Perfetti gets one more chance to save Big Babol

The Intellectual Property Appellate Board today gave Italian confectionery major Perfetti Van Melle's Indian subsidiary two weeks to produce evidence that it manufactured and sold the Big Babol brand in India before 1998.

This was in response to a case filed by the Nagpur-based confectioner, Candico, which claims that Perfetti's registration for trademark Big Babol will hold good against the use of Big Bubble Gum of Candico, only if Perfetti produces documental evidence proving prior use of the Big Babol trademark. Perfetti, on the other hand, contends that since Perfetti had registered the Big Babol trademark in 1981, it is Candico that needs to produce documents for proving the use of Big Bubble Gum.

The matter has been under dispute for the last nine years. Candico is seeking the cancellation of the Big Babol trademark based on several grounds, one of which is the counter-argument presented by Perfetti itself. The latter said that Candico could not call Big Bubble Gum a trademark, since they were descriptive words. Candico, in turn, now claims that mere change of spelling to Big Babol will not make Perfetti's trademark less descriptive and hence stands an equal chance of not being "registerable". Perfetti says its Big Babol brand has very high sales in the Indian market and enjoys customers' goodwill. Candico uses Big Bubble Gum with its brands such as Loco Poco, The Big Bubble Gum and Freedom, The Big Bubble Gum."

Sources say that the two companies are also in talks to consider an out-of-court settlement.

The case was first filed by Candico at the Nagpur district court in 1998 under the provisions of the Trade and Merchandise Marks Act, 1958, after it received a letter from Perfetti to discontinue the use of Big Bubble Gum. However, Candico could not get an injunction to prevent Perfetti from manufacturing and distributing the product under contention. The case was recently heard at the Intellectual Appellate Board.