eclairs
7 November 2013Trademarks

Cadbury gives up Eclair trademarks in India

India’s Intellectual Property Appellate Board (IPAB) has revoked three trademarks for Cadbury’s chocolate “Eclairs”.

Consumer goods company ITC, which has been selling “eclairs” confectionary in India since 2003, opposed four Cadbury trademarks on the grounds of non-use and non-distinctiveness.

The claims were filed in 2005 after chocolate-maker Cadbury won an Indian injunction ordering ITC to stop selling its eclairs.

Cadbury first trademarked chocolate “Eclairs” in India in 1974 and has used it continuously since, the company argued in the 2005 hearings. It added that ITC’s allegations over lack of distinctiveness were “absurd”.

But at the time, Cadbury said it intended to remove the trademarks from the Indian register. The company did not argue its case before the IPAB.

In a ruling on October 31, the IPAB rejected three “Eclairs” registrations for non-use but upheld the fourth trademark – for “Eclair Top” – saying non-use does not apply to such a recent (2002) application.

Dismissing Cadbury’s trademarks, Judges Ravi and Usha said: “The respondents (Cadbury) have filed only the registration certificates obtained in various countries. There is not a single evidence to show or prove their use. Just the registration alone will not help the respondents to prove their use.”

They added: “This board in various matters on the issue of non-use has held that if the respondent does not appear to re-but the ground of non-use, 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-use.”

But the judges said they believed the lack of evidence owed to Cadbury’s intention to remove the trademarks from the register.

Judges Ravi and Usha did not address ITC’s claims of non-distinctiveness.

Although Cadbury said it was not interested in pursuing the disputed applications, Sushant Singh, of Sushant Singh & Associates, said “it is not a matter of natural consequence that the plea of non-use stands merely because the respondent has given the concession”.

Non-use can be difficult to prove, explained Singh, meaning ITC should have tried to cancel the Cadbury trademarks based on their “generic” nature in India.

“Eclairs have become synonymous with toffees containing chocolate, and each and every player in India is using Eclairs as a part of their trademark. Eclair has lost its distinctive character.

“I think generic nature would have been a far more sound reasoning than that of non-use,” Singh said.

C A Brijesh, partner at law firm Remfry & Sagar, said it is not uncommon for fast-moving consumer goods companies to give up trademarks, as brands move at a fast pace.

“Having said that,” Brijesh added, “such marks, being well-known among consumers, it would have been enlightening for all had Cadbury spelt out the reasons before the IPAB for giving up its case. Of course, had Cadbury contested the matter, it would have been interesting to see the IPAB’s view on distinctiveness and exclusivity upon Eclairs, a word being widely used by many in the confectionary industry."

A Cadbury spokesman said: "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. We continue to retain other trademark rights in the Cadbury Dairy Milk Eclairs brand and the IPAB's 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.”

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