By Shweta Adhikari
For those who are still in a dilemma as to why Cadbury abandoned its brand name Eclairs and came with the new Choclairs, the answer lies in the recent decision of the Intellectual Property Appellant Board (IPAB). In a recent decision the IPAB ordered the cancellation of three trademarks of Cadbury Ltd. namely, Choclate Éclairs, Orange flavored Chocolate Éclairs and Chocolate Eclairs pop. The reason for the cancellation of these trademarks is non-use, section 47 of the Trademarks Act 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.
This is not the first time that a company has lost its brand name for non-use, Kellogg’s got its trademark POPS removed last year in a case against Chennai-based Pops Food Products. Bata lost its Sparx trademark in a case against Relaxo Footwear early this year. The dispute between ITC Ltd. and Cadbury Ltd. is almost a decade old. Cadbury Ltd. had alleged that ITC Ltd. were manufacturing and selling their products under the mark Candyman Choco Eclairs and were using an identical color scheme, get up and lay out in respect of their mark as that of the Cadbury and hence sought a temporary injunction before the City Civil Court. The IPAB, however, ruled in favour of ITC.
From time to time SC has re-emphasized the need to use the trademark within five years of registration. In the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. and Consolidated Foods Corporation v. Brandon and Company Private Ltd, the Supreme Court had observed that the mere presence of a mark in the register does not by itself prove its use at all. Subsequently, the court had also categorized promotional activity in India as a pre-cursor of the market reputation. Similarly in Vishnudas Trading as Vishnadas Kishendas v. Vazir Sultan Tobacco Co. Limited, the Supreme court laid down that: a trader or manufacturer who is trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bona fide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured. The court, in this case, applied the provisions of non-use and ordered rectification in the register.
It can be analyzed from all these judgments of the Supreme Court that there should be a fair and bonafide intention as well as use of the trademark by a party in order to prove the continuous use of the trademark.
A third year law student pursuing B.A. LLB. (Hons) at Gujarat National Law University. Has been published a number of times in The Hindu newspaper. Areas of interest includes law, political science and economics. Can be reached at shweta.adhikari1309@gmail.com