Cadbury’s in April 2005 filed a case against ITC when the company started marketing eclairs confectionery along with its ‘Candyman’ trademark. This made ITC move to Intellectual Property Appellate Board (IPAB) and file a case that the trademark hasn’t been used since 1994. Cadbury, in response, said that it’s Chocolate Eclairs was registered as a trademark in India since 1974 and that it has been continuously using it. Cadbury also stated to have trademarks for Cadbury Chocolate Eclairs and Chocolate Eclairs Pop.
Things continued for long without any conclusion and then IPAB judgment, delivered by V Ravi and S Usha, said there isn’t “a single evidence” to prove it.
“Just the registration alone will not help the respondents to prove their use,” the judgement went. The board in various matters on the issue of non-user has held that if the respondent does not appear to rebut the ground of non-user, it goes without saying that they have not used the mark even after several years of registration and the mark shall be cancelled for non-user.”
T Prashant Reddy, an intellectual property lawyer, replied: “It is not clear as to why Cadbury failed to file such evidence, especially since it had been maintaining some of these trademarks for more than 40 years.”
The 3 trademarks— Choclate Éclairs, Orange flavoured chocolate éclairs and Chocolate Eclairs pop were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of these trademarks after they were registered.
“Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark,” said Suchindran B.N., a lawyer practising at the Madras high court.
Cadbury said it does not want to continue this matter further as the Cadbury Eclairs label has not been used by the company for a long time.
What this incident shows is that non-use is a major reason for brands losing trademarks. Kellogg’s got its trademark POPS removed a year before this incident against chewing gum and dairy products maker Pops Food Products. Bata lost its Sparx trademark in a case against Relaxo Footwears in the same year.
