HK Avenue, 19, Swastik Society
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : firstname.lastname@example.org
Web : www.hkindia.com
REPRESENTATIVE OFFICE - USA
2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857
E-102, First Floor,Lloyds Estate Sangam Nagar, Next to V.I.T. College, Wadala (E)
400 037. INDIA
Tel. : 91 22 24187744
2nd Floor, Shivani Complex, Kanta Stri Vikas Gruh Road
Rajkot - 360 002. INDIA
Tel: 91 281 2242 731
Guest House Road, Opp. Indane Gas Above Satnam Electronics
Morbi - 363 641
BRITANNIA FACES THE 'CRUNCH' FOR SIMILAR TRADE DRESS!
In the recent case of ITC Limited v. Britannia Industries Limited , a single judge of Delhi High Court granted an interim injunction to Britannia for using the deceptively similar packaging and trade dress already used by another rival company ITC Ltd.
The Plaintiff had launched a new product named "Sunfeast Farmlite Digestive- All Good" biscuit in February 2016 with the packaging of colour combination Yellow and Blue as depicted. The Defendant launched a similar product under the name "Nutri Choice Digestive Zero" biscuit with similar packaging in July, 2016. The parties had their own legal issues pertaining to this matter previously wherein Britannia filed a complaint before the Advertising Standards Council of India ("ASCI‟) against ITC after the launch of its of its "Sunfeast Farmlite Digestive - All Good' biscuit claiming that Britannia had been marketing and selling digestive biscuits under the mark "Nutri Choice‟ for the last several years. After failing attempt to the said complaint, Britannia, in July 2016, introduced "Nutri Choice Digestive Zero" which is nearly identical and/or deceptively similar to that of ITC's packaging.
The Defendant had offered to replace the blue colour with another shade of blue stating that the colour blue reflects the 'World Diabetes Day' and the Defendant had been using the colour blue for its other range of products as well. The proposal being unacceptable to the Plaintiff, the suit went to trial on September 2, 2016.
Whether there was a case of deliberate passing off action caused by the Defendant of the Plaintiff's goods?
Contentions of the Plaintiff:
The Ld. Counsel on behalf of the Plaintiffs put forward a strong case by asserting three unique and distinctive features of their packaging which are as below:-
- The brand name "Sunfeast" is written on the top-left hand side of the label on the yellow coloured portion with the trademark "Farmlite" underneath it, along with the mark "Digestive- All Good" situated below "Farmlite"
- The colour scheme used in the trade dress is Yellow and Blue. The left part of the packaging is in a yellow background and the right side of the packaging is in blue and both colours are separated by a curved line.
- The picture of the biscuits appears on the right front side of the label which is depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words "No Added Sugar/Maida" written on the biscuit in a bold white font. The words Sugar and Maida are separated by a white horizontal dividing line between the two words.
The Plaintiff averred that the Defendant was aware of the Plaintiff's packaging since February 2016 and chose not to enter the market till July 2016 with its competing product. It was further stated that the Defendant has copied the unique colour scheme and combination, and the method and placement of the various elements of the Plaintiff's trade dress making the products and trade channel identical attracting triple identity test creating confusion and deception in order to pass off their "Nutri Choice" Digestive biscuit products as another product of the Plaintiff itself.
Contentions of the Defendant:
The Ld. Counsel on behalf of the Defendant advanced arguments that the Defendant has been manufacturing and marketing the above range of "Nutri Choice" Digestive biscuits with the primary/predominant colour of the product packaging below yellow along with a secondary colour to indicate the variant since 2008.
The Ld. Counsel argued that the word "Britannia" itself appeared prominently against a red background in one corner of the impugned packaging. Secondly, the word "Nutri Choice‟ featured prominently and this was not present in ITC's packaging. Further, the shades of blue and yellow were different. Lastly, the entire get up was itself distinct and that there might be a similarity in the two packagings, when viewed as a whole there was no case made out for passing off.
Justice S. Murlidhar observed that the sales and turnover figures submitted by the Plaintiff in support of their claims is a significant factor whilst examining the reputation of the Plaintiff's product. The Court also observed that with respect to eatables like biscuits, the colour scheme of the packaging plays an important role when the consumer is making an initial choice and while enabling a discerning consumer to locate the particular brand of a manufacturer. The Court held that there was an evident deceptive similarity between the Defendant's and Plaintiff's products fulfilling three elements of passing off action in the present case. The Court granted an interim injunction and restrained the Defendant from using any variant of colour blue in packaging. But the Defendant can adopt any packaging which is distinctively different from the packaging that is currently used by the Plaintiff for the same product.
Contributed By : Ferzin Daboo (Advocate)
Designed By : Vikash Singh