The Delhi High Court has dismissed the plea filed by biscuit manufacturer Britannia Industries Limited seeking directions against ITC Limited claiming the latter has infringed its registered trademark and caused loss to its goodwill by selling biscuits in alleged similar packaging.
The plaintiff in the present case “Britannia Industries Limited” is the manufacturer & seller of “Nutri Choice Digestive” and “Nutri Choice 5 Grain Digestives”, whereas Defendant “ITC Limited” is also manufacturing and selling biscuits under the trade name of “Farmlite 5-Seed Digestive” and “Sunfeast Farmlite Veda Digestive”.
The plaintiffs in the present case have filed two applications against the defendant seeking an interim injunction for the alleged infringement of the plaintiff’s trademark and passing off.
The plaintiffs has alleged that defendant has been manufacturing and selling its biscuits “Farmlite 5-Seed Digestive”, in a packaging which is similar to the plaintiffs biscuits “Nutri Choice Digestive” which is a registered trademark.
The pillow pack, in which the plaintiff “Nutri Choice Digestive” biscuits are packed and sold, looks like this:
The packing, in which the defendants clear and sell their biscuits, looks like this:
Similarly, in another application, the plaintiff has alleged that the defendant has been manufacturing and selling the “Sunfeast Farmlite Veda Digestive”, which has packaging similar to its biscuits “Nutri Choice 5 Grain Digestives.”
A single-judge bench of the Delhi High Court of Justice C. Hari Shankar observed that though the defendants’ packs in the present case are more similar in appearance to the plaintiff’s packs, it was insufficient to render the pack of the defendants confusing or deceptively similar to that of the plaintiff.
The Court has noted in its order “when compared with the rival packs in CS (COMM) 553/2020, the packs in CS (COMM) 554/2020 are, undoubtedly, more proximate in appearance to each other.” The Court considered it appropriate to address the question whether their proximity is such as to result in the pack of the defendant s becoming confusingly similar to that of the plaintiff (in which case, prima facie, infringement would be made out)and whether a customer of average intelligence and imperfect recollection is likely to confuse the product of the defendants to be that of the plaintiff, on seeing the two packs of the defendants at different points of time (in which case the tort of passing off is made out).
The Court noted that the Confusion or deception is, however, not readily to be assumed. The man of average intelligence and imperfect recollection cannot be treated, for the purposes of the Trade Marks Act, as being easily confused or deceived. It is for this reason that the legislature has, consciously, used the word “deceptively similar” along with the word “identical”.
It added, “it is trite in law, that, while examining the aspect of deception or confusion, the Court has to identify the precise consumer base.”
It said, “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.”
“Digestive biscuit consumers constitute an entirely different category of consumers, from consumers of ordinary biscuits. Whether one applies the “likelihood to cause confusion” test in Section 29(2), or the “deception” test in Section 29(1), one has to examine the possibility of deception or confusion keeping this frank reality in mind,” the Court noted in its order.
The Court has observed that “it is not possible to arrive at a prima facie finding in favor of the plaintiff on the aspect of deceptive similarity, and, consequently, infringing or passing off”
Justice Shankar held, in my view, the Court would be falling into serious error if it were to assume that digestive biscuit consumers are ignorant of the difference between ordinary, 5-grain, 5-seed and Ayurvedic digestive biscuits, or likely to confuse one for the other, on the basis of the rival packs. The fact that the registration held by the plaintiffs is in respect of biscuits per se, as an omnibus class, is entirely irrelevant in this context, once, keeping the purveyors of such biscuits in mind, no possibility of deception or confusion is found to exist.
Britannia Limited in its suit had submitted that its trademark was registered on September 11, 2020 and they have been using the said trademark, on its digestive biscuits since 2014 and ITC does not have any registered trademark, in respect of the impugned pack.
Whereas, the ITC’s “Sunfeast”, “Sunfeast Farmlite” and “5-seed digestive” biscuits were launched, under the impugned pack on September 28, 2020. Prior to adopting the impugned packing, the company was marketing their “digestive” biscuits, in a different packaging.
On this ground it was further contended by Britannia that ITC deliberately changed their pack to deceptively resemble that of the Britannia’s Nutrichoice to encash on Britannia’s goodwill and reputation.
During the hearing, counsels Sudhir Chandra and Sandeep Sethi, learned Senior Counsel for Britannia, had submitted that the overall trade dress, color combinations, color scheme, arrangement of features, get-up and layout of the impugned pack of the defendants were deceptively similar to that of the Britannia.
It was further submitted that the ITC company had copied the essential elements of distinction in the plaintiff’s trademark without any valid reason and placed reliance on Section 28 of the Trademark Act, apart from Section 29. It was further submitted that the manner in which the defendants’ pack infringes the registered trademark pack of the plaintiff directly attracts Section 29(2)(b).
Whereas senior counsel Poovayya, for the ITC, argued, that there are any number of distinctive features on the pack of the defendants’ products which make the two packs so dissimilar as to obviate any possibility of confusion or deception.
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The Delhi High Court had on 16th December, 2020, had issued notice to the defendant/ITC and directed it not to release the impugned pack/trade dress in the market. The Court had ordered that they could continue to manufacture the same and the order would not impact those packages of the defendants which were already in the market.
Britiannia-v-ITC