Court: High Court of Delhi at New Delhi Case No.: CS (COMM) 393/2018 Decided on: 26 July 2022 Presiding Judge: Justice Prathiba M. Singh Citation: Mondelez India Foods Pvt. Ltd. & Anr. v. Neeraj Food Products, CS (COMM) 393/2018 (Del. HC, 26 July 2022)
Background
The Plaintiff No. 1, Mondelez India Foods Private Limited (formerly known as Cadbury India Limited), is a confectionery company that commenced operations in India in 1947 and claims to be a market leader in chocolate products worldwide.
Plaintiff No. 2 is Cadbury Schweppes Overseas Limited. Together, the Plaintiffs claim ownership of the trademark ‘CADBURY GEMS’ / ‘GEMS’, which has been used in India since at least 1968 when the earliest registration – for the word mark ‘CADBURY’S MILK CHOCOLATE GEMS’ bearing Registration No. 249360 – was obtained in Class 30. The Plaintiffs hold a total of four trademark registrations in India in respect of the ‘GEMS’ brand, including label and device marks. In addition, Plaintiff No. 1, in its earlier name of M/s Hindustan Cocoa Products Ltd., holds two copyright registrations (Nos. A-50680/90 and A-49975/89) in respect of the artistic character ‘GEMS BOND’ – a figure depicted in a western suit carrying a gun – which has been used in the promotion of the ‘GEMS’ product. The gross sales value of the ‘GEMS’ product had grown from Rs. 38 crores in 2000 to over Rs. 1,487.56 million by 2010, with substantial advertising and promotional expenditure over the same period.
The Defendant, M/s Neeraj Food Products, is a sole proprietary concern of one Mr. Charan Das. The Plaintiffs alleged that the Defendant launched a chocolate product under the mark ‘JAMES BOND’ / ‘JAMEY BOND’ bearing a packaging that was virtually identical in colour scheme, layout, scripting style and visual motifs to the Plaintiffs’ well-known ‘CADBURY GEMS’ pillow-pack. The Defendant had filed Trademark Application No. 1124200 in Class 30 in August 2002, claiming user since 1979.
Procedural History
The suit was filed in August 2005. Summons were issued on 4 October 2005. The Defendant initially appeared but subsequently became irregular and was eventually proceeded against ex parte on 30 November 2011. An interim injunction was granted on 25 May 2007 restraining the Defendant from using the impugned mark and packaging. Ex parte evidence was filed by the Plaintiffs through PW-1, Mr. Tapan Chauhan, whose examination was recorded on 22 February 2013. Evidence was concluded on 3 July 2013. By order dated 4 April 2022, the name of Plaintiff No. 1 was changed from Cadbury India Limited to Mondelez India Foods Pvt. Ltd. pursuant to an application under Order XXII Rule 10 CPC. Final arguments were heard and the judgment was pronounced on 26 July 2022.
Issues for Determination
The Court framed ten issues. In substance, the following legal questions fell for determination: whether the Plaintiffs were entitled to permanent and mandatory injunctions; whether the Plaintiffs were the registered proprietors of the trademarks in question; whether the Plaintiffs were copyright owners of the ‘GEMS BOND’ artistic work; whether the acts of the Defendant constituted infringement of the Plaintiffs’ registered trademarks; whether the acts of the Defendant amounted to passing off; whether the Defendant’s label was deceptively similar to the Plaintiffs’ label; and whether the Plaintiffs’ trademark was common to trade. The Court also considered whether the Plaintiffs were entitled to damages and, if so, to what extent.
Key Holding of the Court
The Court decreed the suit in favour of the Plaintiffs in its entirety. It granted a permanent injunction restraining the Defendant from using the trademark ‘JAMES BOND’ / ‘JAMEY BOND’ or any mark deceptively similar to ‘CADBURY GEMS’ / ‘GEMS’ and from using packaging deceptively similar to the Plaintiffs’ pillow-pack. The Court also held the Defendant liable for infringement of the Plaintiffs’ registered trademarks and copyright, as well as for passing off. Damages of Rs. 10 lakhs were awarded on account of the Defendant’s flagrant violation of the Plaintiffs’ rights. Actual litigation costs of Rs. 15,86,928/- were also awarded in favour of the Plaintiffs. The reliefs of delivery up and recall of the Defendant’s products were not granted at this stage, the Court observing that no submission had been made at the time of final arguments that the Defendant’s products continued to be available in the market; liberty was, however, reserved to seek execution at a future stage if infringing products were found.
Statutory Provisions Involved
The Court applied the provisions of the Trade Marks Act, 1999, in adjudicating the trademark infringement and passing off claims. The suit also involved the Copyright Act, 1957 in relation to the Plaintiffs’ copyright registrations for the ‘GEMS BOND’ artistic works. The Court relied upon Order XXII Rule 10 of the Code of Civil Procedure, 1908 for the change of name of the Plaintiff. Order XXXIX Rules 1 and 2 CPC governed the interim injunction proceedings and Order XXXIX Rule 2A CPC was invoked in connection with alleged contempt of the interim order. The award of actual costs was supported by the Commercial Courts Act, 2015, the Delhi High Court (Original Side) Rules, 2018 and the Delhi High Court Intellectual Property Division Rules, 2022.
Reasoning of the Court
The Court undertook a comparative visual analysis of the rival packagings and identified nine distinct points of similarity between the Plaintiffs’ ‘CADBURY GEMS’ pillow-pack and the Defendant’s ‘JAMES BOND’ product. Both products shared the same blue/purple background and pillow-pack size. The Defendant as a brown diamond, both bordered in the same blue/purple colour, replicated the Plaintiffs’ brown oval at the centre. The placement of the manufacturer’s name at the top-left corner was identical in positioning and visual treatment. The trademarks ‘GEMS’ and ‘JAMES BOND’ were both inscribed in white, uneven, multicolored script. Both products displayed a visual explosion motif in blue/purple at the centre with lines emanating outward and chocolate tablets flying out. The colour combination of the tablets was similar and both packs depicted half-chocolate tablets showing the chocolate centre. Additionally, the Court noted that the Defendant had conceptualised its mark ‘JAMES BOND’ directly inspired by the Plaintiffs’ registered promotional character ‘GEMS BOND’.
In evaluating the legal standard for deceptive similarity, the Court relied upon two authoritative Supreme Court decisions. First, it applied the test from Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968, which directs that the question of deceptive similarity must be approached from the point of view of a person of average intelligence and imperfect recollection. To such a person, the overall structural, visual and phonetic similarity between two marks, along with the similarity of the underlying idea, is sufficient to create a reasonable likelihood of confusion. Second, the Court relied on Parle Products (P) Ltd. v. J.P. & Co., AIR 1972 SC 1359, which established that in assessing deceptive similarity, the Court must look at the broad and essential features of the competing marks rather than subjecting them to a side-by-side examination for differences. It is sufficient if the impugned mark bears such overall similarity to the registered mark as would be likely to mislead a person who is ordinarily familiar with one mark into accepting the other when offered to them on a subsequent occasion. The Court also referred to the judgment of a learned Single Judge of the Delhi High Court in ITC Ltd. v. Brittania Industries Ltd., 233 (2016) DLT 259, in the context of the concept of ‘initial interest confusion’ in product packaging cases.
The Court further characterised the present facts as a case of res ipsa loquitur, holding that the comparative packaging was so obviously and startlingly similar that it spoke for itself without the need for elaborate analysis. This is a notable invocation of the evidentiary doctrine in the intellectual property context.
In assessing the relevance of the class of consumers, the Court specifically noted that ‘CADBURY GEMS’ products, including their smallest selling unit – the pillow-pack available for Re. 1 to Rs. 5 – are sold at roadside stalls, paan shops, kirana stores and outside school premises. Given that the primary consumer of this product is children, the Court held that the get-up, layout and colour scheme of packaging assume critical importance at the point of purchase and that the likelihood of confusion is heightened in this context.
Regarding the Defendant’s defences, the Court found them wholly unsubstantiated. The Defendant had filed only a handful of kacha invoices from 2001-02 and had not led any documentary evidence of substantial user or advertisement of its mark. The written statement merely claimed that the Defendant’s products were different, without substantiating the assertion. The Defendant was also unable to discharge the burden on Issue No. 8 – that its label was different and not deceptively similar – given the overwhelming visual similarities documented on record.
On damages, the Court held that the Defendant’s conduct was contumacious in infringing the well-known mark, label and packaging of the Plaintiffs. On costs, the Court relied upon the Supreme Court’s observations in Uflex Ltd. v. Government of Tamil Nadu & Ors., Civil Appeal Nos. 4862-4863 of 2021, to hold that actual costs were warranted in commercial intellectual property matters and accordingly awarded Rs. 15,86,928/- as actual litigation costs.
Doctrinal Significance
This judgment makes several contributions to Indian trademark and copyright law that merit attention.
First, it reinforces the enduring relevance of the Parle Products principle – that in assessing deceptive similarity, the Court must concern itself with overall impression and broad features rather than granular differences. The judgment is a textbook illustration of the application of this principle in the context of mass-market confectionery packaging.
Second, the Court’s invocation of res ipsa loquitur in a trademark infringement context is doctrinally significant. While this principle is well-established in tort law, its application in IP packaging disputes signals a judicial willingness to deploy inferential tools of evidence where the copying is visually manifest and beyond reasonable contest. This reduces the evidentiary burden on plaintiffs who face obvious and wholesale imitation.
Third, the judgment affirms the principle that consumer confusion analysis must be calibrated to the actual class of consumers who encounter the product – in this case, children purchasing low-priced goods in informal retail environments. This context-sensitivity is essential to the law’s protective function and reflects the economic and social realities of mass-market IP infringement in India.
Fourth, the award of actual litigation costs of Rs. 15,86,928/- under the Delhi High Court Intellectual Property Division Rules, 2022, read with the Commercial Courts Act, 2015, reflects the growing judicial consensus in India’s commercial courts that nominal costs no longer serve as an adequate deterrent in IP litigation. The shift toward full indemnification costs is an important development for brand owners seeking meaningful remedies.
Fifth, the judgment confirms the independent and parallel operation of trademark and copyright protections over a single commercial product. The Plaintiffs successfully invoked both their registered trademark rights over ‘GEMS’ and their copyright in the ‘GEMS BOND’ artistic character, underscoring that IP protections in India are cumulative and not mutually exclusive.