Author- Preethika Vijaykumar
Facts of the case:
In the year 2020, Britannia Industries Limited, henceforth referred to as “the Plaintiff,” filed a claim against ITC Limited, henceforth referred to as “the Defendant,” for trademark infringement. Plaintiff alleged that Defendant had been manufacturing and selling biscuits under the name “Sunfeast Farmlite 5-Seed Digestive,” henceforth referred to as “the product” or “the biscuit,” which had a deceptively similar packaging to Plaintiff’s product, “Nutri Choice Digestive” biscuits.
Plaintiff claimed that Defendant had infringed on its registered trademark by using such deceptively similar packaging. Subsequently, Plaintiff filed an application for an interim injunction, seeking to restrain Defendant from producing and vending the biscuits in the impugned packaging.
The Hon’ble Delhi High Court, hereinafter referred to as “the Court,” served a summons for the application on 16.12.2020. Defendant submitted that they would halt the further release of their product in the market in the impugned pack but would not stop manufacturing.
Considering the foregoing, the Court determined that the aforementioned order dated 05.04.2021 would not impact the status of the packages already in circulation in the market. On 05.04.2021, the Court held that there was no visible sign of similarity between the two packages, as they differed in element. An ordinary person with average intelligence would not be misled by the purportedly similar packaging of the products.
Consequently, the Court rejected the Plaintiff’s application for an interim injunction, which prompted the filing of the current appeal.
Contention:
Plaintiff alleged that Defendant had copied their packaging details without any valid reasoning, resulting in a deceptively similar appearance and causing confusion amongst consumers. This, in turn, led to a degradation of sales of Plaintiff’s products in the market.
Plaintiff contended that since both brands were selling goods of the same class, i.e., “digestive biscuits,” and Plaintiff holds a registered trademark within the same class of goods, Defendant’s product packaging was deceptively similar to that of Plaintiff. Furthermore, Plaintiff contended that Defendant was engaged in passing off its product, namely “Sunfeast Farmlite 5-Seed Digestive” biscuits, as that of Plaintiff.
Plaintiff further contended that Defendant’s actions caused a decrease in the market value of Plaintiff’s product. Therefore, Plaintiff claimed that this infringed their registered trademark and, consequently, the Court issued an interim injunction against the production and sale of Defendant’s products in question.
Conversely, Defendant contended that the products in question had distinctively dissimilar features, such as differences in the use of colors, the display of brand name and product name, the design of the packaging, and the additional use of the term “Sunfeast Farmlite Digestive.” The imprint of the brand name on the body is a generally accepted industry practice, which excludes the product from the scope of deceptive similarity.
Thus, Defendant argued that their product’s package had certain specifications mentioned, which differentiated them clearly from Plaintiff’s products in question. As a result, the Court concluded that such similarity would not result in any confusion among the general public.
Proceedings and Judgement:
The Order passed by the Single Judge Bench of the Delhi High Court, prima facie, had overlooked the similarity in the idea of the product identity. The Court rejected the assertion that the products in question had strikingly similar packaging, design, and color scheme, as it did not find it essential for an ordinary person to be misled.
The Court noted the similarities and dissimilarities between the products, including the combination of colors, the use of the words “Digestive Hi-Fibre,” the use of a biscuit imprint, and the print of “Nutri Choice” on a white background. However, it also noted several points of dissimilarity, such as the difference in the usage of product names and the omission of “5 Seed” by Plaintiff, which added an additional feature to Defendant’s product.
Moreover, the Court observed that the use of the brand name in different fonts and styles was highly distinctive between the product of Plaintiff and Defendant, which distinguished the identity of Defendant’s product in question from that of Plaintiff’s product.
The Court set aside the previous judgment and declared that the same shall not be considered a precedent. Additionally, the parties resolved the matter amicably on the condition that Defendant shall not use the impugned product packaging.
The Court further observed that Defendant had modified the packaging of the product in question (“Sunfeast Farmlite 5-Seed Digestive” and “Sunfeast Farmlite Veda Digestive”) which was already available in the market, and Plaintiff had no objection to the modification. Upon these accounts, Plaintiff hereby releases and waives any and all claims for damages or further action against Defendant.
Therefore, the Court held that both parties have mutually consented to the dismissal of the current appeal in consideration of the amicable resolution of the dispute. The Court also observed that the question of law raised in this present appeal was left open and went on to dispose of the appeal along with the pending applications.
Observations:
Here are some observations on the trademark dispute between Britannica Industries and ITC Ltd over the use of the name “NutriChoice Digestive Biscuits”:
1. Importance of trademark registration: This case highlights the importance of registering trademarks to protect brand identity and prevent others from using similar names or logos that could create confusion in the market. Britannica Industries had registered their trademark for “NutriChoice Digestive Biscuits” with the Indian Trademark Registry, which gave them legal rights to the name and allowed them to take legal action against ITC for trademark infringement.
2. Trademark infringement risks: Companies need to be careful when using similar trademarks, as it can lead to confusion in the market and harm the reputation of established brands. In this case, the Delhi High Court ruled in favor of Britannica Industries, stating that ITC’s use of the name “NutriChoice Digestive Biscuits” was a deliberate attempt to mislead consumers and to benefit from the reputation of Britannica Industries’ product.
3. The importance of evidence: In this case, the Delhi High Court noted that ITC had not provided any evidence to show that the term “NutriChoice Digestive Biscuits” was a generic term used by the industry. It is important for companies to provide evidence to support their claims and to have a clear understanding of the legal implications of using similar trademarks.
4. Impact on the industry: This case serves as a warning to companies that attempt to benefit from the reputation of established brands by using similar trademarks. It highlights the risks associated with trademark infringement and the importance of protecting trademarks to maintain brand identity and reputation in the market.
Overall, this trademark dispute between Britannica Industries and ITC Ltd highlights the importance of trademark registration, the risks associated with trademark infringement, and the importance of providing evidence to support claims in legal proceedings. It also serves as a warning to companies to be careful when using similar trademarks which could create confusion in the market and harm the reputation of established brands.
Conclusion:
Based on the analysis of the legal issues and arguments presented by both parties, it can be concluded that Plaintiff was successful in establishing their claim of trademark infringement and passing off against Defendant. The Court granted an interim injunction on the production and sale of Defendant’s products and later declared that the parties had resolved the matter amicably. Furthermore, the Court noted that Defendant had modified the packaging of their products and Plaintiff had no objection to those modifications. As a result, the present appeal was disposed of in light of the amicable resolution of the dispute.
