'Cadbury Gems' versus 'James Bond': Delhi HC rules in favour of Cadbury

After two decades of being stuck in a trademark infringement suit, the Delhi High Court sided with Cadbury and restrained an Indian company from selling its products that are similar to Cadbury Gems.

Justice Prathiba M Singh told an Indian company on Tuesday to pay Rs 16 lakh damages to British chocolate company Cadbury for infringing the Cadbury Gems trademark.

Cadbury(now Mondelez India Foods Pvt Ltd) had filed a case against the Indian company Neeraj Food Products(defendant) saying it had marketed its product as ‘James Bond’. The purple packet of the product was the same with multicoloured buttons in the background which was deceptively similar to Cadbury Gems, the court was told.

Cadbury also said they had done a promotional ad earlier in which they had marketed their product using ‘Gems Bond’ as a character and so the defendant was using this name to gain an unfair advantage.

The court said Gems, as a product is recognised by the old and the young alike and the defendant’s mark, is similar to that of the Gems. “Almost everyone’s childhood is associated with the consumption of Gems. The entire colour scheme of Defendant’s product is identical to that of the label and packaging of Gems. The marks are also confusingly and deceptively similar,” the court said.

The court remarked that the test of infringement in such a matter is not that of absolute confusion but even the likelihood of confusion is sufficient. “A comparison of the Defendant’s infringing product and the packaging thereof leaves no manner of doubt that the defendant’s product is a complete knock-off,” the court said.

The court said the similarities between both the products do not end there as Gems is also sold in smaller pillow packs, due to which the mark may not even be fully visible. “The smallest selling unit of Gems, that is the pillow pack, is even available for 1 rupee to 5 rupees. Hence, the product’s get-up, layout, and colour combination of the packaging play a significant role in selling the product. Since the product is not only sold at big shops but also at paan shops, it will create confusion in the mind of the buyer,” the court said.

The product will cause immense confusion in the mind of the buyer considering the class of consumers that the product is targeted at, that is, children, the court commented.

Safir Anand, senior partner at Anand and Anand, says this judgment has recognised many other aspects of intellectual property. “It not just seeks to strengthen the scope of proprietary rights but has also imposed costs on the infringing entity,” he said.

The court stated the two products are not only visually similar but also sound the same.” The resemblance in the product packaging and the phonetic similarity between the marks indicate the infringement by the defendant,” the court held.

Prakriti Varshney, appearing for Cadbury, said the damages awarded in the case will act as a deterrent to those traders who ride on the trademark and goodwill of the others and make counterfeit goods.