORA/28/05  /TM/KOL – No.436335

 

 

 

ORA/29/05  /TM/KOL – No.327607

 

19. The ground on which the application has been filed is that the impugned trade marks are not distinctive of their goods.  The trade mark éclair is descriptive of the goods. The other main ground is that the marks though registered as early as 1976, 1985, 2002 and 1985 respectively have not been used and therefore are liable to be removed for non user under Section 47 of the Act.

 

20. The application for removal of the trade marks “Cadbury Chocolate Eclair Top” registered under No.436335 in class 30 is ORA/28/05. It is admitted by the applicant that the ground of non user for a period of 5 years and 3 months   cannot be considered as the mark was registered in the year 2002 and the application for rectification was filed in the year 2005 and therefore the ground of non user does not lie.  We are also of the view that the ground of non user does not hold good.  On perusal of the computer generated trade mark registration states it is seen that the mark has not been renewed and so removed.  The application for removal of the trade mark under No.436335 is therefore dismissed as infructuous.

 

21. We shall now deal with the other 3 applications namely 298102, 353398, and 327607.  On perusal of the records i.e, the counter statement and the documents, the respondents have filed only the registration certificates obtained in various countries. There is not a  single evidence to show or prove their user. Just the registration alone will not help the respondents to prove their use.

 

 

22. We think, that is the reason the respondents appeared before us and submitted that they are taking necessary steps to withdraw their applications before the Registrar of Trade Marks.

 

23. This Board in various matters on the issue of non user has held that if the respondent does not appear to rebut the ground of non user, it goes without saying that they have not used the mark even after several years of registration and the mark shall be cancelled for non user. In the case on hand, the same principle applies. The impugned trade marks namely 298102, 353398 and 327607 are liable to be removed on the ground of non user.

 

24. In view of the foregoing observations, the three rectification applications namely ORA/25, 26 & 29/2005/TM/KOL  are allowed with a direction to the Registrar of Trade Marks to remove the trade marks  registered under Nos.298102, 353398 and 327607  from the Register.  ORA/28/05/TM/KOL is dismissed as nothing survives in the trade mark. There shall be no order as to costs.

 

 

 

            (V.Ravi)                                                     (S.Usha)

   Technical Member                                         Vice Chairman

       (Trade Marks)

 

Reportable: Yes/No

 

 

 

 

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)