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GEMS VERSUS JAMES BOND!

By – Nidhi Tandon & Nidhi Doshi

We all are familiar with the popular chocolate brand, Cadbury GEMS. After a two-decade long trademark infringement dispute, the Delhi High Court (High Court) rendered an ex-parte verdict in favour of Cadbury India Limited (now called Mondelez India Foods Pvt. Ltd.).

Cadbury, a well-known manufacturer of chocolates and confections, is the registered proprietor of the trademark “GEMS” for button chocolate covered with colourful candy shells. In 2005, Cadbury approached the High Court seeking injunction and damages for infringement of trademark and copyright, passing off as well as unfair competition against Neeraj Food Products (Neeraj Food) who was selling a chocolate under the mark “JAMES BOND” with identical packaging, colour scheme, layout and arrangement as that of “GEMS”.

After comparing both the marks, the Court ruled that they are deceptively similar and injuncted Neeraj Food from selling products under the name “JAMES BOND” on the following grounds:

Likelihood of Confusion

  1. GEMS is one of the most popular and well-recognized chocolates in India. Almost every childhood has memories involving GEMS;

  2. The targeted class of consumers for both GEMS and JAMES BOND is ‘children’;

  3. GEMS and JAMES BOND are sold not only in big retail stores but also easily available in roadside shacks, paan shops, patri vendors, kirana stores, stalls outside schools, etc., and that too for as low as 1 to 5 rupees;

The High Court also clarified that the issue is not of absolute confusion; even likelihood of confusion is sufficient. While deciding the likelihood of confusion, several factors have to be considered including the type of products in question, class of consumers and the geographical location of the consumers (whether urban or local). In this case, since the product is chocolates consumed by a vast majority of targeted consumers, i.e., children and that the price of the product is only 1 to 5 rupees, there is “immense likelihood of confusion”.

Similar Packaging

Placing reliance on ITC Ltd. v. Britannia Industries Ltd. 2016 SCC Online Del 5004, the High Court observed that where the product is an eatable such as a biscuit, the colour and the colour scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer. Hence, the product’s get-up, layout and the colour combination of the packaging play a significant role at the point of purchase.

The High Court compared the packaging in question and pointed out the following similarities between the same:

  1. JAMES BOND has adopted a packaging with the same illustrations and colour scheme as that of GEMS.

  2. JAMES BOND is sold in small pillow packets, with the same blue/purple background and same size as that of GEMS; the positioning of the manufacturer’s name is same – brown oval on GEMS pillow pack and the brown diamond in JAMES BOND are bordered by same blue/purple coloured base; GEMS and JAMES BOND are inscribed in identical white colour with the same uneven script; colour combination of tablets are similar; same visual impression of explosion.

  3. GEMS and JAMES BOND are sold in small pillow packs due to which the marks may not even be fully visible, leading to likelihood of confusion.

The High Court felt that this is a case of res ipsa loquitur (a Latin concept which means “the thing speaks for itself”) and, upon comparison, came to the conclusion that the products under “JAMES BOND” are “a complete knock off of “GEMS”. The Court thus permanently restrained Neeraj Food from using the mark “James Bond” for its products and awarded damages of INR 16 lakhs (Approx. USD 20,000) to Mondelez India.

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