Societe Das Products Nestle S.A. & ... vs Kit Kat Food Products & Anr
2023 Latest Caselaw 1760 Cal/2

                       IN THE HIGH COURT AT CALCUTTA
                    ORDINARY ORIGINAL CIVIL JURISDICTION
                                  ORIGINAL SIDE
Present:
The Hon'ble Justice Sugato Majumdar

                                       CS/48/2000

                     SOCIETE DAS PRODUCTS NESTLE S.A. & ANR.
                                        VS
                          KIT KAT FOOD PRODUCTS & ANR.


For the Plaintiff                  :      Mrs. Mamota Jha, Adv.
                                          Mr. Rishav Dutta, Adv.
                                          Mr. Siddhartha Sharma, Adv.
                                          Mr. Swarbhanu. Bhattacharya, Adv.



Hearing concluded on               :      28.07.2023


Judgment on                        :      31.07.2023


Sugato Majumdar, J.:

       The instant suit is filed by the Plaintiffs for protection of their intellectual

property rights and seeking decree of permanent injunction in connection

therewith, against the Defendants.


       The Plaintiff no. 1 is a company incorporated in Switzerland, having

registered office therein and the Plaintiff no. 2 is a company incorporated under

Companies Act, 1956 having registered office at New Delhi. The Defendant No. 1

carries on business, being a partnership farm, at 68/26, Hari Pada Dutta Lane,

Kolkata - 700033, outside the jurisdiction of this Court. Defendant no. 2 & 3 are

the partners of Defendant no. 1. The Defendant no. 4 is a retailer of chocolates,
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chanachur and nuts and carries on business at N.B. 27A, S.S. Hoggy Market,

Kolkata - 700087 within jurisdiction of this Court. Defendant no. 5 is a statutory

board constituted under the provisions of Copyrights Act, 1957.


       The Plaintiffs are engaged in manufacture and sales of an extensive range of

food products such as cereals, milk and dietetic products, beverages including

instant coffee, culinary products including pasta, noodles, sauces and others.

"KITKAT" was launched in the United Kingdom in the month of August, 1935. By

1949 the said product was recognized simply by the trade mark and trade name

"KIT KAT".


       It is in the pleading that the Plaintiff no. 1 is the owner of the trade mark

"KIT KAT" under the Trade and Merchandise Marks Act, 1958 in terms of the

registration certificate no. 473754 in Class 30 in respect of cocoa, chocolate,

chocolate products, confectionary, candy etc. The trade mark number is 8982. The

Plaintiff no. 1 also applied registration of the trade mark "KIT KAT" in India in Class

30 in stylized forms by filing applications being nos. 437752 and 437753 dated

16/06/1987. The said trade mark was advertised in trade mark journal. It is also

averred in the plaint that packaging of "KITKAT" is also subject matter of copyright

protection being original artistic work within meaning of Section 2 (c) of the

Copyright Act, 1957. Long, continuous and extensive user of the said trade mark

and artistic work all over the world including India since 1995 has conferred on the

Plaintiffs substantial reputation and goodwill.


       The Plaintiffs came to learn in the month of August 1997 that on 23rd

February, 1996, the Defendant no. 2 & 3 as partners of the Defendant no. 1 filed

notices of opposition to the Plaintiffs' application nos. 473752 and 473753 in Class
                                                                              Page |3


30 were advertised in the Trade Mark Journal No. 2666 dated 16/12/1995. The

Plaintiffs came to learn that the Defendants had been publishing purported caution

notices alleging they were the proprietors of the trade mark "KIT KAT" threatening

legal action against the Plaintiffs. The Defendants alleged that they were carrying

on business in partnership under the name and style of M/s. Kitkat Food Products

and had been manufacturing and marketing chanachur, preparations made from

cereals and food stuff prepared in the form of snacks. The defendants had adopted a

similar mark titled "Kit Kat" for being used as their trade mark and had been using

the same since 1991. The Defendants applied for registration of the trade mark "Kit

Kat" in Class 30 on 21/02/1991 being application no. 545855 and had also obtained

copyright registration in respect of the artistic work "Kit Kat" representing their

products. The Plaintiff no. 1 filed a notice of opposition to the application for

registration filed by the Defendants.


      It is alleged in the plaint that the Defendants' products reflect that the later

consciously copied the Plaintiffs' trade mark to achieve big volume of sales. Each

and every feature of the Plaintiffs' trade mark and packaging was copied identically.


      The Plaintiffs initially filed a suit in the High Court of Delhi praying for

various injunction orders restraining the Defendant no. 1 - 3 from violating the

Plaintiffs' trade mark and copyright. Subsequently the suit was withdrawn and the

present suit has been filed praying for decrees of permanent injunction against the

Defendants.


      The Defendants contested the suit by filing written statement denying all the

allegations leveled against them in the plaint.     It is contended in the written

statement that the Defendants are prior user of the trade mark "KIT KAT" in respect
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of chanachur, preparations made from cereals and snacks for which they are

proprietors of the trade mark within meaning of Section 18 of the Trade &

Merchandise Marks Act, 1958. The Plaintiffs have never ever marketed snack-

foods, chanachur and preparations made from cereals in India under the trade mark

"KIT KAT"; they do not have intention to use the trade mark in respect of these

goods. Description of the goods marketed by the Defendants is different. It is

further contended that by prior use, a common land right is created in favour of the

Defendants in respect of the trade mark "KIT KAT". According to the Defendants,

therefore, the suit is not maintainable.


       The written statement avers that the Defendant no. 1 is the registered owner

of the artistic work "KIT KAT CHANACHUR", registered under the provisions of

Copyright Act being no. A-52555/94 dated 29/03/1994 for which they have

exclusive right to use and produce the said artistic work. The said copyright is in

force and subsisting. It is denied that the work "KIT KAT" is a coined word as

various applications were pending for registration of the work kitkat and its

variation before the Register of Trade Marks. The nutshell, the sum and substance

of the defense of the Defendants is that the suit is not maintainable; the claims of

the Plaintiffs are not tenable and the suit is liable to be dismissed.


       On the basis of the pleading of the parties the following issues were framed

on 20/11/2017:


         1.

Whether the suit is maintainable in its present form or not?

2. Have the Plaintiffs any cause of action to file the instant suit?

3. Whether the Court has jurisdiction to try the suit?

Page |5

4. Whether the suit is barred by the law of limitation?

5. Whether there is a valid and subsisting license granted by the Plaintiff

no. 1 in favour of Plaintiff no. 2?

6. Whether there is valid assignment of the mark "KIT KAT" in favour of

the Plaintiff no. 1?

7. Whether the Plaintiffs are entitled to the relief claimed in the plaint?

8. Whether the Plaintiff no. 1 is the proprietor of the trade mark "KIT

KAT"?

9. Whether the Plaintiff no. 1 is the owner of the copyright in the artistic

work "KIT KAT" label subject matter of the present suit?

10. Whether use of "KIT KAT" as trade mark or trade name by the

Defendants in respect of food products including chanachur,

confectionary or any preparations made from cereals etc. amount to

infringement of trade mark registration nos. 8902 and 473754 of the

Plaintiff no. 1?

11. Whether the Defendant no. 1, 2 and 3 are prior users of the mark "KIT

KAT" in respect of chanachur and preparations made from cereals and

snack foods?

12. Whether the Defendants no. 1, 2 and 3 are the first user of the trade

mark "KIT KAT" in India in respect of chanachur and preparations

made from cereals and snacks foods?

Page |6

13. Have the Plaintiffs suffered any loss and damages on account of any

wrongful conduct of the Defendant no. 1, 2 and 3 and whether there is

any likelihood of Plaintiffs suffering any loss or damage on account of

use by the Defendants for the mark "KIT KAT" since the year 1991 in

relation to the products manufactured or sold by the Defendant no. 1, 2

and 3?

14. Whether use of "KIT KAT" label, by the Defendants, is substantial

imitation of "KIT KAT" label of the Plaintiffs and whether such act

amount to infringement of copyright?

15. Whether the Plaintiffs are entitled to any damages against the

Defendant no. 1, 2 and 3 for their alleged violation and infringement

amounting to passing off?

The Plaintiff produced oral and documentary evidences including certificate

of registration, order passed by the Assistant Registrar of Trade Mark, order of the

Intellectual Property Appellate Board dated 22/04/2013 other documents.

Issue no. 1 - 5 are taken up together.

The written statement does not disclose or makes out any specific case as to

why the suit is not maintainable in form. Signature of Mr. B. Murli who signed the

plaint was identified by P.W. 1.

The instant suit is instituted for protection of trade mark and copyright

alleging in the same was violated sometime in August, 1997 by using of same name

by the Defendant no. 1 & 2. The infringement came to the knowledge of the

Plaintiffs in August, 1997 and the suit was presented and admitted on 15th February, Page |7

2000. Therefore, the suit was instituted while within the statutory period. One of

the Defendants also resided within the jurisdiction of the suit. These are testified by

PW 1 examination-in-chief which is unchallenged because of abstaining of the

Defendants to cross-examine. Therefore, issues no. 1 - 4 are decided in favour of

the Plaintiff.

Issue no. 5 & 6 are next taken up for decisions.

Paragraph 2 of the plaint is that valid and subsisting license is there between

1 and 2 for the trade mark "Kit Kat" in India. Plaintiff No. 2 is wholly owned

subsidiary of Plaintiff No. 1. By way of license arrangement, the Plaintiff No. 2 has

been permitted to use the trade mark "Kit Kat" in India. Ext. C marked during

examination-in-chief, PW 1 testified to the same extent. Unchallenged testimony of

the P.W. 1 establish the facts. None is there to dispute the proposition. Therefore,

issue no. 5 & 6 are decided in favour of the Plaintiff.

Issue no. 7 - 14 are taken up together since their related issues.

The averments made in the plaint were contradicted by the Defendants in

their written statements but the Defendants in this case did not adduce any

evidence in support of their claim or case.

The Learned Counsel for the Plaintiff submitted that in view of Section 124

(4) of the Trade Mark Act, 1999, civil courts should pass orders in conformity with

the order of the Intellectual Property Appellate Board. Once the Intellectual

Property Appellate Board allowed the registration of the plaintiffs' trade mark this

Court has to pass order inconsonance therewith.

Section 124 of the Trade Marks Act 1999 states as follow:

Page |8

Sec.124: Stay of proceedings where the validity of registration

of the trade mark is questioned, etc.

(1) Where in any suit for infringement of a trade mark--

(a) the defendant pleads that registration of the plaintiff's trade mark is

invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of

section 30 and the plaintiff pleads the invalidity of registration of the

defendants trade mark, the court trying the suit (hereinafter referred to as

the court), shall,--

(i) if any proceedings for rectification of the register in relation to the

plaintiff's or defendant's trade mark are pending before the Registrar

or the 1[High Court], stay the suit pending the final disposal of such

proceedings;

(ii) if no such proceedings are pending and the court is satisfied that

the plea regarding the invalidity of the registration of the plaintiff's

or defendant's trade mark is prima facie tenable, raise an issue

regarding the same and adjourn the case for a period of three months

from the date of the framing of the issue in order to enable the party

concerned to apply to the 1[High Court] for rectification of the

register.

(2) If the party concerned proves to the court that he has made any such

application as is referred to in clause (b) (ii) of sub-section (1) within the

time specified therein or within such extended time as the court may for Page |9

sufficient cause allow, the trial of the suit shall stand stayed until the final

disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so

specified or within such extended time as the court may allow, the issue as

to the validity of the registration of the trade mark concerned shall be

deemed to have been abandoned and the court shall proceed with the suit

in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in

sub-section (1) or sub-section (2) shall be binding upon the parties and the

court shall dispose of the suit conformably to such order in so far as it

relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this

section shall not preclude the court from making any interlocutory order

(including any order granting an injunction, directing account to be kept,

appointing a receiver or attaching any property), during the period of the

stay of the suit.

Intellectual Property Appellate Board observed that two applications bearing

no. 473752 and 473753 were in respect of cocoa, chocolates, chocolate products etc.

made from cereals and snacks-foods included in Class 30. These two marks are

label marks and in one mark in the word "Kit Kat" is written in a stylish front and

other one is written in a stylish front in an oval line. It was also observed that the

Plaintiffs were user of the trade mark since 01/11/1987 and the Plaintiff no. 1 is a

prior user of the trade mark. It is also observed that the Plaintiff no. 1 established

distinctiveness under substantial circumstances. It is further observed that Plaintiff P a g e | 10

no. 1 is a prior user and the possibility would not arise but the, consuming public

who are aware of Plaintiff no. 1, would know that it is the product of Plaintiff no. 1

only. A further observation is made in the order that mark "Kit Kat" by both the

parties is identical. Goods are similar trade channel and are also same the class of

similar could also be the same. The Plaintiff no. 1 deals with wafer chocolates and

the Defendant no. 1 with chanachur, ice-cream etc. which are often purchased by

children. When the classes of customer are considered which is the test to

determine deceptive similarity, there is every possibility of confusion being caused

by user of the mark used by the Defendant no. 1.

In nutshell, application no. 473752 and 473753 were allowed for registration.

The application no. 545855 which is an application for registration in respect of

chanachur and preparations made from cereals being a label mark where the word

"Kit Kat" is written a stylish front with a device of a chef and descriptive matters

were refused registration similarly the application no. 864115 being the trade mark

"Kit Kat" written in an oval shape line as well as the applications no. 1198509 were

the word "Kit Kat" written in a normal form were refused registration.

The order of the Intellectual Property Appellate Board dated 22/04/2013

contains a clear fact finding that the Plaintiffs are prior user trade mark "Kit Kat"

and that use of the same words by the Defendants would create confusion since both

of them deals with similar products marketed through the same channel. PW 1 is in

his oral testimony also deposed that there is confusion amongst the customers

about the source of product namely "Kit Kat Chanachur" used by the Defendants as

to whether it is coming from Nestle or from the Defendants. Such confusion caused

damage to reputation and/or goodwill of the Plaintiffs' company.

P a g e | 11

Unchallenged testimony of the P.W. 1 along with documentary evidences and

clearly establish the case of the Plaintiff. There is no scope to differ with the

findings of the Intellectual Property Appellate Board.

On the basis of evidence adduced, this Court come to the conclusion that the

Plaintiffs are able to establish their case, for which they are entitled to a permanent

injunction against the Defendant no. 1 - 3.

Therefore, all these issues are decided in favour of the Plaintiff. In other

words, the Plaintiffs are entitled to the relief of permanent injunction.

Hence it is ordered that the Defendant no. 1 - 3 are permanently restrained

to infringe the trade mark and copy right of the Plaintiffs subsisting in the word "Kit

Kat" or in any design or artistic work as such, using the trade name or trade mark

"Kit Kat" or any other deceptively similar trade mark or trade name or any name of

business of similar or deceptively similar name "Kit Kat"; the Defendant no. 1 - 3 are

also restrained from infringing the registered trade mark of the Plaintiff namely

8982 and 473754.

Let the decree be drawn up. The suit is disposed of accordingly.

(SUGATO MAJUMDAR, J.)