22 March, 2018
Sweet relief for Ferrero Rocher
This is pertaining to a suit filed in the Delhi High Court by Ferrero SpA. & Anr., (together the “Plaintiffs”) against Piyush Devangan & Ors. (together the “Defendants”) seeking a decree of permanent injunction against the Defendants from selling chocolates under the mark/name “D- Lizie” which are lookalikes of the Plaintiffs’ “Ferrero Rocher” chocolate specialities. It came to the knowledge of the Plaintiffs that the Defendants are manufacturing and selling lookalikes of the Plaintiffs’ Ferrero Rocher chocolates specialities under the name D-Lizie and thereby violating the statutory and common rights of the Plaintiffs in India. The Plaintiffs submitted that the manufacturing, selling and dealing in the impugned chocolate infringes the Plaintiffs’ registered trademark as the Defendants have not only copied the trade dress but have also copied the overall get up and unique aspects of packaging of the Plaintiffs’ Ferrero Rocher. The Plaintiffs state that the Plaintiffs’ chocolates “Ferrero Rocher” are sold at a worldwide level and are amongst the best known confectionary products in the world with an annual sales turnover of nearly one billion US dollars and in excess of 1130 crores as the sales turnover in India for the years 2008 to 2013. Further, consumers are able to identify and recognise the products of the Plaintiffs from a distance due to the distinct and stunning packaging style of Ferrero Rocher which is unique. The Plaintiffs’ trademark and the trade dress of Ferrero Rocher are well known and have been using by the Plaintiffs for several decades. The Plaintiffs also stated that Plaintiffs’ Ferrero Rocher trademarks and trade dress have acquired a “well known status” across the globe including India. The Plaintiffs have listed some unique elements of the Ferrero Rocher chocolates before the Court, such as, the rounded crushed sold wrappers, a white sticker on individual products, each chocolate resting in a fluted brown coloured cupcake shape holder, unique shape and packaging of the transparent box with soft round edges etc.
The Plaintiffs further states that the Plaintiffs spend millions of dollars worldwide, including in India, for the promotion and publicity of Ferrero Rocher under the trade dress and Ferrero Rocher’s trademarks. In support of this contention, the Plaintiffs relied on the judgment passed by the Delhi High Court in the case of Ferrero SpA & Anr. Vs. Raj Baid & Ors. In this judgment based on the submissions of the Plaintiffs, the court held that the Plaintiffs are the registered proprietor of the trademark Ferrero Rocher which is one of the 4 biggest confectionary producers worldwide and is ranked amongst the top 50 most reputable companies in the world. Further the Plaintiffs had placed reliance on several evidences suggesting the Plaintiffs’ right in the Ferrero Rocher trademarks and trade dress by several foreign courts, global presence of the Plaintiffs’ trademark on the internet denoting the goodwill and reputation of the Plaintiffs. The Delhi High Court in the aforementioned matter held that:
“The plaintiffs have also established that they have acquired the status of “well known mark” by virtue of various factors such as use of its trade mark and trade dress since as long back as 1982 and its subsequent registration, its wide-spread business across numerous countries, the immense goodwill and reputation acquired by it around the world, the wide scale advertising and promotional activities carried out by plaintiff and its massive turnover on annual basis.
This Court is of the view that the plaintiffs have proved beyond doubt that the plaintiff is the registered proprietor of the trademark FERRERO ROCHER as well the trade dress and hence the plaintiffs have the exclusive right to use the trademark including trade dress of FERRERO ROCHER.”
The Delhi High Court relying on the evidence submitted by the Plaintiffs in the present matter observed that it is a clear case of infringement of the statutory and common rights of the Plaintiffs in relation to the Plaintiffs’ Ferrero Rocher trademarks and trade dress. The Delhi High Court vide its order dated 22nd January, 2018 disposed the suit by passing a decree in favour of the Plaintiffs and against the Defendants with cost.
IJPL mark is violation of IPL trade mark –Relief to BCCI
This is pertaining to an ad-interim application filed in the Bombay High Court by the Board of Control for Cricket in India (the “Plaintiff”) against Grace India Sports Private Limited (the “Defendant”) seeking a decree of injunction against the Defendant from restraining the Defendant from infringing the Plaintiff’s registered trade mark IPL, IPLTwenty20, by use of the impugned trade marks IJPL, IJPL T20 and the impugned domain names/ websites www.ijplt20.com, www.juniorsipl.com and www.ijplth.com in respect of the similar services and/or goods as those the Plaintiff has secured registrations. Further, the Plaintiff sought an ad-interim order that the Defendant is restrained from promoting the impugned services and/or impugned goods trade marks IJPL, IJPL T20 in any medium including through its websites with the domain names www.ijplt20.com, www.juniorsipl.com and www.ijplth.com.
The Plaintiff is the apex governing body for cricket in India and the Defendant claimed to be organising similar services as the Plaintiff viz. cricket talent hunts/cricket camps and cricket tournaments under the trade mark IJPL, IJPL T20 and domain names / websites www.ijplt20.com, www.juniorsipl.com and www.ijplth.com.
The Plaintiff submitted that the Plaintiff has designed and adopted logos comprising a batsman swinging a bat as if hitting a ball, a semi-circular arc suggesting movement or path of the bat, with the expressions IPL and Indian Premier League with the word and the numeral TWENTY 20 in connection to a unique concept of cricket matches wherein opposing teams play matches of 20 overs each. The Plaintiff submitted that the logos as a whole and in their entirety are unique, novel, catchy and attractive. The Plaintiff has been using the trade marks IPL, Indian Premier League, IPLT20 and IPL Twenty 20 in relation to the tournament and goods and services associated and the marks are registered trademarks in the name of the Plaintiff. It was further submitted that the “Indian Premier League Twenty 20” whose inaugural event was held on April 18, 2008 in Bangalore has received the sanction of the International Cricket Council. The Plaintiff had commenced promoting and publicising the event even prior to the inaugural event, both in India as well as abroad and by the time of the inaugural event, the trademarks of the Plaintiff was already popular. Further, the sponsors and franchisees had spent a huge amount of money in excess of several crores of rupees which led to tremendous publicity and hype in respect of the tournament and the Plaintiff has also earned substantial income. The Plaintiff has also registered its trade marks in other jurisdictions and operates a domain name/website
www.iplt20.com in relation to its tournaments. The Plaintiff’s aforesaid trade marks have acquired the status of “well- known trade marks.
The Plaintiff has various occasions asked the Defendant to stop violating the marks of the Plaintiff and also sent cease and desist notices to the Defendant in this regard when it came to their knowledge that the Defendant has been using the marks which are identical and similar to the marks of the Plaintiff. The use of the marks by the Defendant which are identical to the Plaintiff’s marks are quite evident form many media publications which have been used by the Defendant to promote their tournaments.
Upon analysing the facts, the Bombay High Court prima facie held that the Defendant’s impugned trade mark IJPL contains the whole of the Plaintiff’s registered trade mark IPL and that the rival services/activities are also same or similar. The Hon’ble Court granted ad-interim reliefs to the Plaintiff vide its order dated January 16, 2018 stating that the Plaintiff had made a strong prima facie case for grant of reliefs for infringement of trade mark and passing off, and denial of reliefs would cause the Plaintiff irreparable injury.
For further information, please contact:
Vineet Aneja, Partner, Clasis Law
vineet.aneja@clasislaw.com
