Sellers sued for ‘illegal’ imports of Cadbury-branded drinks
A distributor which owns US trademark for ‘Bournvita’ files five complaints in Texas alleging illegal importation of products from India | Company previously fended off 21 distributors via ITC and won a trademark case brought by Coca-Cola.
A battery of lawsuits has been filed in Texas alleging trademark infringement and the illegal importation of Cadbury-branded Bournvita products from India.
US-based firm Meenaxi Enterprise imports Bournvita chocolate beverages and related products from India and distributes them to stores selling Indian groceries in the US.
While Cadbury owns the Bournvita trademark in India, Meenaxi owns the mark in the US.
In five separate complaints, Meenaxi accuses five grocery stores of trademark counterfeiting, trademark infringement, false designation of origin, and unfair competition under the Lanham Act.
The lawsuits, filed on Wednesday, August 9, state that since at least 2008, Meenaxi has used the Bournvita mark for “chocolate powder and other related goods, including, without limitation, chocolate milk, milk-based beverages with chocolate, powdered milk, and chocolate-based and cocoa-based beverages”.
Meenaxi and Cadbury marks
The company has owned the trademark for Bournvita since 2012, covering, in addition to the above, “milk beverages containing fruits, milk drinks containing fruits, nut-based milk, strawberry milk, and cocoa-based condiments and seasonings for food and drink”.
The Cadbury-branded products sold in India are owned by Mondelez International. The complaints highlighted that “Meenaxi and Mondelez International are entirely different entities, and Meenaxi has no relationship or affiliation with Mondelez International.”
Meenaxi alleges that the defendants are selling the same infringing product as its own, “using the same packaging, and/or employing the same or similar marketing tactics, pricing structures and distribution schemes.”
The retailers are also accused of using the same channels of trade in which Meenaxi’s Bournvita products are sold, “targeting the same Indian groceries and/or the same class of consumers who regularly shop in such stores”.
Meenaxi claims a “likelihood of confusion, mistake or deception among members of the consuming public in the US”, and that the defendants “have made or will make substantial profits and gains”.
“Such activities have caused, and will continue to cause, irreparable injury to Meenaxi, and have also resulted in damages suffered by Meenaxi from defendants’ infringing use,” it said.
ITC and Coca-Cola wins
Meenaxi, based in Edison, New Jersey, has imported Indian food products and commodities into the US for 20 years.
Last November, the US International Trade Commission (ITC) issued an exclusion order after finding that 21 companies based in four US states had imported and distributed Cadbury’s Bournvita products into the country from India, thereby infringing Meenaxi’s trademark rights.
Also last year, Meenaxi won a trademark battle against Coca-Cola, which had sought to cancel Meenaxi’s US trademark registrations for ‘Thums Up’ and ‘Limca’ soft drinks based on the beverage giant’s use of identical marks in other territories.
The Texas lawsuits were filed this week at the US District Court for the Southern District of Texas, Houston Division. Meenaxi is represented by John (“Ted”) Polasek at Polasek Law Firm.
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