Iconic IP Interests LLC & Anr. v. Sarju Confectionery LLP

“A defendant cannot escape trademark infringement merely by making minor changes to the wording when the overall mark, packaging and artistic presentation create the same commercial impression.”

Court: Delhi High Court

Case No.: CS(COMM) 656/2023

Citation: 2024:DHC:8953

Date of Decision: 8 November 2024

Judge: Hon’ble Mr. Justice Amit Bansal

Short Description About the Case

This was an important trademark, copyright and passing-off dispute concerning the well-known confectionery brand “JOLLY RANCHER.”

The plaintiffs, Iconic IP Interests LLC and The Hershey Company, alleged that Sarju Confectionery LLP was selling lollipops under the mark “JOKY RAMPER” with packaging that was almost identical to the plaintiffs' JOLLY RANCHER packaging.

The Delhi High Court found that the defendant's mark had phonetic, structural and visual similarities with the plaintiffs' mark and that the defendant had also replicated important features of the plaintiffs' packaging, colour scheme and artistic presentation. The Court consequently found infringement of trademark and copyright as well as passing off.

Facts of the Case

Plaintiff No. 1, Iconic IP Interests LLC, was engaged in licensing intellectual property rights and collecting royalties. Plaintiff No. 2, The Hershey Company, is a major manufacturer of chocolate and sugar confectionery products.

The plaintiffs claimed rights in the JOLLY RANCHER marks. In India, the plaintiff had registrations including:

JOLLY RANCHER – Registration No. 1471719 – Class 30

JOLLY RANCHER AWESOME TWOSOME – Registration No. 2391250 – Class 30

JOLLY RANCHER SQUEEZERS – Registration No. 2616582 – Class 30

These registrations were stated to be valid and subsisting.

The plaintiffs' Indian subsidiary had been manufacturing JOLLY RANCHER lollipops at its manufacturing facility in Chittoor, Andhra Pradesh, since 2013.

The plaintiffs had also developed distinctive packaging for their lollipops, including particular colour combinations and artistic elements. They claimed copyright protection over the packaging.

The defendant, Sarju Confectionery LLP, was manufacturing and selling chocolates, candies and lollipops under the mark “JOKY RAMPER.”

In early 2023, the plaintiffs discovered the defendant's products and alleged that the defendant was using not only a deceptively similar mark but also almost identical packaging.

The products were being sold through the defendant's website, IndiaMART and physical retail stores. The plaintiffs issued a legal notice dated 17 March 2023, followed by a reminder dated 27 March 2023, calling upon the defendant to stop the infringing activities. The defendant did not respond.

The plaintiffs thereafter instituted the suit.

On 21 September 2023, the Court granted an ex parte ad-interim injunction restraining the defendant from manufacturing, selling and advertising the impugned products. A Local Commissioner was also appointed.

During the commission conducted on 25 September 2023, a total of 10,660 lollipops bearing the impugned marks and packaging were seized from the defendant's premises.

Findings of the Court

The Court first found that the plaintiffs were the registered proprietors of the JOLLY RANCHER trademarks and that they also had copyright in the relevant trade dress and packaging.

The Court then compared the plaintiffs' products with the defendant's products.

The defendant was using “JOKY RAMPER”, which the Court found to be nearly identical in commercial impression and to possess phonetic, structural and visual similarities with “JOLLY RANCHER.”

The Court also considered the packaging. The defendant had replicated important aspects of the plaintiffs' packaging, including the contents, colour scheme and artistic presentation.

Significantly, the Court noted that the pictorial representation of the lollipop and fruits corresponding to the flavour on the defendant's wrapper was deceptively similar to that appearing on the plaintiffs' wrapper.

The Court held that this was not merely a case of similarity in the word mark. The defendant had reproduced the overall elements of the plaintiffs' product presentation in a manner that was capable of deceiving consumers.

The Court concluded that there was a clear case of trademark and copyright infringement and that the defendant had taken unfair advantage of the plaintiffs' reputation and goodwill.

The Court further held that the circumstances established a case of passing off, as consumers could be deceived into believing that the defendant's products were connected with the plaintiffs.

Another important factor was the defendant's failure to contest the proceedings. Despite service of summons, the defendant did not enter appearance or file a written statement. The Court therefore proceeded to decree the suit under Order VIII Rule 10 CPC.

Suggestion / Practical Importance

This case is particularly useful in trademark infringement and passing-off matters involving FMCG, food and confectionery products.

The important practical lesson is that while comparing two marks, the Court may consider the overall commercial impression, rather than examining the spelling of the marks in isolation.

It is particularly useful where the defendant has adopted:

similar wording + similar pronunciation + similar packaging + similar colour scheme + similar artistic elements.

In such circumstances, even if the defendant argues that the two marks are technically different, the cumulative effect of the similarities can establish infringement and passing off.

The case is also useful for copyright claims concerning product packaging and trade dress, particularly where the defendant has reproduced the artistic arrangement and visual presentation of the plaintiff's product.

For an advocate, this case can therefore be cited where a client complains that a competitor has not merely copied the trademark but has copied the entire look and commercial appearance of the product.

Judgment

The Delhi High Court passed a permanent injunction restraining Sarju Confectionery LLP from manufacturing, selling, advertising, marketing or otherwise dealing with lollipops or confectionery products bearing “JOKY RAMPER” or any mark/packaging identical or deceptively similar to the plaintiffs' “JOLLY RANCHER” marks and packaging.

The Court also permanently restrained the defendant from infringing the plaintiffs' copyright in the JOLLY RANCHER packaging and from passing off its products as those of the plaintiffs.

In addition to the injunction, the Court awarded ₹2,00,000/- as damages to the plaintiffs. The Court also directed that the actual litigation costs be determined by the Taxation Officer.

The Court did not, however, decide the plaintiffs' request to declare JOLLY RANCHER a well-known trademark in this proceeding, leaving the plaintiffs free to raise that issue in future proceedings.