Cadbury loses trademark case on Eclairs
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Chennai: In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) last week said that Cadbury India is no longer the owner of three trademarks containing the word Eclairs, putting to rest over a decade-old battle.
The three trademarks—Choclate Éclairs, Orange flavoured chocolate éclairs and Chocolate Eclairs 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 only defence of the respondent is that they are registered proprietors both in India and abroad. Though the respondents (Cadbury) claim use since 1972, there is no evidence for the same,” said the order, adding that registration alone will not help the respondents to prove use. Cadbury is a subsidiary of UK-based Mondelēz International.
“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,” said Suchindran B.N., a lawyer practising at the Madras high court.
The implication of this order is that Cadbury can no longer claim to be the owner of the trademarks, which means Cadbury in the future cannot hold anyone for infringement of these marks, said R. Satish Kumar of Chennai-based law firm IP Lead.
Cadbury said it does not plan to pursue this matter further as the Cadbury Eclairs label has not been used by the company for a long time.
“The label mark for Cadbury Eclairs, which formed the subject matter of the litigation, has not been used by Cadbury for many years and hence we do not plan to take this matter further,” said a Cadbury India spokesperson in an email. “We continue to retain other trademark rights in the Cadbury Dairy Milk Eclairs brand and the IPABs decision, if any, has no bearing on those trademark rights. We are yet to receive IPAB’s order in this matter, therefore we wouldn’t be in a position to comment further on this, at this stage.”
The battle began when Cadbury’s in April 2005 filed an injunction in Ahmedabad high court seeking to restrain the use of the trademark Eclairs by ITC against its product called Candyman Eclairs. Since other manufacturers, too, have been using the word Eclairs, the court allowed ITC to use the name Candyman Choco Eclairs.
ITC filed an application with the IPAB in 2005 for the removal of the trademark from the registry.
Since Cadbury had to prove usage and provide evidence of the three trademarks, which it could not give, the board ordered the cancellation of the trademarks.
“It is puzzling why Cadbury could not provide proof of usage,” said Kumar, adding that usage can be proved by giving evidence of advertisements of the product and showing proof that it was available in the market.
Kumar said that this, however, does not mean Cadbury will no longer be able to use the word Eclairs on their products. “You do not need registration to use a name,” he said. “Éclair is a common word and everyone will be entitled to use it.”