CS(OS) 190/2006 Page 1 of 5 *IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(OS) 190/2006 % Date of decision : 09.01.2009 CADBURY LTD & OTHERS ….……………….. Plaintiffs Through: Mr. Manav Kumar, Advocate Versus TIMS FOODS PRIVATE LTD & ANR ….. Defendants Through: Exparte CORAM :- HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. Whether reporters of Local papers may NO be allowed to see the judgment? 2. To be referred to the reporter or not? NO 3. Whether the judgment should be reported in the Digest? NO RAJIV SAHAI ENDLAW, J. 1. The suit is instituted by the plaintiffs for permanent injunction restraining the defendants from infringing the copyright of the plaintiffs in the artistic work comprising the Cadbury’s Chocolate Éclairs and Cadbury Dairy Milk Éclairs labels/wrappers, by applying similar artistic work on defendants’ goods and for restraining the defendants from using the trademark Éclairs on packaged sweets/chocolates and from using trademark deceptively similar thereto. The defendants are also sought to be restrained from infringing the registered trademark of the plaintiffs of A-GLASS- AND-A-HALF for sale of chocolate and other cognate goods. Ancillary reliefs, delivery, damages are also claimed by the plaintiffs. 2. Vide ex-parte order dated 1st February, 2006, the defendants were restrained from using the wrappers/labels as of the plaintiffs or CS(OS) 190/2006 Page 2 of 5 deceptively similar thereto. The defendants in spite of service failed to appear and were vide order dated 9th January, 2007 order to be proceeded against ex-parte. The plaintiffs have led their ex-parte evidence. It is the case of the plaintiff and in evidence that the plaintiffs No.1&2 are incorporated under the laws of United Kingdom, the plaintiff No.3 is an Indian company. Both the plaintiffs No.1&2 are the subsidiaries of another company namely Cadbury Schweppes Plc also incorporated in U.K. and the plaintiff No.3 is also ultimately subsidiary of the same company and they together form the Cadbury Group engaged in the business of branded beverages, chocolates/chocolate confectionary etc. and owning famous and well- known trademarks. The defendant No.1 is engaged in the same business as of the plaintiff’s and the defendant No.2 is one of the directors of the defendant No.1. The witness of the plaintiff has deposed that the plaintiffs are the registered proprietor of the trademark in respect of device of a A-GLASS-AND-A-HALF in class 30 and introduced Cadbury Chocolate Éclairs in India in 1972 which was packaged in a wrapper bearing label also registered in name of the plaintiffs. It is further the case that the Mark Éclairs has acquired a secondary meaning in relation to the product of the plaintiff. The wrappers/labels of the plaintiffs have been proved as Exhibit P-1. 3. The grievance of the plaintiffs is adoption by the defendant No.1 company of an identical/similar looking wrapper in relation to the same product and which has been proved as Exhibit P-3. CS(OS) 190/2006 Page 3 of 5 4. Though the defendants have not contested the suit but the defendants had replied to the notices got issued by the plaintiffs prior to the institution of the suit and the said correspondence has been proved as Exhibit P-4 to Exhibit P-8. It was inter-alia the contention of the defendants’ in replies to the legal notices that Eclairs was a dictionary word and even in the trademark registration of the plaintiffs, no right to the exclusive use of the word Eclairs was granted. The plaintiffs have failed to prove their trademark registration though, filed on record. The said document can always be read against the plaintiff. A perusal thereof shows that no right to the exclusive use of word Eclairs was given to the plaintiff. Further, the plaintiff in spite of the objection aforesaid of the defendants have not made out any case for grant of injunction with respect to the use of the word Eclairs by the defendants. 5. Though the Trademark Act carves out a possibility of a relief being granted for passing off but I am of the view that once a party has applied for registration and the said registration has been granted without exclusive right as to any particular word or device in the said trademark and the party having then accepted the registration is not entitled to maintain an action of passing of with respect to the word/device of which registration has not been allowed. Thus, I am not inclined to grant injunction to the plaintiffs qua use of the word Éclairs by the defendants. 6. As far as the relief claimed by the plaintiffs relating to the trade dress of the wrapper and label is concerned, it is undoubtedly found that the trade dress/wrapper adopted by the defendants is CS(OS) 190/2006 Page 4 of 5 similar/deceptively similar to that of the plaintiffs. The defendants have adopted the same colour combination and the manner of writing Éclairs. The buyers/customers of such product often are small children or parents who may have just seen the product in the hands of their children but not have paid much attention to the same or persons, not actually consuming but buying only for gift purposes. All such persons are susceptible/likely to, seeing the trade dress adopted by the defendants, consider the product of the defendants as of the plaintiffs and thereby causing undue enrichment to the defendants and to the detriment of the plaintiffs. The plaintiffs have thus become entitled to the relief of injunction as prayed for in paragraphs a & c of the paragraph 37 of the plaint. 7. The plaintiffs have also claimed the relief of delivery, accounts and damages. The defendant being ex-parte and their being no complaint of breach by the defendants of the interim order in the suit and there being really no evidence of the damage caused, following the guidelines in Microsoft Corp. V/s Yogesh Papat 2005 30 PTC 3 & Time Incorporated V/s Lokesh Srivastava 2005 30 PTC 3 (Del), punitive damages in the sum of Rs.5 lac are awarded to the plaintiffs. The plaintiffs besides suing the defendant No.1 company has also sued one of its directors as defendant No.2. Award of damages against such director would be contrary to the concept of limited liability. The decree for damages would thus be against the defendant No.1 only. No costs, however, are being awarded to the plaintiffs in view of the decree for damages aforesaid. CS(OS) 190/2006 Page 5 of 5 8. Thus a decree in terms of paragraphs 37 a & c of the plaint together with a decree for recovery of Rs.5 lac as damages is passed in favour of the plaintiffs and against the defendant No.1, leaving the parties to bear their own costs. RAJIV SAHAI ENDLAW (JUDGE) January 09, 2009 PP