The brief facts are that Cadbury Schweppes’s had filed a suit for restraining ITC Ltd., by way of perpetual injunction, from using, in any manner, in relation to any chocolates or confectionery, the impugned mark ‘Candyman’ and / or ‘Candyman Choco Eclairs’ and / or ‘Eclairs’ or any other deceptively similar trade marks. Cadbury Schweppes alleged that the trade dress for its chocolate products and products containing chocolate such as Éclairs was being passed off by ITC’s products sold under the mark ‘Candyman Choco Eclairs’, which had been launched in 2003 with an orange and gold wrapper. ITC, however, contended that the suit deserved to be dismissed as it lacked jurisdiction and cause of action. It averred that its trade mark is ‘CANDYMAN’, whereas Cadbury Schweppes’s is ‘CADBURYS’, and that the term ‘eclairs’ is generic and common to the trade and Cadbury Schweppes cannot claim exclusive rights to the same.

The trial court, while rejecting the prayer for interim injunction, held that the words ‘CHOCO’ and ‘ÉCLAIRS’ are generic and describe products, and that they were so popular in chocolate confectionary that no one can be misled by the same. It further held that the words ‘Cadbury’ and ‘Candyman’ do not have any phonetic or visual similarity except the letter ‘C’.

In the appeal filed by Cadbury Schweppes, the Gujarat High Court, applying the principles for comparison of trade dress / getup in cases where passing off is claimed on account of similarity of trade dress, held that the trial court failed to compare the similar features of the two labels, namely that both the labels were predominantly gold in colour when the eclair is wrapped in the same, and that the lettering on both labels was in purple. Granting interim injunction to Cadbury Schweppes, the High Court held that the two marks were deceptively similar and there was every likelihood that this may cause confusion or deception in the minds of consumers.

Answering the question as to whether Cadbury Schweppes’s trade dress is distinctive of its products or is common to trade, the High Court accepted Cadbury Schweppes’s plea that the gold and purple colour scheme of trade dress was not common to the trade. Cadbury Schweppes’s case was based on the fact that the purple and gold combination is peculiar to its Cadbury Diary Milk chocolates and that this was a case of infringement / passing off of this trade dress.

The High Court, however, held that the complete text ‘Candyman Choco Éclair’ and ‘Cadbury Diary Milk Eclairs’, written in purple colour on a golden coloured background on the rival labels mentioned, in three separate rows, one below the other, on the small labels of each individual wrapper, would result in confusing similarities between the two labels which would easily deceive consumers, especially young children who are the predominant purchasers of these products. The High Court, instead of the dissimilarities, took note of the similarities between the two trade dresses and concluded that both marks had the same colour scheme; the get up and lay out were also similar and both marks were visually and structurally similar. Thus, there was every likelihood that confusion or deception is likely to arise. Since the purchasers of these goods belong to different classes, but mostly comprising of children who cannot be expected to exercise a very high degree of care and caution in purchasing these goods, and both products were targeted at the same consumers / customers, there was all likelihood that a child would not be in position to make out the difference, if ITC’s goods are passed off as that of Cadbury Schweppes.

Thus, the High Court held that Cadbury Schweppes was entitled to an interim injunction and the trial court whilst refusing to grant injunction had erred in not considering the similarities in the competing marks and instead applied the wrong principles and went into the question of dissimilarities in the essential features and did not refer to the similarities in the essential features.