A trademark can be differentiated and made for anything specific in the product. Sometimes, there are similarities in the sound or the phonetic pronunciation of the name of the product or the company. And sometimes the colour and the colour scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer. In the case of Mondelez India foods Pvt Ltd. and anr. (Formerly Cadbury India Limited) V. Neeraj food products, the Delhi High court restrain the defendant from infringing Cadbury’s trademark “GEMS” by using deceptively similar mark “JAMES BOND” or copyright by using packaginginspired by Cadbury’s famous GEMS packaging.
Factual Background of the Case:
The suit was filed in August 2005 against Neeraj Food Products (‘defendant’), the sole proprietary concern of Mr. Charan Das. The Plaintiff 1 – Cadbury India Ltd. and Plaintiff 2 – Cadbury Schweppes Overseas Limited claim ownership in the mark ‘CADBURY GEMS’/‘GEMS’ which is the subject matter of the present suit. The case of the Plaintiffs is that the Defendant launched a chocolate product under the mark ‘JAMES BOND’ with an identical colour scheme, layout, and arrangement as that of the Plaintiffs’ ‘CADBURY GEMS’/ ‘GEMS’ products. Thus, the present suit has been filed seeking permanent and mandatory injunction and damages for infringement of trademark and copyright, passing off, unfair competition and other reliefs.
The case has been in court for 17 years, with interim injunction orders passed in 2005, then again in 2008. In 2011, there was an attempt to settle the matter out of court which failed. Finally, in 2013, the court started the process to record evidence, and the matter remained pending till it was taken up finally in 2022.
Observing that Gems is one of the most popular and well-recognized chocolate products in India and almost everyone’s childhood is associated with it. Justice Pratibha M Singh in a verdict passed that the entire color scheme of Neeraj Food Products is identical to that of Cadbury’s label and packaging.
In the background of the pleadings and documents placed on record by the parties, this Court was of the opinion that the present matter was the case of res ispa loquitur. Further reliance was placed on the Apex Court’s judgment in Corn Products Refining co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968 and Parle Products (P) Ltd. v. J.P. & Co., Mysore AIR 1972 SC 1359. In these two judgments, the Court has observed that the infringement and deceptive similarity of competing marks is to be seen from the point of view of a man of average intelligence.
Keeping this in mind, the Court stated that, the test in such a matter is not that of absolute confusion. Even the likelihood of confusion is sufficient. Further, the Court opined that Cadbury’s packaging is unique and it’s the registered proprietor of Cadbury Gems and there is no doubt that the defendant infringed on Cadbury’s rights and the same was a complete case of knock-off. There is an immense likelihood of confusion, especially among the class of consumers for whom the product is intended i.e., young children.
In light of the above and the phonetic similarity between the marks, the court granted a permanent and mandatory injunction in favour of the Plantiff. The Court also convinced that the present was a fit case for awarding damages and ordered Defendant to pay a fine of Rs. 15, 86,928 lakhs.
The Court in this case has clarified that while deciding the test for the likelihood of confusion, several factors have to be considered including the type of products in question as well as the class of consumers. In the present case, clearly, since the product was chocolates which are consumed by a vast majority of consumers of all ages as well as socioeconomic backgrounds, and the fact that the price of the product in question was a mere 1 to 5 rupees, meant that there was an “immense likelihood of confusion.” This coupled with the fact that the colour scheme and the packaging as well as trademarks used were identical and/or deceptively similar, led the Court to take a firm decision in favour of the Plantiff.