The Delhi High Court on April 5, 2021 dismissed two applications filed by Britannia Industries against ITC Ltd for alleged trademark infringement and passing off by,
Case 1: ITC’s ‘Sunfeast Farmlite 5-SeedDigestive’ biscuits of Britannia’s ‘NutriChoice Digestive’ biscuits
Case 2: ITC’s ‘Sunfeast Farmlite Veda Digestive’ biscuits of Britannia’s ‘NutriChoice 5 Grain Digestive’ biscuits.
Background
With respect to Case 1, the plaintiff, Britannia Industries registered a trademark for the packaging of ‘NutriChoice Digestive’ biscuits on September 11, 2020. The defendants, on the other hand, launched the ‘Sunfeast Farmlite 5-Seed Digestive’ biscuits product with a similar packaging on September 28, 2020.
Britannia Industries alleged trademark infringement by ITC and sought an interim injunction restraining the latter from manufacturing or selling the biscuits with the impugned packaging. After a perusal of the facts of the case, the primary issue framed by the Hon’ble Court was whether ITC’s labeling and packaging of ‘Sunfeast 5-Seed Digestive’ biscuits was deceptively similar to that of Britannia’s ‘NutriChoice Digestive’ biscuits, to the extent that such similarity would amount to trademark infringement.
The plaintiff alleged, inter alia, that the overall trade dress, get-up, color scheme and layout of the defendants’ packaging is confusingly and deceptively similar to that of the plaintiff. The defendants, on the other hand, highlighted several distinctive features of their packaging to bring out the dissimilarities between their products and the plaintiff’s products. In particular, the defendant argued that “…the etching of the brand name of the biscuits on the body of the biscuits was a common industry practice and that, in fact, this feature would serve to discredit the plaintiff’s allegation of deceptive similarity, as the brand name of the defendant company as well as of defendants’ biscuits are completely different from those of the plaintiff.”
Observations and Judgment
Dismissing the petitions, the Court held that the packaging of ITC’s ‘Sunfeast FarmLite Digestive’ biscuits was not deceptively similar to that of Britannia’s ‘NutriChoice Digestive’ biscuits since the distinguishing features of ITC’s marks were too many, to the extent that they negated the possibility of confusion/deception. Highlighting several dissimilarities between the rival products, the Court concluded that there is very minimal possibility of confusion between the respective sections of consumers.
The Court placed reliance on the visual dissimilarities of the rival packaging to arrive at this conclusion and noted that “If similarities can cause deception or confusion, dissimilarities, if sufficient, can also obviate any such possibility”. It added that “The perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities.” By further highlighting that the relevant section of consumers, i.e. digestive biscuit consumers herein would not likely get confused between ordinary, 5-seed, 5-grain and Ayurvedic biscuits, the Court proceeded to note that Sections 29(1) and 29(2) of the Trade Marks Act, 1999 should be interpreted keeping in mind that the points of dissimilarity between rival marks cannot be regarded irrelevant or ignored.
The Court vide the same order also refused to pass any interim order of injunction with respect to the box packaging of ‘Sunfeast Farmlite Veda Digestive’ biscuits (Case 2) on grounds similar to what were applied in Case 1.
This isn’t the first time these market giants have fought it out in the court. In 2016, ITC sued Britannia Industries on the grounds that the packaging of Britannia’s ‘NutriChoice Digestive Zero’ biscuits was a copy of ITC’s ‘Sunfeast Farmlite Digestive All Good’ biscuits. A Division Bench of the Delhi High Court refused to grant an interim injunction to ITC and set aside the order of the Learned Single Judge.
While Britannia Industries, in the instant case, can appeal against this order, it is relevant to note that this judgment adds to the growing precedents on trade dress infringement and passing off actions, due to its distinct reasoning. This is especially relevant in India on account of the lack of a specific legislation pertaining to trade dress.
Will this judgment stand the rigours of law? The efficacy of the judgment will be put to test if and when Britannia decides to appeal.
Update:
Britannia Industries appealed against the judgment on the grounds that impugned judgment was being publicized heavily and was therefore causing loss of its goodwill and reputation. The appeals were accordingly allowed.
Subsequently, during the pendency of the appeal, ITC Ltd modified their packaging of the ‘Sunfeast Farmlite 5-Seed Digestive’ and ‘Sunfeast Farmlite Veda Digestive’ biscuits to which Britannia Industries had no objection. Accordingly, vide the judgement dated 4th August the matter was considered amicably resolved between the parties and Britannia Industries withdrew all claims for rendition of accounts, damages and costs.
This article has been authored by Sandhya S.
