Britannia Industries (Britannia) that holds 30% of the organised biscuit market in India, is aggrieved by a relatively new competitor, ITC Ltd’s (ITC) use of digestive biscuit packaging sold under the brand name ‘Sunfeast Farmlite’.
The trade dress and packaging of two variants of digestive biscuits sold by ITC were disputed before the Delhi High Court. The product packaging of rival brands is appended below. The court noted that the dispute between ‘Nutri Choice Digestive’ and ‘Sunfeast Farmlite 5-Seed Digestive’ was on pillow packaging. In the case of ‘Nutri Choice 5 Grain Digestive’ and ‘Sunfeast Farmlite Veda Digestive’, the dispute was on box packaging.
Britannia brought a case of trademark infringement and of passing off action based on its registration of ‘Nutri Choice’ as a trademark and its packaging.Britannia argued that the overall appearance of ITC’s packing was deceptively similar to Britannia’s products. In the case of ‘Nutri Choice Digestive’ and ‘Sunfeast Farmlite 5-Seed Digestive’, it was argued that:
- Both packs use a red and yellow combination of colours, with yellow on the left and red on the right;
- Both packs use the words ‘digestive hi-fibre’, below the brand name;
- Both packs depict the picture of a biscuit on the right side of the package with a photograph of sheaves of wheat below the biscuits; and
- Both packs have the prominent word on the left side of the package (‘Nutri Choice’ in the case of Britannia and ‘5-Seed Digestive’ in the case of ITC) and are printed on a white background.
As biscuits are stocked together in shops, there is a clear aspect of ‘initial interest confusion’.
In reply, ITC noted that the rivals’ packaging are not similar considering (i) Britannia’s pack contained two colours – red and yellow – whereas, ITC’s pack contained red, yellow and saffron. It also stated that yellow was the predominant colour in Britannia’s pack, whereas, red was the predominant colour in ITC’s pack.
ITC stated that the brand name of ITC, ‘Sunfeast Farmlite Digestive’ is predominantly displayed on the biscuits, itself, and that etching the brand name on the body of the biscuits is a common industry practice. It would serve to discredit the allegation of deceptive similarity as rival brand names are entirely different.
ITC also argued that Britannia does not have registration for yellow and red colours. Moreover, that the use of the word ‘hi-fibre’ is a common industry practice. It emphasises nutritional value, manner of use of the word and representation on the rivals’ packaging are also different.
The High Court, after considering the pleadings, arguments ruled in favour of ITC with the following observations.
The test in the case of infringement or passing off is that of confusing or deceptive similarity. The court is not expected to ferret out points of dissimilarity between two marks, and the approach should be one of emphasising the similarities rather than the dissimilarities. That said, points of dissimilarity between rival marks cannot be ignored. The average human mind has not been particularly conditioned to observe only similarities and overlook dissimilarities. Thus, if there is stark dissimilarity in the prominent or essential features of the rival marks, as would impress the mind of a person of average intelligence and imperfect recollection, no finding of confusing or deceptive similarity can be arrived at.
The court noted different brands of the biscuit and the company manufacturing them are prominently displayed on the pack of Britannia and ITC. Thus, only if a person of average intelligence and imperfect recollection does not recollect either the brand or the company manufacturing the biscuit or the prominent features on the pack that he is likely to be confused, which is a far-fetched argument.
As the names of the two biscuits and their brands are different and prominently displayed in different colours on the packing, the allegation of copying of essential features and the possibility of confusion will not sustain. Moreover, sheaves of wheat are not unique either, as they are seen in other packs of digestive biscuits as well. Thus, prima facie, it cannot be said ITC has copied the essential features and thereby infringed or passed off their products as that of Britannia.
In the case of the ‘Farmlite Veda’ product, the court noted that the rival products are, undoubtedly, more proximate in appearance to each other. However, it has to be seen whether the similarity is to the extent that the pack of ITC would become confusingly similar to a customer of average intelligence and imperfect recollection to confuse the rival products.
Overall, distinguishing features in the instant case counterbalance the similarities and negate any possibility of confusion, much less deception.
Given the above, the court refused to grant an injunction in favour of Britannia and dismissed the application. The court’s following observation may, however not go down well in a fiercely competitive industry: “A conscious attempt at copying, however, by itself does not constitute either infringement or passing off. The matter has, in either case, to be examined from the point of view of the customer of average intelligence and imperfect recollection. Unless such a consumer is liable to get confused or deceived, howsoever, questionable the intentions of the defendants may be, no case of infringement or passing off can be said to exist”.
Ranjan Narula Managing partner, RNA, Technology and IP AttorneysE: firstname.lastname@example.org Mohandas KonnanathManaging associate, RNA, Technology and IP AttorneysE: email@example.com
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