CADBURY WINS RIGHT TO THE COLOUR PURPLE

Cadbury has fought off Nestlé over exclusive rights for the distinctive purple colour it has used on chocolate wrappers for more than 100 years. The Cadbury brothers are thought to have picked the colour as a tribute to Queen Victoria.

The group, which has been locked in a legal battle with its rival for three years, was granted a trademark for the tint – pantone 2865c – to be used on certain chocolate goods such as Dairy Milk in 2008. Nestlé challenged the ruling, arguing that the colour was not distinctive enough to receive a trademark.

The Swiss group's challenge appears to have failed after the registrar at the UK Intellectual Property Office this week ruled in Cadbury's favour, saying it had showed enough "distinctive character" for a trademark. One legal expert said that while it was an interim judgment, the decision was unlikely to be changed in the final report. Nestlé can appeal the decision.

A spokesman for Cadbury said the group was "pleased" with the ruling, adding that the colour was something those at the company "jealously guard".

In his ruling, Allan James, the registrar, said the colour purple had built a distinctive character associated with Cadbury. He added that the colour had been used in its advertising campaigns to distinguish the brand. One of the most popular of those campaigns in recent times was the use of a gorilla playing the drums. He rejected claims that Cadbury had registered the colour in bad faith as "absurd".

Fiona McBride, a partner at Withers & Rogers, described the decision as a "major relief" for Cadbury, saying its use of the colour was now "iron-clad and the brand will be unlikely to face further challenges over the use of the colour purple in the future".

Yet, executives at Kraft, which bought Cadbury in a controversial takeover deal earlier this year, will not get carried away with the victory. The trademark was limited to using the colour on its chocolate bars and chocolate drinks. It had not proved such a distinctive character in all confectionery chocolate, Mr James said, or for protection in relation to assortments such as its Roses chocolates. "Both sides have achieved a measure of success, Cadbury more so than Nestlé," he added.

Ms McBride said: "Colour registrations are notoriously difficult to obtain, largely because it can be difficult to prove sufficient use to demonstrate that the colour has become synonymous with the brand in the mind of the consumer."

Cadbury first applied to patent the colour in 2004, although it was not approved for another four years. Cadbury did try to stop the Australian confectioner Darrell Lea from using purple on its packaging. Three years ago, however, its complaint was rejected by the Federal Court in Melbourne.

Source: The Independent [UK]

Relief for Cadbury in trademark case

Cadbury India Ltd, the domestic arm of US confectionery major Kraft Foods Inc, has secured a relief from the Delhi High Court which restrained a local garment manufacturer from promoting its apparel under the phonetically identical trademark 'Cadbeery'.

Kraft Foods promoted Cadbury UK Ltd and its Indian subsidiary had moved the High Court accusing nondescript entity Lodha Garments of adopting a deceptively identical name to promote its product.

Justice Manmohan Singh passed an ex-parte interim order in favour of the chocolate major holding that it has prima facie made out a case that its reputation was being used by the Delhi-based firm to pass off their goods as those of the international brand.

"The plaintiff (Cadbury UK Ltd) prima facie have been able to make out a strong case for the grant of an ex-parte interim injunction (restriction) in their favour, Hence, till the next date of hearing, the defendant (Lodha Garments) are restrained from using the trademark 'Cadbeery' or any other mark similar to the plaintiffs' trademark 'Cadbury'," the judge said.

"The trademark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends worldwide," the judge observed.

The chocolate manufacturer had sought court's order to restrain Lodha Garments from using 'Cadbeery' as trademark for jeans, trousers, shirts and pants.

Cadbury has also sought imposition of "punitive and exemplary damages" of Rs 20 lakh on the garment manufacturer.

It alleged Lodha Garments was trying to mislead consumers as the trademark used by the garment manufacturer sounded similar and the font used was also the same.

Cadbury sought a permanent restriction on the garment manufacturer from using the trademark saying it was "blatant misuse" of its trademark.

-The Financial Express

Amendment of Trade Marks Rules, 2002 for Making E-filing of TM Application mandatory.

1.   (1)  These rules may be called the Trade Marks (Amendment) Rules, 2011.

    (2)  They shall come into force on the date of their final publication in the Official Gazette.

2. In the Trade Marks Rules, 2002 (hereinafter referred to as the Principal Rules), for Rule 8, the following rule shall be substituted, namely:-

          “8. Leaving of Documents etc.—

(1) Any application, notice, statement, opposition, renewal, report, fee, form or other documents authorized or required to be filed, left, served, paid, made or given to the Trade Marks Registry of to the Registrar or to any persons under the Act or these rules, shall be tendered by using online electronic transmission duly authenticated.

(2) The documents referred to in sub-rule (1) are clear and fully legible and drawn in accordance with provisions of rule 13:

     Provided that an applicant or a legal entity who is not a trade mark agent or an advocate under the Advocates Act, 1961 uses online transmission he or it may do so, if he or it so desires, without electronic authentication. In such cases the application, notice or other documents shall be duly signed and submitted in paper form also at the appropriate office ordinarily within fifteen days from the date of online submission.

(3) Any written communication addressed to an applicant at his address as it appears on the electronic register of trademarks or to his address for service given under Rule 18 or to an applicant or opponent in any proceeding under the Act or these Rules, at the address appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed.

(4) All notices and written communication addressed to an applicant or the   opponent in any proceedings under the Act or these rules and all documents transmitted or forwarded to the applicant or opponent, as the case may be, shall except when they are sent by special messenger, be sent by registered post or speed post or courier service or by online transmission duly authenticated.

(5) The date of a notice or a written communication addressed to an applicant or opponent in any proceedings under the Act or these rules shall be the date of dispatch of the said notice or written communication, by registered Post or Speed Post or Courier or fax or online electronic transmission duly authenticated as the case may be unless otherwise specified under the Act or these rules.

(6) In case of delay in receipt of document or communication sent by the Trade Marks Registry to a party to any proceedings under the Act or Rules, the delay in transmitting or resubmitting a document to the Trade Marks Registry or doing any act by the party may be condoned by the Registrar if a petition for condonation of such delay is made by the party to the Registrar immediately after receipt of the documents or communication along with the statement regarding circumstances of the facts and evidence in support of this statement:

Provided that the delay condoned by the Registrar shall not exceed the period between the date on which the party was supposed to have received the document or communication by ordinary course of mail or online electronic transmission and the actual date of receipt of the same”.

3. For rule 13 of the Principal Rules, the following rule shall be substituted, namely:--

          “13. Filing of document and formats, etc.—

(1) All documents including copies of any documents, except affidavits sent to the Trade Marks Registry or otherwise submitted to the Registrar shall be submitted by using online electronic transmission facilities in the format provided therewith and shall be --

(a) Typewritten or printed in Hindi or English in large and legible characters not less than 0.30cm high with deep indelible ink with lines widely spaced not less than 1½ cm spaced;

(b) On A/4 size Paper of approximately 33 cm by 21 cm with a margin of at least 4cm on the top and left hand part and 3cm on the bottom and right hand part thereof;

(c) Numbered in consecutive English numerals in the centre of the bottom of the page; and

(d) Provided with numbering on every fifth line of each page of the description and each page of the claims at right half of the left margin.

(2) Any signature which is not legible or which is other than English or Hindi shall be accompanied by transliteration of the name either in Hindi or in English in Block Letters.

(3) The Reply or Response by the applicant or agent to examination report and other documents issued or sent by the registrar shall be filed electronically using online system of the Trademark Registry:

 Provided where an applicant or a legal entity who is not a Trademarks Agent or an Advocate under the Advocates Act, 1961 uses online electronic Transmission, he or it may do so, if he or it so desires without electronic authentication. In such cases, the modified documents required to be filed shall be duly signed and submitted in paper form also at the appropriate office within fifteen days from the date of online submission.

(4) Where the applications or other documents have been filed using online system, additional copies of application or documents shall not be filed at the appropriate office unless directed otherwise by the Registrar:

Provided that where an applicant or a legal entity who is not a trade marks agent or an advocate under the Advocates Act, 1961 prefers for using online system without electronic authentication he or it shall submit two copies of all documents duly signed in paper form at the appropriate office.

(5) The name and address of the applicant and other person shall be given in full together with nationality and such other address, if any, as are necessary for their identification.

4. Sub-rules (3) and (4) of Rule 11 shall be Omitted.

5. After sub-rule (1) of Rule 12, the following sub-section is to be inserted:

          “(1A)  The forms referred to in sub-rule (1) are to be filed, made, sent or submitted electronically.”

6. In the first schedule to the Principal rules after Entry no. 87 the following note shall be inserted, namely:--

Note:- “All prescribed forms, applications, requests, notices and other petitions shall be filed or received by the Trade Marks Registry or the Registrar using online transmission system unless otherwise specified in the Rules”.