Cadbury stopped Lotte from using “Choclairs” in India — even though Lotte’s predecessor coined the mark decades earlier. Why? That old registration had lapsed, Lotte couldn’t prove use, and Cadbury’s spill-over reputation reached India. A neat case on who was really “first.”
The dispute
Cadbury sought to restrain Lotte from using a mark identical/similar to “Choclairs.” Cadbury had used “Choclairs” abroad, and its Indian trademark search found that Parry’s Confectionery (later bought by Lotte) held a Choclairs registration — but it had been removed for want of renewal. So Cadbury filed for Choclairs in May 2012. During prosecution, it found Lotte had filed for Choclairs in April 2013, without claiming use.
The arguments
- Cadbury: its predecessor coined “Choclairs” in 1953, used since in various countries with packaging variations.
- Lotte: its predecessor Parry’s coined “Choclairs” in 1976 (per the lapsed registration), and held “Parry’s Choclairs” (registered 1984). Cadbury was a recent entrant using an identical mark, and its use evidence was very recent — certainly not before 1984.
The court’s observations
- Similar essential feature: neither party used “Choclairs” alone, but Cadbury Choclairs and Parry’s Choclairs looked very similar, with “Choclairs” the predominant feature.
- Entry into the Indian market: Cadbury rebranded Cadbury Eclairs as Cadbury Choclairs in June 2013, but Cadbury Eclairs had long been in the market; Lotte started Lotte Choclair only in April 2013, with no evidence Parry’s/Lotte Choclairs were in the Indian market before April 2013.
- Spill-over/trans-border reputation: distinguishing reputation from goodwill — “while goodwill is local, reputation… need not necessarily be local.” Cadbury showed reputation in India via internet presence and likely availability in duty-free shops at international airports. Webpages showing Cadbury Choclairs accessible in India sufficed to show Indian buyers and travellers were aware of the product.
- Evidence of use: Lotte’s annual reports listing “Parry’s Choclairs” as a trademark, without sales figures, were rejected as evidence of “use.”
- Acquiescence: Lotte’s argument that Cadbury acquiesced (aware of Lotte since 2009) was rejected — Cadbury had sufficient spill-over reputation by April 2013.
The decision
Cadbury proved all three cardinal requirements for an interim injunction, and the court made the injunction against Lotte absolute.
The takeaways
- A lapsed registration isn’t a shield — Parry’s old Choclairs mark had been removed for non-renewal.
- Reputation ≠ goodwill — reputation can be non-local and still spill into India (internet, duty-free).
- Prove use with sales, not annual reports — listing a mark isn’t evidence of use.
- Spill-over reputation defeats acquiescence — Cadbury’s reputation pre-dated Lotte’s Indian entry.
Frequently asked questions
How did Cadbury stop Lotte using “Choclairs” despite Lotte’s older mark? Lotte’s predecessor’s registration had lapsed for non-renewal, Lotte couldn’t prove use before April 2013, and Cadbury showed spill-over reputation in India — so Cadbury was effectively “first.”
What’s the difference between reputation and goodwill? Goodwill is local, but reputation (from which goodwill derives) need not be — foreign reputation can spill into India via internet presence and duty-free availability.
Are annual reports proof of trademark use? Not on their own — the court rejected Lotte’s annual reports as evidence of use because they lacked supporting sales figures.
Can delay in objecting amount to acquiescence? Only in the right circumstances — here the court rejected acquiescence because Cadbury already had sufficient spill-over reputation when Lotte entered the market.
Legislation referred to
- The Trade Marks Act, 1999