29 July 2022

Chocolates ‘James Bond’ a complete knock-off of ‘Gems’ – Delhi HC notes similar packaging and confusion among children

Considering the resemblance in the product packaging, as also the phonetic similarity between the marks ‘Gems’ and ‘James Bond’, the Delhi High Court has granted permanent injunction against the use of the latter mark by the defendant.

The Court was of the view that the Defendant’s product sold under the mark ‘James Bond’/‘Jamey Bond’ infringed the Plaintiffs’ rights in the mark ‘Cadbury Gems’, as also, the copyright in respect of the products sold under the said mark. It held that the acts of the Defendant constituted infringement and passing of the registered trademarks of the Plaintiffs.

Pointing out various similarities between the packaging of both the products, the High Court held that the entire colour scheme of the Defendant’s product was identical to that of the Plaintiffs’ label and packaging and that the marks were also confusingly and deceptively similar.

It observed that the Defendant’s pillow pack had the same blue/purple background and same size as that of the Plaintiffs’; positioning of the manufacturer’s name was same; brown oval on the Plaintiffs’ pillow pack and the brown diamond in defendant’s product were bordered by same blue/purple; trademarks were inscribed in identical white colour with same uneven script; colour combination of tablets was similar; same visual impression of explosion; and that the defendant’s product was conceptualized taking inspiration from Plaintiff’s character ‘Gems Bond’ used in promotions.

The Court also observed that there was an immense likelihood of confusion, particularly considering the class of consumers that the product was targeted at, that is, children. Noting that the ‘GEMS’ product is also usually consumed by small children, both in urban and rural areas, the Court was of the view that even likelihood of confusion was sufficient. Further, observing that chocolates are sold not merely in big retail stores or outlets, but also, in road side shacks, paan shops, patri vendors, kirana stores and stalls outside schools, etc., the Court opined that thus, there was an immense likelihood of confusion.

The High Court in this regard also noted that the Plaintiff’s GEMS product was one of the most popular and well-recognized chocolate products in India, and that almost everyone’s childhood is associated with the consumption of the Plaintiff’s ‘Cadbury Gems’/‘Gems’.

Awarding damages and actual costs to the plaintiff in this case, the Court in Mondelez India Foods Pvt. Ltd. v. Neeraj Food Products [Judgement dated 26 July 2022] also held that the Defendant failed to establish that the Plaintiffs’ mark ‘Cadbury Gems’/‘Gems’ was common to trade.

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