Cadbury Schweppes Overseas, the British confectionery maker, is set to lose its trade marks under ‘Cadbury’s Chocolate Eclairs’ registered in India for its chocolates, with the Intellectual Property Appellate Board(IPAB) on Thursday ordering the Registrar of Trade Marks to remove its marks from the registry.

The IPAB comprising its vice-chairman, S.Usha and its technical member, V.Ravi passed the order on applications filed by ITC Limited, Kolkata which sought to remove the Cadbury’s trade marks on several grounds.

“They have not used the marks even after obtaining registrations several years ago and the marks shall be cancelled for non –use”, said the Board.

The ITC submitted that it has been engaged in the business of marketing and manufacturing consumer goods since 1910 and started the business of marketing confectionery products in 2002 under the brand names, ‘Mint O’ and ‘Candy man’. It has been continuously and extensively using the trade mark ‘eclairs’ in conjunction with its famous trade mark ‘Candy Man’ which was well recognised by customers.

On May 4, 2005, the ITC was restrained by City Civil Court, Ahemadabad from using the trade mark “eclairs’ or any other deceptively similar trade mark following a suit filed by the Cadbury. Later, the Gujarat High Court allowed the ITC to manufacture and sell their ‘eclairs’ products as ‘Candyman Choco éclairs’. Under such circumstances, the ITC filed the present applications before the IPAB for removing the trade marks of Cadbury. The applicant contended that the Registrar of Trade Marks ought to have imposed a disclaimer condition in respect of the word éclairs since it was a generic word. The impugned trade marks were wrongly remained on the register.

However, the Cadbury said its trade mark ‘Cadbury’s eclairs’ was adopted by its predecessor several decades ago and used in respect of milk chocolate with a chewing caramel shell. It introduced a product under the name of ‘Cadbury’s Chocolate Éclair’ in 1972 in India and registered in 1974.

The Cadbury obtained registrations for three other chocolates such as Chocolate Eclairs, ‘orange flavoured Chocolate Éclair’ and ‘Éclair pop’. The Cadbury said it has exclusive right to use the marks.

Passing orders on the applications, the Board pointed the Cadbury filed registration certificates obtained in various countries. There was not a single evidence to show or prove the user. Just the registration alone would not help to prove its use. EOM

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