In a trade dress fight, the differences matter as much as the similarities. That is the lesson of the Delhi High Court’s refusal to injunct ITC over its Sunfeast Farmlite digestive biscuits, in a dispute with Britannia’s NutriChoice range.
The dispute
On 5 April 2021 the Delhi High Court dismissed two applications by Britannia Industries against ITC Ltd alleging trademark infringement and passing off over biscuit packaging:
- NutriChoice Digestive vs. Sunfeast Farmlite 5-Seed Digestive, and
- NutriChoice 5 Grain Digestive vs. Sunfeast Farmlite Veda Digestive.
Britannia had registered trade dress for its NutriChoice Digestive packaging on 11 September 2020; ITC launched Sunfeast Farmlite 5-Seed Digestive with, Britannia said, similar packaging on 28 September 2020.
What the court held
The central question was whether ITC’s labelling and packaging were deceptively similar so as to amount to infringement. The court said no, on reasoning worth remembering:
- Dissimilarities can defeat confusion. “Dissimilarities, if sufficient, can also obviate any such possibility” of confusion — the differences are not to be ignored.
- The average-consumer test. The benchmark is a person of average intelligence and imperfect recollection — “not… an idiot.” Consumers are given some credit.
- The court considered Sections 29(1) and 29(2) of the Trade Marks Act, 1999, and concluded the marks and get-up were, on balance, distinguishable.
An injunction was refused in both cases.
The backstory — and the ending
This was not the first round: in 2016, the roles were reversed, with ITC suing Britannia over NutriChoice Digestive Zero packaging said to copy ITC’s Sunfeast Farmlite Digestive All Good — and a Division Bench declined ITC’s injunction then too.
After the 2021 ruling, Britannia appealed, citing reputational harm from the judgment’s publicity. During the appeal, ITC modified both packagings, and the matter was recorded as amicably resolved, with Britannia withdrawing its claims for accounts, damages and costs.
The takeaways
- Trade dress is judged as a whole. Shared descriptive elements (“digestive,” a colour family) do not by themselves prove deceptive similarity; the overall get-up and the distinctive elements decide it.
- The consumer is not an idiot. Courts credit average buyers with imperfect but real recollection, so modest differences can be enough.
- Litigation can still “work.” Even without an injunction, the pressure of proceedings led ITC to change its packs — sometimes the commercial outcome differs from the legal one.
Frequently asked questions
What does “deceptively similar” mean in trademark law? Marks or get-up so close that an average consumer with imperfect recollection is likely to be confused. Sufficient dissimilarities can negate that likelihood.
Why did Britannia not get an injunction? The court found ITC’s packaging distinguishable overall, applying the average-consumer test and giving weight to the dissimilarities.
Who is the “average consumer” in India? A person of average intelligence and imperfect recollection — not a careless “idiot,” and not a hyper-attentive expert.
How did the case end? On appeal ITC modified its packaging and the parties settled amicably, with Britannia withdrawing its money claims.
Legislation referred to
- The Trade Marks Act, 1999