How Cadbury lost some of its trademarks in India
A little over 5 months ago, the IPAB’s order caught everyone by surprise. Cadbury, the company known very well indeed for Cadbury Eclairs, lost some of its marks consisting the term “Eclairs” without putting up much of a fight. Interestingly Cadbury’s loss was a foreseeable consequence of its own action against ITC.
How it all began
In April 2005, Cadbury delivered a rude shock to ITC in the form of an ex-parte injunction for using the mark “eclairs”. ITC did its research and found that Cadbury had not been using four of its marks namely, Cadbury’s Chocolate Éclairs (a label mark), Cadbury Chocolate Éclairs (a label mark), Chocolate Éclairs Pop (a label mark) and Cadbury’s Orange flavoured Chocolate Éclairs (a label mark). Armed with this knowledge, ITC filed rectification petitions with the Intellectual Property Appellate Board (“IPAB”) for removing these marks.
Of these, the IPAB noted that Chocolate Éclairs Pop’s registration had not been renewed and was therefore anyway removed. As regards the three other marks, ITC, in its petitions to the IPAB, argued that they ought to be removed on the ground of non-use. Per Section 47 of the Trademarks Act, 1999, an application for removal of a registered trademark on the ground of non-use can be made after 5 years and 3 months of registration. ITC also argued that “eclairs” was common to trade.
Cadbury, in its statement countering ITC’s petitions, said that it had been using Cadbury Eclairs as its trademarks for several decades and had a registration for Cadbury Chocolate Eclairs from 1974. It further argued that “eclairs” was only a part of the three trademarks and not the whole mark and in any event, they had acquired distinctiveness through considerable use.
When a hearing was appointed in these matters, Cadbury submitted that it was in the process of withdrawing its registrations and would therefore not argue the matters.
The IPAB heard ITC’s arguments and perused the evidence submitted by Cadbury. It noted that Cadbury had shown their registrations in various countries but nothing to support use of the trademarks and held that:
- registration alone would not prove use of the trademarks; and
- the trademarks were liable to be cancelled if registered proprietors do not rebut the allegation of non-use.
The IPAB therefore ordered the removal of Cadbury’s Chocolate Éclairs, Cadbury Chocolate Éclairs, and Cadbury’s Orange flavoured Chocolate Éclairs from the Trademarks Register.
This is not such a loss for Cadbury considering the fact that they were not using these marks. In any case, Cadbury recently rechristened its famous caramel candies, Cadbury Eclairs, to “Cadbury Choclairs” (which had a fair share of problems too). I am not sure why they rechristened the products but I am guessing one of the reasons is the fact that eclairs is “common to trade” as ITC argued.