Italian candy maker Perfetti Van Melle SPA has won a nine-year old trademark battle before the Intellectual Property Appellate Board, which has dismissed Nagpur-based confectioner Candico's demand for cancellation of the Italian company's "Big Babol" registration in India.
Big Babol is one of the largest selling chewing gums marketed by the Perfetti's Indian subsidiary.
The IPAB said Candico had failed to prove that the trademark would cause confusion among consumers, if it was allowed to continue. "The application (made by Candico) is devoid of merits and is dismissed. However, there shall be no order as to costs," the board said in its judgment.
The legal battle was set off in 1998 with a legal notice from Perfetti to Candico, demanding that the company stop using the words "The Big Bubble" with its chewing gums Loco Poco and Freedom as it had been making and marketing Big Babol chewing gum.
Candico, in turn, filed a case against Perfetti with the district court at Nagpur, seeking to restrain the Italian company from using the trademark Big Babol. It even received an interim injunction that was subsequently vacated. Candico appealed in the Bombay High Court, which transferred the plea to the IPAB.
Although the product name and the tag line are deceptively similar, Candico could not provide evidence to substantiate its objection, which was consequently rejected by the board.
Perfetti argued that it had used the Big Babol trademark back in Italy since 1979 and in India since 1981, whereas Candico introduced the Big Bubble Gum trademark in India only in1989.
"We are of the view that it is for the applicant (Candico) to prove that if the mark is allowed to continue on the register it would affect their right," the board said.
"In fact it is seen that after a cease and desist notice was issued the applicants (Candico) have only initiated a suit against the first respondents (Perfetti). It is clear that the applicant was not facing any legal threat and so cannot be said to be an aggrieved person."
Both companies when asked for their reactions to the order refused to comment.
Candico was originally set up in 1989 as the confectionery division of Bakemans Industries. The unit was transferred to Heritage Bharat, which was subsequently renamed as Candico in 1997.
Unlike Parry's Confectionery and Nutrine Confectionery that were acquired by other players, Candico has not seen any change in ownership.
Candico also introduced Mint-O-Fresh, which was sold to FMCG giant ITC in 2003 and is now the market leader in mint-based candies, ahead of Perfetti's Chlor-mint.
Perfetti began operations in India in 1994 and is a significant player in the gums market here with Centre Fresh and Happy Dent.