Trade mark is defined under Section 2(1)(zb) of the Act as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others which may include the shape of goods, packaging, a combination of colours, etc. Further Section 29 of the Act clearly states that there shall be an infringement of trademark if an unauthorized person uses a similar or identical registered trademark in relation to other identical or similar goods, which is likely to cause confusion on the part of public to have association with the registered mark.
Ferrero Spa & Nr vs M/S Ruchi International & Anr [CS(COMM) 76/2018]
The post discusses the recent judgment of the Hon’ble High Court of Delhi –
Date of Judgment:02nd April, 2018
Parties to the suit
- Ferrero Spa (plaintiff) was founded in 1946 and is part of the Ferrero Group. It is ranked amongst the 4 biggest confectionary producers worldwide and is a most reputable company in the world, according to the Reputation Institute Survey of 2009, as reported in the Economist and Forbes Magazines. They conduct their business in India officially through Ferrero India Private Limited, incorporated in the year 2008. However, their products had entered into the Indian market long before the incorporation of the Indian subsidiary of the Ferrero Group and they enjoy a formidable consumer base.
- Defendant No. 1 was an importer and marketer of chocolates under the brand-name ‘’Golden Passion’’ in India
- Defendant No. 2 is a manufacturer of the chocolates under the mark Golden Passion in China.
Facts of the Case
- The Plaintiff have secured numerous trademark registrations over the word ‘’FERRERO ROCHER’’ and for other elements of the Ferrero Rocher viz., trade-dress in several countries of the world, including India. The Delhi High Court vide order dated March 13, 2004 in CS (OS) 404/2012 declared that the Plaintiff’smark FERRERO ROCHER is a well-known mark.
- The Plaintiff claimed that the label, shape, and other characteristic features of the packaging of ‘’FERRERO ROCHER’’ chocolate specialties, constitute its trade-dress and are entitled to protection as being well-known mark as it satisfies the criteria mentioned in Section 11(6) of the Trade Mark Act, 1999. The chocolate product sold by the Defendants and their packaging were similar to those of the Plaintiffs FERRERO ROCHER chocolate. This misuse of identical or similar Trademark or Trade-dress created confusion in the minds of the consumer that :
- The Defendants products/services emanate from the Plaintiffs themselves;
- The Defendants are permitted and authorized users of the Plaintiffs Trademark, and there is a nexus between the Defendants and Plaintiffs.
- The Court vide order dated 03.2014 had restrained the Defendants from:
- manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in any manner with the impugned Golden Chocolate product or any other product leading to infringement of the plaintiffs‟ trademarks and trade-dress;
- Using the trade-dress, packaging, color combination, layout, get-up designed to imitate the plaintiff’s FERRERO ROCHER trademark and trade-dress leading to dilution of the plaintiff’s trademark and trade-dress and unfair competition vis-a-vis the plaintiffs‟ business under the FERRERO ROCHER trademarks and trade-dress.
6. During the pendency of the suit there was a settlement between Plaintiff and Defendant No. 1, and a compromise decree was passed against Defendant No. 1 vide order dated 05.2016. As of with respect to Defendant No. 2, despite of service none appeared on their behalf as mentioned in the order and an ex parte proceedings continued against Defendant No. 2.
7. Defendant No. 2 even after being well aware of the Injunction order passed against it, they continued to export and make available its GOLDEN PASSION chocolates on online websites and sell numerous products which are look a like of the FERRERO ROCHER chocolates under the brand ROWANSA as a part of its golden series of chocolate in India.
8. The Plaintiff claimed that Defendant No.2 has infringed their rights under Section 29(5) of the Act, for attempting to pass-off their goods under the impugned mark, trade-dress, packaging etc. as those of the Plaintiffs was thus mala fide, which has caused and will continue to cause irreparable damage and loss to their business. All these claims by the Plaintiff were duly supported by a number of documents presented thereof.
9. The Plaintiff pleaded for permanent injunction order granting not only compensatory damages but also punitive damages.
Decision of the Court
The Delhi High Court on April 2nd , 2018 held that since Defendant No. 2 reclused itself from the proceedings it cannot be permitted to enjoy the benefits of evasion or covert priorities as it has been selling the goods and has been infringing the plaintiffs‟ mark certainly makes the defendant No.2 liable to pay the damages to the plaintiffs. Hence, a decree for a sum of `10.00 Lac in favour of the plaintiffs was passed on account of infringing the registered marks, trade dress and violating the interim order. The plaintiffs shall also be entitled to interest @ 10% p.a. on the damages so awarded from the date of filing of the suit till the date of realization. Proportionate cost of the suit was also awarded to the plaintiffs and against the defendant No.2.
Protection of Intellectual Property Rights, especially when it comes to consumable products becomes of great importance as it will not only protect the interest of the property rights holder but also of the Consumers. The Judgment passed by Mr. Justice Yogesh Khanna at the Delhi High Court clearly shows that the court did not overlook the fact that the Defendant willfully remained absent from proceedings of the court and also violated the Interim order of the court back in 2004. With a view of not letting the Defendant enjoy the benefits of evasion or covert priorities, the Court passed the judgment in favour of the Plaintiff.
Even after many such similar cases have come to light a speedy disposal of the same is required. An increased awareness among the masses about IPR registration, its benefits, acts that lead to its infringement and other matters related to itis also important.
The post has been contributed by Ms. Yashika, a BCom graduate from S.I.E.S College of Commerce and Economics.
Image from here