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DELHI HIGH COURT DECLARES “KINDER” A WELL-KNOWN TRADEMARK

April 27, 2020

By Lucy Rana and Tulip De

Introduction

Recently, in the case of Ferrero SPA & Ors. vs. Kamco Chew Food Private Limited & Ors.[1], HMJ Mukta Gupta of the Delhi High Court granted permanent injunction against the infringement and passing off of the Plaintiff’s reputed trade mark and trade dress KINDER JOY. The Delhi High Court further declared the trademark KINDER as well-known within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (“The Act”).

A well-known trademark as defined under section 2(1)(zg), as a mark which has become so well known to a substantial segment of the public, that use of such a mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or with the proprietor of the well-known trademark. The Act explicitly gives the Registrar of Trade Marks the power to determine a well-known trademark as per the stipulations laid down under Sections 11(6) to (9).

Also read: Well Known Trademarks

Brief facts

The Plaintiff (Ferrero SPA) is an Italian confectionary producer, stated to have a renowned reputation in the market and manufactures a variety of products, including its famous and distinctive egg-shaped chocolate “KINDER JOY” i.e. . Plaintiff’s KINDER JOY products comprise of two halves, one half containing a toy and the other half containing milk and cocoa cream with crispy wafer balls filled with cocoa cream along with a spoon. The product is inherently distinctive by way of its fanciful packaging with the ‘wave’ device and since its launch worldwide, including in India in 2001, is stated to have earned a substantial goodwill and reputation. Plaintiffs are stated to have registration over the said marks in various classes including Classes 29, 30, 32 etc. It was contended that by virtue prior registrations for KINDER family of trademarks in over 180 countries and long standing and widespread use, Plaintiff’s trade mark KINDER has acquired a “well-known” status. The present suit was instituted since the Defendant (Kamco Chew Foods Private Limited) had adopted the names “KAMCO MOTU PATLUBiscuit Ball with Choco & Milk Rabdi” and “GRV MOTU PATLUBiscuit Ball with Choco & Milk Rabdi” for its products including and had been manufacturing and marketing the same in Delhi. Further, upon a perusal the product, it bore a resemblance to the Plaintiff’s chocolate product, broadly on the following accounts:

  1. Egg shaped packaging
  2. Colour representation on the product
  3. Physical/Graphical elements of the product
  4. Presentation of contents
PLAINTIFF’S PRODUCTS DEFENDANT’S PRODUCTS

 

Submissions

It was submitted by the Plaintiff that by virtue of being the registered proprietor of the KINDER family of trade marks, including, , any unauthorised use by the Defendant amounted to infringement under Section 29 of the Act. In addition, the Plaintiff submitted that a deceptively similar trade dress and identical colour combination, such as the one being used by the Defendant, would create confusion and false association and thus, result in passing off of the latter’s products as those of the Plaintiff’s.

The Plaintiff had, as one of its prayer, sought a decree of declaration of the Court that their KINDER trade marks are well-known trade marks.

Defendants- The Defendants namely, Kamco Chew Food Private Limited & Ors. failed to file the written statement in the case within the statutory period. Consequently, their right to file their defence was struck off and the learned Judge proceeded to decree the suit in terms of Order XIII-A CPC (for Summary Judgments).

Kinder is a well-known trademark 

Court’s Judgment as passed on December 18, 2019

In view of the above submissions regarding the deceptively similar trade dress aspects between the Plaintiff’s and the Defendant’s products, the Delhi High Court opined that the Defendant’s products were deceptively similar to those of the Plaintiff’s. In view of the prima facie case of trademark and trade dress infringement and passing off made out by the Plaintiff against the Defendant, the Hon’ble High Court granted a permanent injunction in favour of the Plaintiff and against the Defendant. The Plaintiffs agreed to not press for the relief of damages, however, the Court awarded full refund of the Court fee paid by the Plaintiffs while filing the suit, amounting to Rs. 2,05,000 (Approx. USD 2693).

Further, by virtue of the Plaintiff’s immense worldwide reputation of over 2 decades, enormous sales and association in the minds of children and adolescents, the Delhi High Court declared the Plaintiff’s trademark KINDER as a well-known mark in India.

Conclusion and Take away

As rightly opined by the Hon’ble Court in “the world is steadily moving towards stronger recognition and protection of well-known marks”.  Section 11(8) of The Trade Marks Act, 1999 gives power to a Court to determine and declare if a trade mark is well-known in at least one relevant section of the public in India. Meanwhile, Rule 24 of the new Trade Marks Rules of 2017 grants  power to the Registrar of  Trade Marks to determine and declare a mark as a well-known mark, upon an application by a party, if it qualifies the criteria laid down in Section 11 of the Trade Marks Act. Thus, Courts are actively using their judicial review powers to arrive at similar conclusions. There is a surge of judgments conferring well-known status on a trademark, and many marks have been determined as well-known such as NIRMA, PEPSI, HONDA, BAJAJ, KIT KAT, NIVEA, VICKS etc.

It is increasingly becoming a practice in Indian trade mark litigation for parties to seek a relief of declaration of well-known-ness of their marks. And courts are also granting such a relief, upon due consideration of the material supplied in support of a claim of well-known-ness. It would be interesting to see how this contributes to the trend in filing applications under Rule 124 of the Trade Marks Rules, 2017 before the Trade Marks Registry.

[1] CS (COMM) 179/2019

[2] (2009) 41 PTC 284 (Del)

[3] 2011 (46) PTC 244 (Del)

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