In CS (COMM) 393/2018- DEL HC- CADBURY’s product branded as ‘GEMS’ and packaging thereof is known to young and old alike: Delhi HC grants relief to CADBURY in trademark infringement suit Justice Prathiba M. Singh [26-07-2022]

Read Order: MONDELEZ INDIA FOODS PVT. LTD. AND ANR v. NEERAJ FOOD PRODUCTS 

LE Correspondent

New Delhi, July 27, 2022: While observing that almost everyone’s childhood is associated with the consumption of the Plaintiff’s ‘CADBURY GEMS’/‘GEMS’, the Delhi High Court has allowed the suit instituted by Mondelez India Foods Private Limited (earlier known as Cadbury India) against the Defendant-Neeraj Food Products for infringement of trademark and also awarded costs of over Rs 15 lakh.

The Delhi High Court decreed the suit in the favor of the plaintiff- Mondelez India Foods Private Limited, wherein the defendant’s- Neeraj Food  Products were alleged for infringement of trademark, copyright, passing off, and unfair competition as they launched a chocolate product under the mark ‘JAMES BOND’   with an identical color scheme, layout, and arrangement as that of the plaintiff’s  ‘CADBURY GEMS’/‘GEMS’ products.

The Single Bench of Justice Prathiba M. Singh allowed the present suit which was instituted by the plaintiffs for seeking permanent and mandatory injunction and damages for infringement of trademark and copyright, passing off, unfair competition and other reliefs. The Single Judge Bench was of the view that a comparison of the defendant’s infringing product and the packaging thereof left no manner of doubt that the same was a complete knock-off of the plaintiffs ‘CADBURY GEMS’. 

Relevant facts leading to filing of the present suit were that the first plaintiff- Mondelez India Foods Private Limited (formerly Cadbury India Ltd.) and the second plaintiff – Cadbury Schweppes Overseas Limited claimed ownership in the mark ‘CADBURY GEMS’/‘GEMS’ which was the subject matter of the present suit. The first plaintiff began its operations in the year 1947 and was stated to be the market leader in the field of confectionary chocolate products worldwide, including in India. Some of the leading brands of the plaintiffs include ‘CADBURY DAIRY MILK’, ‘CADBURY GEMS’, ‘CADBURY 5 STAR’, ‘BOURNVITA’ and ‘CADBURY PERK’ and brands of newer products like, ‘CADBURY BYTES’, ‘CADBURY CHOCKI’, ‘CADBURY DELITE’, and ‘CADBURY TEMPTATIONS. 

 The suit was filed in August, 2005 against M/s. Neeraj Food Products which was  a sole proprietary concern of Mr. Charan Das. The case of the plaintiffs was that the defendant launched a chocolate product under the mark ‘JAMES BOND’ with an identical color scheme, layout, and arrangement as that of the plaintiffs’ ‘CADBURY GEMS’/‘GEMS’ products.

The present suit was listed for the first time on October 4, 2005. Through an order dated April 24, 2006, the defendant was proceeded  against ex-parte. An application was then moved on behalf of the defendant seeking the setting aside of the ex parte proceedings. The same was allowed on July 25, 2006, on which date it was recorded that the non-appearance on behalf of defendant was not intentional, and therefore, the order dated April 24,  2006 directing ex-parte proceedings against the defendant was recalled.

The amended plaint was filed seeking enhancement of the valuation of the suit, which was allowed on the same day. Thereafter, through a detailed judgment the application for interim injunction was allowed.  However, through an order dated May 12, 2011, the Counsel for the plaintiff apprised the Court of the fact that the settlement talks failed and that a fresh application under Order 39 Rule 2A CPC was filed.  Finally, on November 30, 2011, the defendant proceeded against ex parte.  The matter was eventually taken up for hearing on March 8, 2022. 

After hearing the submissions of the parties after pursuing the pleadings, the Court noted that it was the case of the plaintiffs that the use of the impugned mark ‘JAMES BOND’/‘JAMEY BOND’ and the product packaging bearing the said mark, was infringing its registered trademark ‘CADBURY GEMS’/’GEMS’, its copyright registrations featuring the character ‘GEMS BOND’ and also constituted passing off.

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 ipsa loquitur. Further reliance was placed on the judgment of the Apex Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. and Parle Products (P) Ltd. v. J.P. & Co. Mysore .

In view of the same, the Court opined that a comparison of the defendant’s infringing product and the packaging thereof left no doubt that the same was a complete knock-off, of the plaintiffs’ ‘CADBURY GEMS’. The significant fact was that these products were sold not only in bigger packs, but also in smaller pillow packs, due to which the mark may not even be fully visible, the Court further noted.

In view of the contumacious conduct of the defendant in infringing the well-known mark, label and packaging of the plaintiffs, the Court was convinced that the present was a fit case for awarding  damages. Accordingly, actual costs of Rs 15, 86,928 were awarded in favor of the plaintiffs, in terms of the relief.