Gems Versus James Bond: Delhi High Court Reinforces Test On Deceptive Similarity
In the case of MONDELEZ INDIA FOODS PVT. LTD. AND ANR. v. NEERAJ FOOD PRODUCTS, the Delhi High Court granted a permanent and mandatory injunction as well as damages in favor of the Plaintiff restraining the Defendant from infringing Cadbury’s trademark “GEMS” by using a deceptively similar mark “JAMES BOND” or copyright by using packaging, inspired by Cadbury’s famous “GEMS BOND” character.
The Plaintiff, formerly known as Cadbury India Ltd. had sought an injunction and damages against the Defendant for infringement of trademark and copyright, passing off as well as unfair competition. The Plaintiff claimed that the Defendant had launched chocolate under the mark “JAMES BOND” with an identical color scheme, layout and arrangement as that of the Plaintiff’s “CADBURY GEMS”/”GEMS” products. The Plaintiff further claimed copyright infringement in the artistic work of their registered copyright in respect of their character “GEMS BOND”.
Recently, the Court heard the Counsel for the Plaintiff and considered the existing precedents on issues of trade dress, trademark and copyright infringement and deceptive similarity. Upon a perusal of the same, the Court noted that chocolates may be consumed by children and adults in urban and rural areas. Keeping this in mind, the Court stated, “The test in such a matter is not that of absolute confusion. Even likelihood of confusion is sufficient.”
Further, the Court also clarified that upon scrutiny of the products of the Plaintiff as well as the Defendant, there is no matter of doubt that the Defendant's products are “a complete knock-off of the Plaintiff’s ‘CADBURY GEMS”. Moreover, the Court also noted that these gems are sold in small pillow packs and not bigger packages, and therefore, the mark may not even be fully visible, causing a further likelihood of confusion. Finally, the Court added that considering the vast class of consumers that the product targets, including young children, there was an “immense likelihood of confusion”.
In light of the above and the phonetic similarity between the marks, the Court granted a permanent and mandatory injunction in favor of the Plaintiff. The Court also considered the issue of costs and ordered the Defendant to pay a fine of Rupees 15,86,928 lakhs (approximately $18,800).
The Court, in this case, has clarified that while deciding the test for the likelihood of confusion, several factors have to be considered, including the type of products in question as well as the class of consumers. In the present case, clearly, since the product was chocolates which are consumed by a vast majority of consumers of all ages as well as socioeconomic backgrounds, and the fact that the price of the product in question was a mere 1 to 5 rupees, meant that there was an “immense likelihood of confusion”. This, coupled with the fact that the color scheme, packaging, and trademarks used were identical and/or deceptively similar, led the Court to take a firm decision in favor of the Plaintiff.
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