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Trademark – IPAB relies on twin test of prior use and confusion

29th April, 2013

Granting a break to Nestle, the Indian Intellectual Property Appellate Board (IPAB) has allowed their application for registration of mark “Kit Kat” used in respect of ­­wafer chocolates and cereals while denying same to M/s. Kit Kat Foods India Ltd. in respect of their products chanachur, ice cream, etc.      

Prior use and possibility of confusion

Dwelling on the twin test of prior use and possibility of confusion, the IPAB in its Order dated 22-4-2013 considered export sale invoice in 1987 for the purpose of prior use or first sale by Nestle as opposed to Kit Kat Food Product’s use, as per their application, from 1991. It noted that Societe Des Produits Nestle S.A. was using the trade mark in respect of wafer chocolates outside India since 1935, and in 1942 the mark was registered for goods falling in class 30. It was also noted that confusion would only be by subsequent use of the trademark by Kit Kat Food Products and hence provisions of Section 11(1)(a) of the Trade Marks Act were not attracted.      

Class of customers are same

Identicalness of the marks, similarity of the goods and trade channels were also noted by the Board, while it observed that products of both the companies were often purchased by small children and hence there was every possibility of confusion when the class of customers, which is the test to determine deceptive similarity, is considered.    

Protection of user's rights

The Appellate Board in this Order No. 88 of 2013 further termed the reasons for adoption of identical mark by Kit Kat Food Products, as not clear and held that the company was trying to ride upon the goodwill of Nestle. The former had contended that mark used for chanachur was derived from the word ‘chit chat’ as the goods were snack items which were taken during a chat. Relying on Supreme Court Judgment in the case of Milment Oftho Industries, it was held that Nestle had their mark used outside India and their rights are to be protected.      

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