The lawsuit was filed in August 2005 against the defendant, the sole proprietorship of Mr. Charan Das. Plaintiff 1– Cadbury India Ltd. and Plaintiff 2– Cadbury Schweppes Overseas Limited claimed ownership of the mark ‘CADBURY GEMS’ or ‘GEMS’. The Plaintiffs claim that the defendant launched a chocolate product under the name ‘JAMES BOND’ with the identical colour scheme, layout, and arrangement as the ‘CADBURY GEMS’ or ‘GEMS’ products.

Further, the Plaintiffs also claimed that the product “James Bond” also stood in infringement of the copyright and trademark registration, under its former name, Hindustan Cocoa Products Ltd., bearing registration numbers A-50680/90 and A-49975/89 in respect to a character referred to as “Gems Bond”, often used in various marketing campaigns of their product.

                                           Figure: Packaging of Cadbury Gems and James Bond[1]

Hence, the lawsuit sought a permanent and mandatory injunction and damages for trademark and copyright infringement, passing off, unfair competition and other relief.

The Court observed that the packaging of the Plaintiffs’ ‘GEMS’ product is very unique, with illustrations of colourful button chocolates on a blue/purple base with the mark ‘GEMS’ depicted in a number of colours and a splash in the middle, which is very well known to the young and the old alike.

Numerous “GEMS” advertisements feature the phrase “GEMS BOND,” and some examples have also been made public. The defendant’s packaging features colourful button chocolates and the mark “JAMES BOND”/”JAMEY BOND” with the same blue/purple foundation. The trademark “GEMS” appears on a brown background on both the plaintiff’s and the defendant’s products. The label and packaging for the Plaintiffs’ product share the same colour palette as the Defendant’s product. Additionally, the marks are misleadingly and confusingly similar. Therefore, the court categorised the situation as an instance of res ipsa loquitur.

The Court referred to the Supreme Court’s decisions in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968 and Parle Products (P) Ltd. v. J.P. & Co., Mysore, in which the contention of the test of infringement and deceptive similarity of competing marks (1972) 1 SCC 618 was settled, wherein it was observed that “the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them and the Court has to see the similarities and not the dissimilarities.”

The Court also placed reliance on the decision of ITC Ltd. v. Britannia Industries Ltd. 2016 SCC OnLine Del 5004, in which it was observed that “Where the product is eatable like a biscuit, the colour and the colour scheme of the packaging play an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.”

Further, while discussing the concept of ‘initial interest in the same judgment, the Court relied on Baker Hughes Limited v. Hiroo Khushalani, while observing, “In some cases, however, it is also possible that a purchaser, after having been misled into an initial interest in a product manufactured by an imitator, discovers his folly, but this initial interest, being based on confusion and deception, can give rise to a cause of action for the tort of passing off as the purchaser has been made to think that there is some connection or nexus between the products and business of two disparate companies.”

However, that may not be entirely true when it comes to products like biscuits. The packaging of a biscuit does become associated with the manufacturer or brand. The colour of the wrapper would certainly play an important role.

In the present case, the Court opined, inter alia, that the product- ‘GEMS’ is also usually liked and consumed by small children in both urban and rural areas. Therefore, in such a case, the test shall not be limited to that of absolute confusion, but even the likelihood of confusion shall be deemed sufficient. Hence, the product’s layout and the colour combination of the packaging play a vital role when making a purchase. Moreover, chocolates are not merely sold in retail stores or outlets but also at roadside shacks, paan shops, patri vendors, kirana stores and stalls outside schools, etc. Thus, considering that the class of consumers the product is targeted at is children, the likelihood of confusion stands high.

In conclusion, it can be inferred by the Delhi High Court’s decision that the test for the likelihood of confusion stands on several factors, including the product category in dispute and the consumer demographic it appeals to. As observed by the Court, ‘almost everyone’s childhood is associated with Cadbury Gems’; the product was popular amongst many consumers of all ages and across socio-economic backgrounds. Further, the strikingly similar colour scheme of the packets and layouts and the phonetic sounds of the two products were enough to inspire a “likelihood of confusion” at the point of purchase by the consumer, which led the Court to take a firm stand in favour of the Plaintiff.