Cadbury injuncted ITC over “eclairs” — then watched ITC turn the tables and strip Cadbury of four registrations for non-use. The lesson: registering a mark isn’t enough; you have to use it, or you can lose it.
Note: The rectification here was decided by the IPAB, which was abolished in 2021 (Tribunals Reforms Act). Non-use cancellation under Section 47 is now handled by the High Court. The principles below are unchanged.
How it began
In April 2005, Cadbury obtained an ex-parte injunction against ITC for using the mark “eclairs.” ITC researched and found Cadbury had not been using four of its marks: Cadbury’s Chocolate Éclairs, Cadbury Chocolate Éclairs, Chocolate Éclairs Pop and Cadbury’s Orange flavoured Chocolate Éclairs (all label marks). Armed with this, ITC filed rectification petitions to remove them.
The arguments
One mark — Chocolate Éclairs Pop — had not been renewed, so it fell away anyway. On the other three, ITC argued non-use under Section 47 of the Trade Marks Act, 1999 (which allows removal on the ground of non-use after five years and three months from registration), and that “eclairs” was common to trade.
Cadbury countered that it had used Cadbury Eclairs for decades, held a registration for Cadbury Chocolate Eclairs from 1974, that “eclairs” was only part of the marks (not the whole), and that the marks had acquired distinctiveness through use.
The hearing and ruling
At the hearing, Cadbury said it was withdrawing the registrations and would not argue. The tribunal reviewed ITC’s arguments and Cadbury’s evidence — which showed registrations in various countries but nothing to prove use — and held:
- registration alone does not prove use of a trademark; and
- marks are liable to cancellation if the registered proprietor fails to rebut an allegation of non-use.
It ordered removal of Cadbury’s Chocolate Éclairs, Cadbury Chocolate Éclairs and Cadbury’s Orange flavoured Chocolate Éclairs from the Register.
The bigger picture
This was hardly a disaster for Cadbury — it wasn’t using those marks anyway, and it later rebranded its caramel candies from Cadbury Eclairs to Cadbury Choclairs (perhaps precisely because “eclairs” is common to trade). But the case is a clean illustration of a hard rule: a registration is a right to be used, not a trophy to be shelved.
The takeaways
- Use it or risk losing it. After five years and three months, an unused mark is vulnerable to removal under Section 47.
- Registration ≠ use. Foreign registrations and certificates won’t save a mark if you can’t show genuine use in India.
- Rebut non-use with evidence. Silence or withdrawal, as here, ends in cancellation.
- Descriptive/common words are weak — “eclairs” being common to trade shaped the whole dispute.
Frequently asked questions
Can a registered trademark be cancelled for non-use in India? Yes — under Section 47, a mark can be removed on the ground of non-use, generally after five years and three months from registration.
Does registration prove I’m using my mark? No. The tribunal in the Cadbury case held that registration alone does not prove use; you need evidence of genuine use to defend against a non-use challenge.
Who decides non-use cancellations now? Since the IPAB was abolished in 2021, non-use rectification is handled by the High Court.
How long must non-use continue before removal? The application can be made after five years and three months from the date the trademark was entered on the register.
Legislation referred to
- The Trade Marks Act, 1999