Both business houses had been in a tussle over 'Eclairs' in Class 30, which includes pastry and confectionery, since 2005. The matter was before the Gujarat high court before reaching the trademark appeal tribunal.
Though during the hearing at IPAB, Cabury's said that it was not pressing the case and initiating steps to withdraw these marks. ITC stood its ground for rectification of these marks from the trademark register on the ground of merits.
The dispute erupted after ITC received an order of exparte injunction on April 1, 2005, restraining it from using Eclairs or any other deceptively similar trademarks. The said order was passed by the city civil court judge, Ahmedabad, on a suit filed by Cadbury Schweppes Overseas.
Aggrieved by the order, ITC approached the Gujarat high court and the court passed a modified order on April 15, 2005, stating the applicant can manufacture and sell their Eclairs products as Candyman Choco Eclairs, following which it moved IPAB for rectification of these marks in three variants of chocolates.
The IPAB bench comprising S Usha, vice chairman and V Ravi, technical member - trademarks, said, Just the registration alone will not help the respondent (Cadbury) to prove their use. The impugned trademarks are liable to be removed on the ground of non-use. In view of the foregoing observations, the three rectification applications are allowed with a direction to the Registrar of Trade Marks to remove the trade marks, the IPAB bench said.
According to the ITC counsel, the applicant had started business of marketing confectionery products in the year 2002 under the brand names Minto & Candyman. The applicant started marketing the Eclairs confectionery in August, 2003. Since then, it has been continuously and extensively using the trademark Eclairs in conjunction with its famous trademark Candyman, which was well recognised by the customers.
ITC stated that there were other manufacturers or marketers of confectioneries under the trademark Eclairs since 1987. It argued that the trademark Eclairs is liable to be removed as it is not used since the year 1994 while pointing out that the registrar ought to have imposed a disclaimer condition in respect of the word Eclairs. The company said that impugned trademark was wrongly registered and wrongly remains on the register. The impugned trade mark is not distinctive of the registered proprietor at the time of filing of the present petition.