2. 2
Swiss multinational Nestle won a protracted trademark dispute over
its popular chocolate brand Kit Kat on Monday. The intellectual
property appellate board (IPAB) in Chennai ruled in favour of Nestle
and dismissed an appeal by Kolkata-based Kit Kat Food Products to
use the same trademark. Earlier, last month Nestle had also won a
trademark lawsuit against Cadbury over their rights to Kit Kat
chocolate bar's four-fingered and three-dimensional shape.
The dispute arose after the trademark registry in Kolkata refused to
allow Nestle's applications filed in 1987 to register the Kit Kat mark
following opposition by a Kolkata firm, which sells snacks made from
cereals. Against the order, Nestle filed an appeal in 2000 in the
Calcutta high court, which was later transferred to IPAB. Meanwhile,
the trademark application filed in 1991 by the Kolkata firm, was also
rejected against which filed an appeal was filed in the IPAB in 2005.
The only reason the Kolkata company gave for adopting Kit Kat was
that it was derived from the word 'chit chat' because the items were
snacks eaten while having a chat.
Given that the competing trademarks were identical, and the class of
consumers were also the same, prior user of the trademark by
Nestle, and an unclear reason for adoption of the trademark by the
Koklata firm were the main thrust in the order, to rule in Nestle’s
favour. There was no dispute about the use of the label by Nestle in
India since 1987. The mark was in use since 1935 outside India and
the company got it registered in 1942. The Kolkata firm had
admitted that it had adopted the mark only in 1991
"…When the reason (for adoption) is not clear, then the
very reason could be that Kit Kat Food Products is trying
to ride upon the goodwill of Societe des Produits Nestle
S.A. The marks are identical, the products are also
similar and they are mainly bought by small children.
When the class of customers is considered, which is the
test to determine deceptive similarity, there is every
possibility of confusion being caused by the user of the
mark by Kit Kat Food Products,…" said the tribunal
3. 3
SIGN UP FOR IP CHRONICLE (India)
Summary: IP Chronicle (India) is a legal publication by Kale Law Offices
dedicated to providing intellectual property practitioners abroad having an
interest in the Indian subcontinent with legal news, latest rulings from the
courts, legislative changes, ongoing discussions, etc from the legal
community concerning intellectual property laws in India. The IP Chronicle
(India) is a platform that intends to bring all happenings on the intellectual
property side in a single platter.
Description: IP rights do not simply benefit creators, but rather society as
a whole. In today’s interconnected knowledge-centric society, the
economic stakes of an appropriate IP framework are high. Intellectual
property enables greater investment in products and services to improve
society, including life-saving vaccines and medicines, or high-yield, drought-
resistant crops that increase the world's food supply.
However, the IP system does not always function smoothly; it is not a
single global system, but rather a patchwork of systems created within
each country. This creates many challenges, including high costs,
uncertainty in legal rights, inconsistencies between systems, unfair
competition, enforcement challenges across borders and the lack of
access to IP protection.
That’s how IP Chronicle (India) comes in picture. You need to know the
law of the country… the updates… the inventions… Can you keep on
googling to be updated? Can you keep on visiting different portals for the
IP news? No. You cannot. Rather you should not. The answer is “IP
Chronicle (India)”. A platter for all IP related news, updates, and
happenings in India.
Sign up for future issues of IP Chronicle (India)
