In a recent, widely reported order by S. Usha, the Vice-Chairperson of the Intellectual Property Appellate Board (IPAB), Cadbury’s lost 4 of its éclair related trademarks on the basis of rectification petitions made by ITC. The catalyst for the rectification petitions was a civil suit for trademark infringement filed by Cadbury, in 2005, against ITC with a prayer for an injunction restraining ITC using the word ‘éclair’ in conjunction with ITC’s trademarks.
In a counter to the trademark infringement suit, ITC filed rectification petitions against four trademarks. The IPAB describes the trademarks as follows:
14. ORA/25/05/TM/KOL relates to Cadbury’s Chocolate Éclairs (a label mark) under No.298102 in class 30 and registered on 24.01.1976. ORA/26/05/TM/KOL relates to Cadbury Chocolate Éclairs (a label mark) under No.353398 in class 30 and registered on 31.10.1985. ORA/28/05/TM/KOL relates to the trade mark Chocolate Éclairs Pop (a label mark) under No.436335 in class 30 registered on 31.10.2002. ORA/29/05/TM/KOL relates to the Trade Mark Cadburys Orange flavoured Chocolate Éclairs (a label mark) under No.327607 in class 30 and registered on 31.01.1985.
When the matter came up for oral arguments, Cadbury’s counsel reportedly informed the Court that the company was taking steps to withdraw the petitions and that it was not going to argue the matter on merits. ITC however pushed for a hearing because it was under some kind of injunction from the Civil Court in Ahmedabad because of Cadbury’s trademarks. Thereafter the case was rather straight-forward. All 4 trademarks were revoked by the IPAB for non-use.
In a statement to Sanjay Vijaykumar of the Economic Times, a spokesperson for Cadbury’s stated “The label mark for Cadbury Eclairs, which formed the subject matter of the litigation, has not been used by Cadbury for many years and hence we do not plan to take this matter further. We continue to retain other trademark rights in the Cadbury Dairy Milk Eclairs brand, and the IPAB’s decision, if any, has no bearing on those trademark rights.”
It is rather curious that Cadbury decide to abandon these trademarks without a fight, after keeping them on the books for almost 40 years.