The Delhi High Court, on Monday, 5th April, 2021 dealt with a trademark (TM) case of two huge brands: Britannia and ITC.
On 11th September 2020, a TM was registered in favour of Britannia Industries Ltd. in respect of various products such as biscuits, tea, coffee, baked products, pastry and confectionery, etc. This TM is employed on the packaging of the ‘Nutri-Choice digestive biscuits’.
Britannia was aggrieved by the fact that the respondents, ITC, is manufacturing and selling the ‘Sunfeast Farmlite 5-Seed Digestive’ biscuits, in deceptively similar packaging to that of the plaintiff’s biscuits. By adopting such confusingly similar packaging, Britannia’s TM was infringed by ITC.
It was pertinent to note that the defendants did not have any registered TM in respect of the impugned packaging. Sunfeast launched the impugned packaging for the digestive biscuits on 28th September 2020. Prior to that, a completely different packaging was being used, which was not in any matter similar to the current ones. Britannia submits that ITC deliberately changed its packaging to deceptively resemble theirs; to encash on the plaintiff’s goodwill and reputation.
Thus, Britannia sought interim injunction, restraining the defendants from manufacturing and selling the biscuits in the impugned packaging until the disposal of the present suit.
On 16th December 2020, the defendants submitted that they would not release the impugned package in the market, however would not stop manufacturing them. The Court clarified that the order would not impact those packages of the defendants which were already in the market. This order continued to be in force till date, being extended from time to time.
Before analysing the facts of the case, the court observed the legal position in cases of infringement and passing off through various precedents from HCs as well as the SC. It was seen that to assess cases of deceptive similarity, passing off and infringement, the class of consumers for the product was relevant along with nature of goods, visual and phonetic similarities etc. The situation is to be examined through the eyes of an average person. It also looked at statutory provisions in the Trademarks Act, 1999.
Proceedings in the Court:
- Britannia submitted that it was claiming infringement or passing off on the overall appearance of the defendants’ pack which is confusing and deceptively similar. It is in respect of this that Britannia has been granted registration by the Trademark Registry.
- Next, the court looked at Deceptive similarity. It stated, “Confusing or deceptive similarity is the sine qua non for any action, alleging infringement or passing off, to succeed. In its absence, other aspects cease to matter.”
- The plaintiff’s counsel reiterated that the overall packaging of ITC was similar to theirs and highlighted detailed similarities such as usage and positioning of colours, images, words, company name etc. used on the package. The defendants had copied the essential elements of the plaintiff’s TM. Britannia had registered the TM in respect of all biscuits and thus covers all categories of biscuits. Thus it would not be permissible for anyone to use a mark deceptively similar to theirs on any kind of biscuits. Further, the product is always stocked in stores, thus making a clear aspect of initial interest confusion for buyers.
- On the other hand, the counsel for the defendant, ITC submitted that there were many factors that make the products dissimilar and obviate confusion, and highlighted differences in elements. Further, etching of the brand name was a common industry practice and thus discredits deception.
Decision of the Court:
The Hon’ble Judge, C. Hari Shankar, looked at the overall packaging as well as the individual elements claimed by the parties. On initial examination, it could be seen that the packages were not as similar to result in deception or confusion. Even checking individual elements it could be seen that while there were certain points of similarity, they were not such that possibility of confusion or deception would arise.
The brand names, shapes and colours of the products were prominently displayed on the packaging which made it incredibly easy to tell apart. The court considered the case of Parle products, in which the SC dealt with the same situation.
“The distinguishing features, in the present case, are, on the other hand, just too many. They more than counterbalance the similarities, and, prima facie, negate any possibility of confusion, much less deception.”
The application was therefore dismissed.
Story by Sai Kulkarni – Intern