Unilever Plc & Anr vs Royal Ice Cream

Ashis Kumar Chakraborty, J

The petitioners, being the plaintiffs in a suit for infringement of trade mark the plaintiffs have filed this application seeking for various interim reliefs against the respondent.

The petitioner no.1 is a company incorporated under the laws of England and Wales and carries on business in India through its subsidiary, the petitioner no.2. The petitioner no.1 through the petitioner no.2 carry on the business of manufacturing products in the Fast Moving Consumer Goods Sector in India. In the year 1962, the petitioner no.1 acquired the Italian ice cream manufacturer Spica, who devised the formula of coating the inside of the ice cream cones with the mixture of sugar and chocolate to keep the same free from getting soggy. After the said acquisition, the petitioner no.1 launched its sugar and chocolate coated cones filled with delicious ice creams/frozen desserts under the well-known trade mark "Cornetto" (hereinafter to as "the said trade mark"). It is claimed that the said goods of the petitioner no.1 bearing the said trade mark created a market sensation and were an instant hit amongst the ice creams lovers. The said trade mark of the petitioner no.1 is claimed to have become one of its most famous and popular global brands. The petitioner no.1 has also secured registration of the said trade mark in relation to the said goods in various jurisdictions. The petitioners have disclosed the particulars of the registration of its said trade marks in India bearing nos. 516822 and 811097, both in Class 30 under the provisions of the Trade Marks Act, 1999. The petitioner no.1 has also granted licence/permission in favour of its subsidiary the petitioner no.2 to openly and extensively use the said trade marks upon and in relation to the said goods in India. The petitioner no.2 has been using the said trade mark "Cornetto" under the Umbrella brand for frozen dessert/ice creams, that is, Kwality Walls. The petitioners have disclosed a statement containing their All India sale of the Ice cream bearing the said trade mark "Cornetto" between the year 1997 and 2014, as well as a statement of the advertisement cost incurred by them in respect of said goods bearing the said trade mark "Cornetto" for the same period. The petitioners claim that due to superior quality and high efficacy of the said product/goods bearing the said trade mark, large sales effected and wide publicity given to the said goods bearing the said trade mark, the said goods and the said trade mark have become extremely popular in India and the said goods bearing the aid trade mark are in great demand. The petition no.1 has the statutory and common law rights and the petitioner no.2 has the common law rights to use the said trade mark in relation to the said goods to the exclusion of other manufacturers and traders of the said/similar goods.

In or about July, 2019 in the course of a market survey and investigation carried in Hazaribagh, in the State of Jharkhand, the petitioner no.2 came to learn that the respondent is manufacturing, marketing and/or selling frozen desserts and/or ice creams (hereinafter referred to as "the impugned goods") under the trade mark "Kornetto" ("the impugned trade mark"), which is deceptively similar, if not identical to "Cornetto", being the registered trade mark of the petitioner no.1. The respondent is using the impugned trade marks on the top cover/lid, covering the broad upper surface of the ice cream cone. Photographs of the top cover/lids on which the respondent is using the impugned trademark have been disclosed in the petition as Annexure- "E" thereto. The petitioners claim that the respondent's impugned trade mark "Kornetto" is identical with and deceptively similar to the petitioner no.1's trade mark "Cornetto" registered under the provisions of the Trade Marks Act, 1999 under Registration Nos. 516822 and 811097, both in class 30. The impugned trademark "Kornetto" is phonetically identical to the petitioner no.1's trade mark "Cornetto" and is visually deceptively similar to the same. The Respondent is using the impugned trade mark upon and in relation to identical/similar goods as the goods in respect of which petitioner no.1's said trade mark has been registered as aforesaid. It is submitted that by using the impugned trademarks, the respondent has infringed and are continuing to infringe the petitioner5 no.1's said registered trademarks bearing Registration Nos. 516822 and 811097, both in class 30.

The petitioners have acquired wide and enviable reputation and goodwill in respect of the petitioner no.1's said trade mark "Cornetto" and the goods sold thereunder. The consumers and members of the trade and public who are acquired with the petitioner. The consumers and members of the trade and public who are acquainted with the petitioners' said goods sold under the said trade mark upon coming across the respondent's goods offered under the impugned trade marks are likely to be confused or deceived into believing that the respondent's impugned goods are those of the petitioner and/or are originating from the petitioners and/or are connected in t5he course of the trade with the petitioners.

According to the petitioners the respondent has dishonestly chosen and deceptively similar, if not identical trade mark "Kornetto" in relation to the same/similar goods. The respondent has therefore knowingly and deliberately adopted and used the impugned trade mark upon and in relation to his impugned goods with a view to trade upon the tremendous and enviable goodwill and reputation of the petitioners in the said trade mark and thereby make unlawful gains.

Based on the above allegations, the petitioners have filed the instant suit against the respondent for infringement of the said trade marks of the petitioner no.1. In this application, the petitioners have prayed for various interim reliefs, including an ex-parte ad interim order of injunction against the respondent restraining him from infringing the said trade marks of the petitioner no.1.

Considering the materials-on-record, I am prima facie satisfied that user of the said trade mark "Kornetto" by the respondent no.1 in respect of the impugned goods results in infringement of the said trade marks of the petitioner no.1 bearing registration Nos. 516822 and 811097 both in Class 30. Accordingly, there shall be an ex-parte ad interim order in terms of prayers (a) and (b) of the Notice of Motion.

Further, Mr. Ranjan Sinha, Advocate of Bar Library Club (First Floor) is appointed as the Special Officer who shall visit the place of business of the respondent at Hazaribagh, in the State of Jharkhand and also other the godown(s) of the defendant where the infringing products may be stored and inventorise the infringing products, if required, with police assistance. The Officer-in-Charge of the concerned Police Station, if approached by the Special Officer, shall extend all assistance to him for implementing this Order. The Special Officer shall be entitled to an initial remuneration of 3000 GMs to be paid by the plaintiff. The Special Officer shall be accompanied by a competent officer of the plaintiff who shall serve a copy of the petition and a copy of this order on the defendant. All arrangements for the visit of the Receiver at Nagpur in the State of Maharashtra shall be made by the petitioners at their own cost.

The ad interim order passed today shall be valid till September 13, 2019 or until further order whichever is earlier.

The application will appear on September 11, 2019. The plaintiff shall file an affidavit of service on the next date. The Special Officer shall file his report on the next date.

The respondent shall be at liberty to apply for vacating and/or variation of this order upon notice to the plaintiff.

The parties and all concerned, including the Special Officer and Police Authorities shall act on copies of the certified website copies of the order.