Britannia Industries Ltd Vs ITC: No Case Of Trademark Infringement Can Be Made Unless The Consumers Get Confused Or Deceived

DATE: 5th April, 2021

JUDGES: Justice C.Hari Shankar

PARTIES

• Britannia Industries Ltd (PLAINTIFF)
• ITC Ltd. & Ors. (DEFENDENT)

SUBJECT: The following judgement given by the Delhi High Court deals with the issue trademark infringement. The question before the court was whether there is a deceptive extent of similarity between the marks irrespective of their individual dissimilar features.

AN OVERVIEW

1. In the present case, the plaintiff company, Britannia Industries Ltd’s grievance was that the defendant company’s “Sunfeast Farmlite 5-Seed Digestive” biscuit’s packaging was deceptively similar to plaintiff’s “Nutri Choice Digestive” biscuits. The same is alleged to be a trademark infringement which was registered by the plaintiff. Britannia Industries sought injunction for the infringement and a restraint on the ITC for manufacturing their biscuits in the concerned packaging.

2. Britannia had its trademark registered on 11th September 2020 and on the other hand ITC does not have any trademark registered relating to the concerned packaging.

3. The plaintiff contended that before the impugned packaging was adopted, the packaging used by the defendant for their digestive biscuits was not infringing the plaintiff’s trademark. The change in packaging was alleged to be deliberate attempt by the defendant to earn profit over plaintiff’s goodwill.

4. The plaintiff further submitted that the defendant have not registered for the combination of red and yellow colours. As pr section 2(m) of the trademarks act, colour combinations are also recognised as marks and can be individually registered. Thus, the packaging of defendant is confusingly and deceptively similar to plaintiff’s registered trademark.

5. The similarities highlighted by the plaintiff are as follows:-

(i) use of the colour scheme of red and yellow, with yellow on the left side of the pack and red on the right,

(ii) depiction of the image of the biscuit on the right side,

(iii) embossing of the brand name of the company and of the biscuit on the body of the biscuit in similar font and style,

(iv) use of the word “Hi-Fibre”, below the name of the biscuit,

(v) depiction of the words “NUTRI CHOICE” in the case of the plaintiff’s pack, and of the words “5-SEED DIGESTIVE” in the defendants’ pack, on a white background,

(vi) depiction of two sheaves of wheat below the picture of the biscuit on the right side of the pack along with scattered grains of wheat,

(vii) an orange shading at the intersection of the yellow and the red colour on the pack, and

(viii) depiction of the word “digestive” in red lettering on the pack

6. On the other hand the defendant contended that both the packaging have various distinctive features making them different and does not create any deceptive similarities. In the same context, following are the dissimilarities highlighted by the defendant-:

(i) the plaintiff’s pack contained two colours, i.e. red and yellow, whereas the defendants’ pack contained red, yellow and saffron,

(ii) yellow is the predominant colour in the plaintiff’s pack whereas red is the predominant colour in the defendants’ pack,

(iii) the plaintiff’s pack predominantly displays the brand name of the plaintiff pack “NUTRI CHOICE” in large green letters, whereas the defendants’ brand name is “FARMLITE” printed in brown letters on the defendants’ pack,

(iv) the defendants’ pack contains a vertical curved band towards the centre of the pack, in which the seeds contained in the defendants’ biscuits are reflected from top to bottom under the head “Power Seeds”, with a picture of each seed, indicating, from top to bottom, flak seeds, chia seeds, watermelon seeds, sunflower seeds and pumpkin seeds and

(v) the brand name of the defendants’, “SUNFEAST FARMLITE DIGESTIVE” is predominantly displayed on the biscuits, in the photograph on the impugned package.

7. The defendant further submitted that the name of brand being written on the body of the biscuit discredits the plaintiff’s allegation of deceptive similarity due to the fact that names of both the companies are entirely different and causes no confusion.

8. The defendant also contended that use of terms Hi Fibre and depicting wheat on the packaging is a common industrial practice representing the nutritional value of the product. Also, the colour and lettering of the words hi fibre id different in both the packaging.

IMPORTANT PROVISIONS

TRADEMARKS ACT, 1999

• Section 29-Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he— (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising— (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
• Section 2(m) - “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

ISSUES: The main issues before the court is-

• Whether the packaging of the defendant company has deceptive extent of similarity or not?
• Whether there has been infringement of registered trademark on the side of defendant?

ANALYSIS OF THE JUDGMENT

• The court in the present noted that the question that is to be looked upon is whether a person of average intelligence and imperfect recollection can be deceived by the defendant’s packaging to the extent that he considers it to be a different brand’s product.
• The court referred to section 29(1) which uses the word “deceptive” and 29(2) uses “cause confusion”. The court observed that these two terms are a state of mind and stated “Deception and confusion are both states of mind, of which no physically tangible evidence can ever be found. If similarities can cause deception or confusion, dissimilarities, if sufficient, can also obviate any such possibility”.
• The learned judge expressly stated- “Having examined the impugned pack vis-a-vis the pack of the plaintiff, I am unable to convince myself that the pack of the defendant is so similar to that of the plaintiff, as is likely to result in deception or confusion”. The packaging of the both the products are presented below for better analysis of the statement given by the bench.

The picture in left is of the plaintiff’s product and that on right is defendant’s product.

• The court found the dissimilarities to be so stark that they outweigh the similarities.
• As per the court’s observation- “the most important assessments that the court is required to make is as to the features, of the rival marks, which are most prominent. If there is stark dissimilarity in the prominent, or essential, features of the rival marks, as would impress on the mind of the person of average intelligence and imperfect recollection, no finding of confusing or deceptive similarity can be arrived at”. Thus, the court rejected the application.
• On the similar grounds, the court rejected the application concerning the box packaging. The court noted that “A prospective customer may come across the product to be purchased through one of three modes. He may either purchase it online, or pick it from the shelf, or be handed it by the shop assistant. Online, the two products are obviously totally different, and there is virtually no likelihood that the customer would confuse the products”.
• The court agreed to the point that the impugned box packaging of veda biscuit may be designed with the intent to copy but the matter has to be examined from the point of view of an average customer.
• The court stated “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”.
• Thus the court dismissed both the applications filed by the petitioner.

CONCLUSION

• Trademark law has become a very important field of law given to the increased competition and importance of branding between the companies. The purpose for which it was introduced was to protect the use of certain symbols or marks that are associated with the identity of a company.
• This is done in order to distinguish the products and services of a brand from the other and in case any other firm tries to encash themselves under the goodwill of other, trademark law protects the rights of the concerned party.
• Trademark becomes more important because the general public associates the product with a brand by just looking at its logo and becomes a regular user of that particular brand.
• Thus, all comes to one point; whether the consumer is able to differentiate between the two brands by looking at its packaging. The court in this judgment has very thoroughly highlighted this point. And it is clear from the pictures that both the products do not create any confusion and are not deceptively similar. Therefore, the court has decided the case in a very prudent manner.

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