LLM Assignment - 3

■ Name: Hiteshkumar Himmatram Prajapati

■ Year: LLM 2nd Year

■ Group: 3 (Intellectual Property Rights)

■ Academic year: 2019-2020

■ Topic: International Foodstuffs Co LLC v. Parle Products Private Limited and Anr. (Notice of Motion No. 2624 of 2012 in

Suit No. 2497 of 2012). Bombay High Court

INTERNATIONAL FOODSTUFFS CO LLC V. PARLE
PRODUCTS PRIVATE LIMITED AND ANR.

(Notice of Motion No. 2624 of 2012 in Suit No. 2497 of 2012).

Bombay High Court
THE PLAINTIFF, INTERNATIONAL FOODSTUFF
CO. LLC IS A DUBAI-BASED COMPANY WHICH
SELLS VARIOUS FLAVORS OF ICE-CREAM
UNDER THE MARK "LONDON DAIRY".
THE MARK IS USED ONLY IN RESPECT OF, AND
ONLY OF, ICE-CREAM. THE PLAINTIFF IS THE
REGISTRANT OF THE MARK "LONDON DAIRY"
SINCE 2001 AND IN 2007 THE PLAINTIFF
OBTAINED REGISTRATION FOR THE LABEL
MARK WHICH ARE BOTH REGISTERED IN CLASS
30.
THE DEFENDANT, PARLE PRODUCTS PRIVATE LIMITED,
STARTED SELLING BOILED CONFECTIONERY SWEETS
UNDER THE MARK "LONDONDERRY" IN 2011. THE
DEFENDANTS HAVE USED THE MARK CONTINUOUSLY
SINCE THEN AND HAVE ALSO APPLIED FOR
REGISTRATION OF THE MARK, WITH THE APPLICATION
CURRENTLY PENDING.
THE PLAINTIFF ON LEARNING THAT THE
DEFENDANT WAS USING THE MARK,
"LONDONDERRY" FILED THE PRESENT
PETITION FOR AN INJUNCTION ON
GROUNDS OF TRADE MARK
INFRINGEMENT AND PASSING OFF.
CONTENTIONS BY INTERNATIONAL FOODSTUFF
CO. LLC (PLAINTIFFS)
1. That there is no phonetic distinction between the two marks
and the marks cannot possibly be pronounced differently. The
plaintiff has a registration in Class 30 which covers the goods
for which the Defendants are using the mark.
2. That the Defendants dishonestly adopted the mark
"LONDONDERRY".
CONTENTIONS BY INTERNATIONAL FOODSTUFF
CO. LLC (PLAINTIFFS)
3. Unless the Defendants are able to show that their adoption
of the mark is bona fide, the injunction must follow, the Plaintiff
being a prior registrant of the mark in question and there being
no discernible phonetic distinction between the two.
4. The Defendants ought to have conducted a search and if
they failed to do so they have only themselves to blame.
CONTENTIONS BY INTERNATIONAL FOODSTUFF
CO. LLC (PLAINTIFFS)
5. The Plaintiff manufactures confectionery under another
mark "Tiffany" and therefore, the Defendants' use of
"LONDONDERRY" for boiled sweets must be held to be a
passing off.
CONTENTIONS BY PARLE PRODUCTS PRIVATE LIMITED
(DEFENDANT)

1. It is not enough to say that because one has registration in a class

that includes very many items therefore protection is axiomatically to
that mark in respect of all the items in that class, however dissimilar,
however disconnected and irrespective of whether or not there is any
use of the mark for those other types of goods.
CONTENTIONS BY PARLE PRODUCTS PRIVATE LIMITED
(DEFENDANT)

2. Every registrant should be required to be careful to specify the goods within

the class, even multiple goods, for which the use is proposed. The Plaintiff has
limited their use of the mark to only ice-cream within Class 30.
3. The word "London" is disclaimed and "Dairy" can never enjoy any protection. It
is very much a common word. It is publici juris; of public right. No protection
attaches to it. Even taken as a whole, "LONDON DAIRY" is not a mark that can
ever claim protection.
CONTENTIONS BY PARLE PRODUCTS PRIVATE LIMITED
(DEFENDANT)

4. The Plaintiff had no reputation in India to speak of till 2010. There

is nothing to indicate that it had so wide an international reputation
that it could claim trans-border protection.
5. The Plaintiff is unable to show goodwill and reputation which is
one of the three probanda of the 'classical trinity' in passing off
between 2010 and the time of the Defendants' adoption of the mark.
CONTENTIONS BY PARLE PRODUCTS PRIVATE LIMITED
(DEFENDANT)

6. There are a multitude of surrounding circumstances that must be

considered and cannot be possibly be ignored: the packaging, the
goods themselves, their price point, the distinct words and stylization,
etc.
7. On neither cause of action the Plaintiff has made out a case for
grant of injunction.
OBSERVATION/DECISION OF THE
COURT
1. A registration must be read in a reasonable and rationale
fashion. The purpose of the statute is not to afford wide ranging
protection irrespective of use.
OBSERVATION/DECISION OF THE
COURT
2. The argument that all the goods in a class are 'cognate' and 'allied' cannot be accepted.
Visually there is nothing at all common between the two marks. The Plaintiff's product is
entirely distinct. It is packaged differently. It requires refrigeration. It price point is entirely
distinct as well. The Plaintiff's products are indeed expensive by Indian standards, starting
at Rs. 80/- and going only northward from there. There is no possibility at all of any person,
however average his intellect or imperfect his recollection, confusing one for the other.
When it comes to the question of similarity, the test is one of perception. Like beauty, this
lies in the eye of the beholder; in trade mark cases, that of the Judge.
OBSERVATION/DECISION OF THE
COURT
3. It is sufficient to accept that the Plaintiff's registration and rights are in any case
restricted to the only goods on which it has used them, i.e., ice-cream, and, should it be
able to show so, to others that are commonly linked with ice- cream (such as other ice-
cream preparations of some kind or the other). However, this cannot be extended to every
single item in Class 30. That would take within its sweep all manner of goods such as sugar
confectionery, candies, biscuits, pasta, macaroni, noodles, baking powder, spaghetti,
mayonnaise, vinegar, coffee, tea, rice, artificial coffee, bread, pastry and so on.
OBSERVATION/DECISION OF THE
COURT
4. Passing off is an action in deceit, and the Plaintiff must show or demonstrate,
at least prima facie for the present purposes, that the Defendants' use and
adoption is calculated to deceive, such that purchasers of fifty paise boiled
sweets in single serve sachets will imagine they are purchasing a product from
the repertoire of a maker of expensive ice-cream. The Court was of the opinion
that the Plaintiff had prima facie not been able to show that the adoption of the
mark was calculated to deceive.
OBSERVATION/DECISION OF THE
COURT
5. There may certainly be places that vend both; but those are not the only places one finds
the Defendants' sweets. In a country where every empty urban space is a business
opportunity of some kind, the Defendants' sweet is the kind of thing that one finds sold by
street corner vendors, pavement hawkers and so on. None of these are 'outlets' for the
Plaintiff's products. No one purchasing a fifty paise sweet manufactured by the Defendants
will ever be cast into a state of 'wonderment' about whether this confection has anything
whatever to do with the Plaintiff's ice-cream.
OBSERVATION/DECISION OF THE
COURT
6. That the words "London Dairy", when used in relation to ice-cream, might connote the goods of the
Plaintiff and the Plaintiff alone. But that is not what the Defendants do. That is not what they do at all.
They do not vend or manufacture ice-cream. They vend nothing like it. They are manufacturing a good
that falls in the same Class but is entirely distinguishable in every word and in every way except the
phonetic. That is surely not enough. What of the visual similarity? The structural? The attendant
circumstances? The lack of any meaningful reputation or goodwill? The want of demonstration of deceit
or misrepresentation? The very many differences in color, trade dress, the goods themselves and their
pricing? Is a court to ignore all these only because of a phonetic similarity?
WHAT THE HIGH COURT HELD:
In view of the above, the Bombay High Court vide it's order dated April 11, 2016
held that there is no law that says that a solitary test of pronunciation will suffice
to defeat all else that weighs against or the visual, structural similarity, the
attendant circumstances, lack of meaningful reputation or goodwill, the want of
demonstration of deceit or misrepresentation or differences in color, trade dress,
the goods and their pricing should be ignored only because of phonetic similarity.
WHAT THE HIGH COURT HELD:
Since the Plaintiff has sought injunction only on the basis of
this phonetic similarity and there is no other basis for this
action at all, the Bombay High Court held that there is not
sufficient warrant for grant of injunction and dismissed the
Notice of Motion without costs.
 MY CRITICISM OF THE SAID
JUDGEMENT
The Ruling is contrary to established practice of comparing
marks which are phonetically similar and paying greater
attention to this factor while determining similarity.
 MY CRITICISM OF THE SAID
JUDGEMENT
Also the surrounding circumstances theory may lead to
proliferation of infringements where the traders work backward
to build labels/wrappers that use different colour scheme while
copying the essence of the marks.
 MY CRITICISM OF THE SAID
JUDGEMENT
As a result this will lead to opening of flood gates as far as
infringement of trademarks are concerned, at least with
respect to phonetic similarity of marks
 MY CRITICISM OF THE SAID
JUDGEMENT
Horlicks Limited and Ors. Vs. KartickSadhukan, Delhi High
Court 2002 (25) PTC 126 Del

In the above case, defendant company were engaged in the

business of selling toffees in the name of Horliks cont..
 MY CRITICISM OF THE SAID
JUDGEMENT
HORLICKS Limited is a foreign company engaged in
manufacturing of a wide range of food products, including
foods for infants, children and invalids, malted milk, biscuits,
toffees, etc. under the trademark HORLICKS
 MY CRITICISM OF THE SAID
JUDGEMENT
In the said case, Delhi High court restrained the defendant
from using the mark Horliks, this case appears to be on similar
lines of London dairy vs London derry
But the view of the court in these cases are contrary
 MY CRITICISM OF THE SAID
JUDGEMENT

In the case of Ranbaxy laboratories Ltd. Vs. Dua

pharmaceuticals Ltd., court granted injunction due to phonetic
similarity in trademarks Calmpose vs Calmprose
 MY CRITICISM OF THE SAID
JUDGEMENT

In the case of Cadbury India Limited and Ors. vs. Neeraj food products on
25 May, 2007
Here the defendant was using the mark JAMES and the plaintiff was
using the mark CADBURY GEMS, cont…
 MY CRITICISM OF THE SAID
JUDGEMENT
In my view both the mark under consideration here are not
deceptively similar, though they are phonetically similar but still
not exact one. Also the marks are not such that would go
unnoticed, the mark used by defendant here is distinct from
the mark of plaintiff, cont..
 MY CRITICISM OF THE SAID
JUDGEMENT
Still the Bombay High Court in this case granted injunction to
the plaintiff though the defendant in this case had a better
case than London derry had against London Dairy
 MY CRITICISM OF THE SAID
JUDGEMENT
If that is allowed then may be in future infringements like
NOKIA vs NOKLA may also be allowed
Samsung vs Samsang
 CONCLUSION
IFCL is likely to Appeal against the order and it would be
interesting to see how the two judge bench examines the
issues
 CONCLUSION
In the said appeal, in my view the two judge bench will look at
this issue with a broader perspective and come to the just full
judgment
THANK YOU