THE LANDMARK CASE OF “GEMS” Vs. “JAMES BOND”

In this competitive world, there are many companies that try to capitalize on a large market share by introducing unified products and commodities. At the same time, some companies malignly stab to tarnish their uniqueness of well pre-dominant established products by creating such illusive concoctions to deceit customers and to jeopardize their goodwill of an established company. Trademark is the lifeline of a company which manifests the identity from other products.

According to the Cambridge dictionary, infringement could be defined as an action that breaks a rule, law, etc. and the synonym of it would be breach, violation. Now, let us look at the definition of passing off. According to the Cambridge dictionary, passing off could be defined as the illegal act of selling a product that is similar to one that another company has legally protected by a trademark.

Section 29 of the Trademark Act, 1999 states about various aspects concerning the infringement as given in S.29(1) that A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trademark concerning goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.

The Trademark Act, 1999 does not have an explicit provision that specifically describes passing off but there are n no. of common law judgments that let the courts draw its meaning as to whether the infringement of trademark done is in such a way that the mark is not only deceptively similar to the trademark of that other company but it is also capable of creating or is creating confusion for the customers, which ultimately results in damage for the business of the company. The basic difference between the principles of Infringement and Passing off with regard to Trademark law has been very articulately pointed out in the landmark case of Cadbury India Ltd & Ors V Neeraj Food Products[1].

FACTS:

  1. The plaintiff company named Cadbury India Limited who is Plaintiff 1 began their venture and operations in the year 1947 before this the company was known as Hindustan Cocoa Products Limited by which the name was granted by Cadbury is Plaintiff 2 after the registration of the trademark.
  1. Plaintiff 2 through an agreement licensed certain trademarks in the year 1994. Both the plaintiff are subsidiaries of the U.K based company named Cadbury Schweppes, which is the core manufacturer of confectionery and beverages products.
  2. The plaintiff has a huge market share in the field of confectionery and chocolate products in India under several brands, the plaintiff stated some of the brands named Cadbury Dairy Milk, Cadbury Gems, Cadbury Five Star, Cadbury Bournvita, Cadbury Perk, and for same, the registration was granted and licensed with disclaimer of having the exclusive rights for the stated chocolate product.
  3. The plaintiff before the Court in the suit produced a copy of dossiers marking the registration No.582896 of the word mark affixed ‘Cadbury Gems’ on the label which was acknowledged on 14th October 1992 up to the validation till 14th October 2006 in accord with sugar chocolate, milk chocolate, fruits, caramel, etc. with the exclusive disclaimer rights vested to use the word ‘GEMS’. The artistic work of the label was registered with registrar of copyright which was titled “GEMS BOND”.
  4. Plaintiff 1 previously known as Hindustan Cocoa Products Limited by obtaining license and certificate of the trademark they proclaimed that they have procured and sold sugar-coated milk chocolate buttons for the last several decades which has the large market share capitalization in India under the Trade Mark of ‘GEMS’.
  5. The plaintiff even stated in their factum that the product has been consumed by all the age groups of people, literates, illiterates, semi-literates through various distribution channels. The product is popular amongst children.
  6. They had a unique and unusual pillow packing which made an eye-rolling get up for the attraction of the consumers.
  7. The plaintiff observed in the market that the defendant of this suit introduced chocolate where the size, shape and set up of that product was an emulation of that Plaintiff product and even the pillow pack which was used by the plaintiff was correspondingly same, under the trademark sign “JAMES BOND” phonetically it was pronounced as “JAMES BOND” which was not dissimilar of the plaintiff product “GEMS”.
  8. The plaintiff alleged that the respondent tried to degrade the value of the plaintiff company by introducing such deceptive nature product into the market and to confuse the customers.

PROVISIONS OF LAW:

  • Order 21 Rule 1 & 2 of Civil procedure Code 1908 – Interlocutory Injunction
  • Section 29(2) in the Trade Marks Act, 1999 – Infringement of Trademark

PROCEDURAL HISTORY:

The contravention of Trade Mark of the plaintiff set up commodity led into agitation which further resulted in filing a suit of Interlocutory injunction before the Delhi High Court with ordinary suit to restrict the defendant to produce or to procure such product/good/commodity which replicates with the product of the plaintiff.

ISSUES:

Whether such injunction orders under Order 39 Rule 1 & Rule 2 shall be ordered in favour of Plaintiff to restrain the defendant from passing off goods by procuring or reproducing or manufacturing into any material form?

JUDGEMENT:

RATIO DECIDENDI-

  • In the light of the requisites of the Injunction, the Delhi High Court observed the facts that were covered under the sphere of Interim Relief, they are strong prima facie case in favour of the plaintiff.
  • May cause irreparable damage to the plaintiff
  • Clear evidence that the defendants have in their possession
  • The High Court found that the registered Trade Mark of the plaintiff’s product and the product Defendant is identical and can be noticed with the naked eye and therefore no question arises and held that infringement has occurred on the part of Defendant.
  • The court even resembled the phonetic similarity between “GEMS” and “JAMES” which satisfied the High Court that the defendant kept a mal fade intention to degrade the value of the plaintiff’s goodwill and so the imitated.
  • It was concluded that the defendant had used the pillow pack which is almost a replica of the plaintiff product even the structural set-up was of identical nature that would easily conquer the mind of the consumer.
  • There is crystal clear evidence that the defendant/s tried to infringe the right placed under section 29 of The Trade Mark Act 1999 which suggests identical name identical size, shape and verbal phonetic use of words was similar which ultimately allows the interim relief or injunction to be granted and shall to put in accord of Order 39 Rule 1 & 2 of Civil Procedure Code, 1908.

OBITER DICTA-

To the issue of passing off goods, the court invoked various principles and citations in one of the cases Hindustan Radiators Co. v Hindustan Radiators Ltd[2], in this case, the court relied on eight points i.e.,

1). use of trademark and trade cycle used for a longer time and continuously

2). Suit for an injunction has been filed before limitation

3). the expression and impression of the distinctiveness of that product are in the mind of the consumer

4). the nature of the activity of the plaintiff and defendant is similar

5). Similar trademarks of the parties. 

6). Trademarks used by the defendant are likely to deceive the general public

7). the sphere of the activity and market of consumption of goods of parties is the same

8). the customers of the plaintiff are likely to be illiterate, uneducated, and unwary who are capable of being deceived.

With these points, the High Court has no hesitation that the plaintiff’s evidence is of prima facie evidence restricting the defendant for the passing off goods and to cease to procure or produce such setup of products of the identical marks.   

With this, the Delhi High Court allowed the application of the plaintiff/s and ordered an interlocutory injunction in favour of plaintiff/s which restrains the defendant from the passing off their good/commodity of the identical brand name and substantially reproducing any material of the artistic work of the pillow packet.

ANALYSIS-

While deciding on this case, the Delhi High Court took into consideration many precedents that have already been decided both from the Indian case laws as well as from the foreign case laws.

The plaintiff has pleaded that the deceptive similarity, dishonest adoption of the essential features of its trademark, label and packaging by the defendant entitles the plaintiff to protection by injunction in its action for infringement, dishonest passing off and copyright violation by the defendant. While adreesing this issue, the High Court relied on the judegement repeatedly upheld by the Apex Court that on a comparison of the trademark of two parties in case the trademark adopted by the defendant is idntical to that of the plaintiff, the plaintiff may not be required to prove anything further. Section 29 of the Trademarks Act, 1999 statutorily mandates so as well. The principles in this regard were succintly laid down in Kaviraj Pandit Durga Dutt Sharma v Navratna Pharmacutical Laboratories.[3]

Another issue that was addressed in this case was the requirement that the plaintiff has to meet in order to make out a case of infringement of its mark by the defendant. The pronouncement regarding that have been succintly laid down in the judgement delivered by the Division Bench in Atlas Cycle Industries Ltd V Hind Cycle Ltd[4] wherein it was stated that “if the essential features of the mark of the plaintiff have been adopted by the defendant, the fact that there are some additional features in the defendant’s mark which show marked references is immateral in an action for infringement. The plaintiff has only to show that the similarity of the defendant’s mark or goods is such that the defendant can pass off his goods as those of the plaintiff. “ The court further upheld that, “ thus, while in an action for infringement of a registered trade mark the plaintiff has to establish either an use of his registered trade trade mark as such or of an identical mark or of a deceptively similar mark by the defendant, he has to establish in an action for passing off that the defendnt’s mark or goods are such that the defendant can pass his goods as those of the plaintiff.”

Further to examine the proportion of similarity to the proportion of dissimilarity in the case of passing off it was held in the case of Harrols Ltd V Harrodian School Limited[5] that wherein it was held that deception is the gist of the tort of passing off and it is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public that if that is the probable result of his conduct, nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is a question which calls for an answer.

The Court also relied upon the case of Colgate-Palmolive Ltd V KF Pattron[6] it was held that the defendant borrowed features from the plaintiff’s packaging and that the ordinary purchaser of normal memory was not to be expected to examine the goods keeping them side by side, and the get up would cause confusion. The name used by the defendant was also found to be deceptively similar and the court applied the question of failing in imperfect memory of the customer because the purchaser could be a person who would not be able to discern wether the toothpaste was ‘Colgate or Fringate’.

The question of deceive through a trade mark was also addressed in theis case, citing the judgements in the cases of Amritdhara Pharmacy V Satyadeo Gupta[7] and Corn Products Refining Co. V Shangrila Food Products Ltd[8], the Apex Court held that the overall similarity of the two composite marks must be considered, that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection, and that whether to such a man the overall structural and phonetic similarity of the two marks was likely to deceive or cause confusion.

The above mentioned case laws has aided the Court to conclude that the plaintiff has made out a prima facie case of dishonest passing off by the defendant of his goods as those of the plaintiff entitling it to grant interlocutory injunction.

 CONCLUSION

In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of Delhi explained the difference between passing off action and an action for trademark infringement as under:

  • An action for trademark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy.
  • The use of the trademark of the plaintiff, by the defendant, is also a prerequisite in the case of an action for infringement while it is not a necessity of an action for passing off.
  • In an action for infringement of the plaintiff’s trademark, it is immaterial that the outfit, outer covering, and other written marks on the goods originate from a different source than that of a registered proprietor’s trademark. The liability of the defendant in such a case may be absolute. However, in the case of passing off of trademark, the defendant may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the plaintiff’s goods.
  • In an action for infringement, Plaintiff on account of it being a registered trademark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit.

[1] 2007 (35) PTC 95 Del

[2] AIR 1987 Delhi 353

[3] AIR 1965 SC 980

[4] ILR 1973 I Delhi 393

[5] 1996 RPC 697

[6] 1978 RPC 635 (PC)

[7] AIR 1963 SC 449

[8] AIR 1960 SC.

Submission By: Sohini Goswami, Amity University, Kolkata

Published by DUCTUS EDGE-A KNOWLEDGE ATLIER

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