Thursday, September 30, 2010

Lotte India Corporation Limited Vs Cadbury India Limited- Decision Pending

Parrys Confectionery Ltd was renamed (news report here) as Lotto India Corporation Ltd on 15 September, 2004. The Registrar of Companies, Tamil Nadu has approved the change of name of the company. Lotte India Corporation has sought permanent injunction in its suit filed against Cadbury Limited before Madras High Court for using the trademark CARAMILK’ and ‘ECLAIRS’. Lotte’s products images can be seen here.

Cadbury UK Limited and Cadbury India Limited (The defendants) have registration of their label marks containing the word ECLAIRS and claimed that the use of the same by the plaintiff would amount to infringement of their registered trademark, passing off and infringement of copyright. Cadbury’s products images can be seen here.

Lotte India Corporation had received a legal notice in feb,2009 from Cadbury Limited wherein they claimed that the trademark CARAMILK is being used by them in Canada for more than 40 years and they have been using the Mark CADBURY’S DAIRY MILK ECLAIRS and its label from 1971 which is registered in many c ountries all over the world. They further claimed that the broken Eclairs device as well as purple and white color combination exclusively belongs to them.

Lottie claimed that:

1. Parry’s has been using the mark “CARAMILK” and “ECLAIRS” since 1975 and 1982 respectively.

2. Trademarks ECLAIRS and CARAMILK on account of its acquisition of Parry’s Limited which according to Lotte has been using the said marks in conjunction with common brand name “Parry’s”.

3. Lotte has already applied for registration of the said trademarks as Lotte’s CARAMILK and ECLAIRS post acquisition with Parrys. Lotte is using the mark “CARAMILK” and “ECLAIRS” since 1982 and 1986 respectively.

4. Use of the terms Eclairs and Caramilk is a common trade practice in confectionary business all over the world and that many companies have been using the said marks along with distinctive marks/brand names. Similarly as per Lotte picture of broken éclairs is also being used world over as éclairs is known as a sweet with soft chocolate inside as demonstrated in the picture.

Cadbury claimed that:

1. No such product as Parry’s CARAMILK or ECLAIRS has been in the market as claimed by Lotte. Cadbury stated that it in fact came across the Cadbury has denied the stand that the two marks are being used commonly as a matter of trade practice.

2. The device of broken éclairs is also distinctive to them as the same was adopted by them almost 50 years ago. Cadbury’s trade mark CADBURY’S CHOCOLATE ECLAIRS was originally launched 1960 by Pascalls which later became a part of Cadbury in 1971 making it then the second largest brand in the company.

3. The trade mark "CADBURY CHOCOLATE ECLAIRS" was first registered by them in July 1972, three years earlier than the Lotte’s registration.

Counsel of the parties

1. AA Mohan of Mohan associate a Chennai based firm is appeared for Lotte India Corporation.

2. ARM Arunachalam of Udwadia & Udeshi Associates appeared for Cadbury and sought time for completion of pleadings.

The matter has accordingly been adjourned for hearing later, and the evidence to be present by both counsels before the Hon’ble High Court may decide the title of the disputed trademarks.

Information based on web search and may be considerable point in case.

1. Parrys Confectionery Ltd has filed a Trademark Application No.1211151 on 02/07/2003 for trademark “caramilk”. A Certificate no -712248 was issued on 27/-3/2008 and it is a registered TM valid up to 02/07/2013.

2. Parrys Confectionery Ltd has filed a Trademark Application No.1211151 as “Eclair” on 19/03/1997 .A Certificate No. 770833 was issued on 13/01/2009. It has been removed.

3. Lotte India Corporation Limited has filed a Trademark Application No 1364706 for “LOTTE Eclairs” on 17/06/2005, with user claim since 01/01/1986 and certificate no 704365 was issued on 24/03/2008. The registration is valid up to /renewed up to 17/06/2015.

4. Lotte India Corporation Limited has filed Trademark Application No. 1364712 on 17/06/2005 for Trade Mark “LOTTE CARAMILK (LABEL)” with user claim since 01/01/1982. A Certificate No. 640792 was issued on 11/06/2007, which is Valid up to/ Renewed up to 17/06/2015.

5. Cadbury (India) Private Limited has filed Trademark Application No.327607 for “ECLAIRS” trademark, with user claim since 05/08/1977 and a Certificate No. 149228 was issued on 31/01/1985.Which is valid up to 05/08/2015.

Source: Law et Trademark Registry, India.

Disclaimer: The above presented facts shall not be use for any legal purpose.

No comments: