27-08-2014, 03:42 PM
Cadbury loses trademark battle with ITC over Chocolate Éclairs
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The Issue
The Intellectual Property Appellate Board (IPAB), India's patent appeals board, recently ordered the removal of three trademarks of Cadbury Éclairs, following a case initiated by rival ITC.
The battle began when Cadbury’s in April 2005 filed an injunction in Ahmedabad high court seeking to restrain the use of the trademark Éclairs by ITC against its product called Candyman Éclairs.
Eventually, ITC moved IPAB in 2005, making a case that the trademark hasn't been used since 1994
Defence of the Respondent (Cadbury)
Cadbury, in defence, said the Cadbury's Chocolate Éclairs was registered as a trademark in India as early as 1974, and that it has been continuously used since.
They are registered proprietors both in India and abroad.
They also have trademarks for Cadbury Chocolate Éclairs and Chocolate Éclairs Pop.
But Cadbury could not provide any evidence showing the use of the three trademarks after they were registered.
The Judgment
The three trademarks—Chocolate Éclairs, Orange flavored chocolate éclairs and Chocolate Éclairs pop—were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered.
The IPAB judgment, delivered by V Ravi and S Usha, said there isn't "a single evidence" to prove it. "Just the registration alone will not help the respondents to prove their use," the judgment went
Further, it said, "The 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.“
“Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark,”
Implication of the Order
Cadbury can no longer claim to be the owner of the trademarks
Cadbury in the future cannot hold anyone for infringement of these marks
However, this does not mean Cadbury will no longer be able to use the word Éclairs on their products.
You do not need registration to use a name. Éclair is a common word and everyone will be entitled to use it