Sugato Majumdar, J.:

1. The instant suit is filed by the Plaintiffs for protection of their intellectual property rights and seeking decree of permanent injunction in connection therewith, against the Defendants.

2. The Plaintiff no. 1 is a company incorporated in Switzerland, having registered office therein and the Plaintiff no. 2 is a company incorporated under Companies Act, 1956 having registered office at New Delhi. The Defendant No. 1 carries on business, being a partnership farm, at 68/26, Hari Pada Dutta Lane, Kolkata – 700033, outside the jurisdiction of this Court. Defendant no. 2 & 3 are the partners of Defendant no. 1. The Defendant no. 4 is a retailer of chocolates, chanachur and nuts and carries on business at N.B. 27A, S.S. Hoggy Market, Kolkata – 700087 within jurisdiction of this Court. Defendant no. 5 is a statutory board constituted under the provisions of Copyrights Act, 1957.

3. The Plaintiffs are engaged in manufacture and sales of an extensive range of food products such as cereals, milk and dietetic products, beverages including instant coffee, culinary products including pasta, noodles, sauces and others. “KITKAT” was launched in the United Kingdom in the month of August, 1935. By 1949 the said product was recognized simply by the trade mark and trade name “KIT KAT”.

4. It is in the pleading that the Plaintiff no. 1 is the owner of the trade mark “KIT KAT” under the Trade and Merchandise Marks Act, 1958 in terms of the registration certificate no. 473754 in Class 30 in respect of cocoa, chocolate, chocolate products, confectionary, candy etc. The trade mark number is 8982. The Plaintiff no. 1 also applied registration of the trade mark “KIT KAT” in India in Class 30 in stylized forms by filing applications being nos. 437752 and 437753 dated 16/06/1987. The said trade mark was advertised in trade mark journal. It is also averred in the plaint that packaging of “KITKAT” is also subject matter of copyright protection being original artistic work within meaning of Section 2 (c) of the Copyright Act, 1957. Long, continuous and extensive user of the said trade mark and artistic work all over the world including India since 1995 has conferred on the Plaintiffs substantial reputation and goodwill.

8. The Plaintiffs came to learn in the month of August 1997 that on 23rd February, 1996, the Defendant no. 2 & 3 as partners of the Defendant no. 1 filed notices of opposition to the Plaintiffs’ application nos. 473752 and 473753 in Class 30 were advertised in the Trade Mark Journal No. 2666 dated 16/12/1995. The Plaintiffs came to learn that the Defendants had been publishing purported caution notices alleging they were the proprietors of the trade mark “KIT KAT” threatening legal action against the Plaintiffs. The Defendants alleged that they were carrying on business in partnership under the name and style of M/s. Kitkat Food Products and had been manufacturing and marketing chanachur, preparations made from cereals and food stuff prepared in the form of snacks. The defendants had adopted a similar mark titled “Kit Kat” for being used as their trade mark and had been using the same since 1991. The Defendants applied for registration of the trade mark “Kit Kat” in Class 30 on 21/02/1991 being application no. 545855 and had also obtained copyright registration in respect of the artistic work “Kit Kat” representing their products. The Plaintiff no. 1 filed a notice of opposition to the application for registration filed by the Defendants.

9. It is alleged in the plaint that the Defendants’ products reflect that the later consciously copied the Plaintiffs’ trade mark to achieve big volume of sales. Each and every feature of the Plaintiffs’ trade mark and packaging was copied identically.

10. The Plaintiffs initially filed a suit in the High Court of Delhi praying for various injunction orders restraining the Defendant no. 1 - 3 from violating the Plaintiffs’ trade mark and copyright. Subsequently the suit was withdrawn and the present suit has been filed praying for decrees of permanent injunction against the Defendants.

11. The Defendants contested the suit by filing written statement denying all the allegations leveled against them in the plaint. It is contended in the written statement that the Defendants are prior user of the trade mark “KIT KAT” in respect of chanachur, preparations made from cereals and snacks for which they are proprietors of the trade mark within meaning of Section 18 of the Trade & Merchandise Marks Act, 1958. The Plaintiffs have never ever marketed snackfoods, chanachur and preparations made from cereals in India under the trade mark “KIT KAT”; they do not have intention to use the trade mark in respect of these goods. Description of the goods marketed by the Defendants is different. It is further contended that by prior use, a common land right is created in favour of the Defendants in respect of the trade mark “KIT KAT”. According to the Defendants, therefore, the suit is not maintainable.

12. The written statement avers that the Defendant no. 1 is the registered owner of the artistic work “KIT KAT CHANACHUR”, registered under the provisions of Copyright Act being no. A-52555/94 dated 29/03/1994 for which they have exclusive right to use and produce the said artistic work. The said copyright is in force and subsisting. It is denied that the work “KIT KAT” is a coined word as various applications were pending for registration of the work kitkat and its variation before the Register of Trade Marks. The nutshell, the sum and substance of the defense of the Defendants is that the suit is not maintainable; the claims of the Plaintiffs are not tenable and the suit is liable to be dismissed.

13. On the basis of the pleading of the parties the following issues were framed on 20/11/2017:

1. Whether the suit is maintainable in its present form or not

2. Have the Plaintiffs any cause of action to file the instant suit

3. Whether the Court has jurisdiction to try the suit

4. Whether the suit is barred by the law of limitation

5. Whether there is a valid and subsisting license granted by the Plaintiff no. 1 in favour of Plaintiff no. 2

6. Whether there is valid assignment of the mark “KIT KAT” in favour of the Plaintiff no. 1

7. Whether the Plaintiffs are entitled to the relief claimed in the plaint

8. Whether the Plaintiff no. 1 is the proprietor of the trade mark “KIT KAT”

9. Whether the Plaintiff no. 1 is the owner of the copyright in the artistic work “KIT KAT” label subject matter of the present suit

10. Whether use of “KIT KAT” as trade mark or trade name by the Defendants in respect of food products including chanachur, confectionary or any preparations made from cereals etc. amount to infringement of trade mark registration nos. 8902 and 473754 of the Plaintiff no. 1

11. Whether the Defendant no. 1, 2 and 3 are prior users of the mark “KIT KAT” in respect of chanachur and preparations made from cereals and snack foods

12. Whether the Defendants no. 1, 2 and 3 are the first user of the trade mark “KIT KAT” in India in respect of chanachur and preparations made from cereals and snacks foods

13. Have the Plaintiffs suffered any loss and damages on account of any wrongful conduct of the Defendant no. 1, 2 and 3 and whether there is any likelihood of Plaintiffs suffering any loss or damage on account of use by the Defendants for the mark “KIT KAT” since the year 1991 in relation to the products manufactured or sold by the Defendant no. 1, 2 and 3

14. Whether use of “KIT KAT” label, by the Defendants, is substantial imitation of “KIT KAT” label of the Plaintiffs and whether such act amount to infringement of copyright

15. Whether the Plaintiffs are entitled to any damages against the Defendant no. 1, 2 and 3 for their alleged violation and infringement amounting to passing off

14. The Plaintiff produced oral and documentary evidences including certificate of registration, order passed by the Assistant Registrar of Trade Mark, order of the Intellectual Property Appellate Board dated 22/04/2013 other documents.

15. Issue no. 1 – 5 are taken up together.

16. The written statement does not disclose or makes out any specific case as to why the suit is not maintainable in form. Signature of Mr. B. Murli who signed the plaint was identified by P.W. 1.

17. The instant suit is instituted for protection of trade mark and copyright alleging in the same was violated sometime in August, 1997 by using of same name by the Defendant no. 1 & 2. The infringement came to the knowledge of the Plaintiffs in August, 1997 and the suit was presented and admitted on 15th February, 2000. Therefore, the suit was instituted while within the statutory period. One of the Defendants also resided within the jurisdiction of the suit. These are testified by PW 1 examination-in-chief which is unchallenged because of abstaining of the Defendants to cross-examine. Therefore, issues no. 1 – 4 are decided in favour of the Plaintiff.

18. Issue no. 5 & 6 are next taken up for decisions.

19. Paragraph 2 of the plaint is that valid and subsisting license is there between 1 and 2 for the trade mark “Kit Kat” in India. Plaintiff No. 2 is wholly owned subsidiary of Plaintiff No. 1. By way of license arrangement, the Plaintiff No. 2 has been permitted to use the trade mark “Kit Kat” in India. Ext. C marked during examination-in-chief, PW 1 testified to the same extent. Unchallenged testimony of the P.W. 1 establish the facts. None is there to dispute the proposition. Therefore, issue no. 5 & 6 are decided in favour of the Plaintiff.

20. Issue no. 7 – 14 are taken up together since their related issues.

21. The averments made in the plaint were contradicted by the Defendants in their written statements but the Defendants in this case did not adduce any evidence in support of their claim or case.

22. The Learned Counsel for the Plaintiff submitted that in view of Section 124 (4) of the Trade Mark Act, 1999, civil courts should pass orders in conformity with the order of the Intellectual Property Appellate Board. Once the Intellectual Property Appellate Board allowed the registration of the plaintiffs’ trade mark this Court has to pass order inconsonance therewith.

23. Section 124 of the Trade Marks Act 1999 states as follow:

Sec.124: Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

(1) Where in any suit for infringement of a trade mark--

(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,--

(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the 1[High Court], stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the 1[High Court] for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

24. Intellectual Property Appellate Board observed that two applications bearing no. 473752 and 473753 were in respect of cocoa, chocolates, chocolate products etc. made from cereals and snacks-foods included in Class 30. These two marks are label marks and in one mark in the word “Kit Kat” is written in a stylish front and other one is written in a stylish front in an oval line. It was also observed that the Plaintiffs were user of the trade mark since 01/11/1987 and the Plaintiff no. 1 is a prior user of the trade mark. It is also observed that the Plaintiff no. 1 established distinctiveness under substantial circumstances. It is further observed that Plaintif no. 1 is a prior user and the possibility would not arise but the, consuming public who are aware of Plaintiff no. 1, would know that it is the product of Plaintiff no. 1 only. A further observation is made in the order that mark “Kit Kat” by both the parties is identical. Goods are similar trade channel and are also same the class of similar could also be the same. The Plaintiff no. 1 deals with wafer chocolates and the Defendant no. 1 with chanachur, ice-cream etc. which are often purchased by children. When the classes of customer are considered which is the test to determine deceptive similarity, there is every possibility of confusion being caused by user of the mark used by the Defendant no. 1.

25. In nutshell, application no. 473752 and 473753 were allowed for registration. The application no. 545855 which is an application for registration in respect of chanachur and preparations made from cereals being a label mark where the word “Kit Kat” is written a stylish front with a device of a chef and descriptive matters were refused registration similarly the application no. 864115 being the trade mark “Kit Kat” written in an oval shape line as well as the applications no. 1198509 were the word “Kit Kat” written in a normal form were refused registration.

26. The order of the Intellectual Property Appellate Board dated 22/04/2013 contains a clear fact finding that the Plaintiffs are prior user trade mark “Kit Kat” and that use of the same words by the Defendants would create confusion since both of them deals with similar products marketed through the same channel. PW 1 is in his oral testimony also deposed that there is confusion amongst the customers about the source of product namely “Kit Kat Chanachur” used by the Defendants as to whether it is coming from Nestle or from the Defendants. Such confusion caused damage to reputation and/or goodwill of the Plaintiffs’ company.

27. Unchallenged testimony of the P.W. 1 along with documentary evidences and clearly establish the case of the Plaintiff. There is no scope to differ with the findings of the Intellectual Property Appellate Board.

28. On the basis of evidence adduced, this Court come to the conclusion that the Plaintiffs are able to establish their case, for which they are entitled to a permanent injunction against the Defendant no. 1 – 3.

29. Therefore, all these issues are decided in favour of the Plaintiff. In other words, the Plaintiffs are entitled to the relief of permanent injunction.

30. Hence it is ordered that the Defendant no. 1 - 3 are permanently restrained to infringe the trade mark and copy right of the Plaintiffs subsisting in the word “Kit Kat” or in any design or artistic work as such, using the trade name or trade mark “Kit Kat” or any other deceptively similar trade mark or trade name or any name of business of similar or deceptively similar name “Kit Kat”; the Defendant no. 1 - 3 are also restrained from infringing the registered trade mark of the Plaintiff namely 8982 and 473754.

31. Let the decree be drawn up. The suit is disposed of accordingly.