On September 02, 2016 ITC Limited (hereinafter referred to as the ITC) filed a suit to the single Judge of the Delhi High Court against Britannia Industries Limited (hereinafter referred to as the Britannia) to permanently injunct the latter from violating the packaging/trade dress rights of the ITC Limited products. The Single Judge granted interim injunction against Britannia for “deceptively similar” packaging. Aggrieved by the Order of the Single Judge the ITC appealed to the Division Bench of the Delhi High Court for setting aside the order of the Single Judge.
Brief facts and background of the case
ITC Limited had launched a new product called “Sunfeast Farmlite Digestive – All Good” biscuit in February 2016. The packaging consisted of a combination of the colors yellow and blue. . Thereafter Britannia launched a similar product under the name “Nutri Choice Digestive Zero” biscuit a few months later in July 2016. The packaging of the aforesaid product was also done in yellow and blue. The parties to this suit have previously been entangled in legal wrangles too. Britannia had filed a complaint against the ITC Limited before the Advertising Standards Council of India (ASCI).
In the present case, Britannia had offered to replace the blue color in their packaging by another shade of blue, and the same was deemed unacceptable by ITC Limited. Britannia stated that the color blue is an integral part of their packaging, as it supposedly reflects the theme of “World Diabetes Day”. As there was no consensus between the parties regarding the issues at hand, the suit went to trial on September 2, 2016.
ITC’s Submissions before the Single Judge Bench
The ITC Limited asserted three unique and distinctive features of their packaging. Details of the same are as under:
The brand name “Sunfeast” is written on the top-left hand side of the label on the yellow colored portion with the trade mark “Farmlite” underneath it, alongwith the mark “Digestive - All Good” situated below “Farmlite”.
The color scheme used in the trade dress is Yellow and Blue. The left part of the packaging is in a yellow background and the right side of the packaging is in blue and both colors are separated by a curved line.
The picture of the biscuits appear on the right front side of the label which is depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words "No Added Sugar/Maida" written on the biscuit in a bold white font. The words Sugar and Maida are separated by a white horizontal dividing line between the two words.
The ITC averred that Britannia has copied various elements of their trade dress, including the color combination. They also submitted that the trade channels were identical and in furtherance to that also submitted sales and revenue as well as advertising figures to substantiate their claims.
Britannia’s Submissions before the Single Judge Bench
Britannia claimed that they held 66% of the market share, whereas ITC had a meagre 1.8%. They also averred that the predominant color of the packaging of their product is yellow, and that blue is merely a secondary color used to indicate a connection to diabetes.
Britannia stated that while there might be a similarity in the packaging of the two, when viewed as a whole there was no case made out for passing off. To that end, the Britannia distinguished their packaging as follows:
The word “Britannia” itself appeared prominently against a red background in one corner of the impugned packaging.
The word “Nutri Choice” is featured prominently in their packaging, and the same is not present in the ITC’s packaging.
That the shades of blue and yellow used in the impugned packaging are different from that of ITC’s.
The Britannia averred that a distinction has to be drawn between an action for infringement, and an action for passing off.
They claimed that the three essentials of passing off (establishing goodwill, demonstrating misrepresentation by Britannia to public, and establishing the loss suffered) were not demonstrated by ITC. They further averred that color per se is not an element of distinctiveness for identifying the source of the products. It was also averred that the ITC had failed to establish distinctiveness and secondary meaning with respect of their packaging.
The difference between an action for infringement, and that of passing off.
The Hon’ble Court referred to the landmark judgement of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories to elucidate on this issue – the difference being that the use by Britannia of the trade mark of ITC is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.
The elements of Passing Off.
With regard to this issue, the Court referred to the landmark judgment of the House of Lords in
Reckitt & Colman Products Limited. v. Borden Inc, wherein the elements of passing off were definitively established as -
Decision of the Single Judge
The Court observed that the sales and turnover figures submitted by ITC in support of their claims is a significant factor whilst examining the reputation of ITC’s product.