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Identical Packaging Infringement India-Future Group restrained

November 23, 2020

By Lucy Rana and Bijit Das

Recently, Parle Products Pvt. Ltd. filed a civil suit against Future Group Ltd. alleging identical packaging infringement of Plaintiffs copyright combined with a cause of action for passing off, wherein it was found that the latter’s products had identical/deceptively similar in packaging to that of Parle’s products.

In the present case, Bombay High Court restrained, Future Consumer Ltd. (hereinafter referred to as ‘the Defendant’) from infringing Parle’s trademark in terms of the packaging of its products vide passing an ad-interim injunction order.

The Court held that “There is no doubt that the rival labels are being used for identical products under nearly identical packaging and trade dresses. The similarity in the rival packaging/labels cannot be a matter of coincidence.”

Brief Facts

  • Parle Products Pvt. Ltd. (herein referred to as the ‘Plaintiff’) is the most chosen Fast-Moving Consumer Goods (FMCG) brand since 2010. Plaintiff manufactures and sells a range of biscuits however not limited to confectioneries, cakes, wafers, etc.
  • In the years 1939, 1971, and 1996 the Plaintiff began manufacturing its popular biscuits – “MONACO”, “KRACKJACK” and “HIDE&SEEK” respectively.
  • Ever since, To secure its statutory rights in the “MONACO”, “KRACKJACK” and “HIDE & SEEK” trademark the Plaintiff had applied for and secured trademark registration in respect of the same under the Trade Marks Act, 1999.
  • In the months of July 2013, July 2014, and May 2017, the Plaintiff redesigned and created latest packaging for “MONACO”, “KRACKJACK” and “HIDE&SEEK”, respectively.
  • Further, it was disclosed that the Plaintiff’s packaging was created/authored by Mr. Mayank Shah an employee of Plaintiff during his course of employment. Therefore, Plaintiff is the owner of the copyright in the packaging.
  • In and around the second week of September 2020, Plaintiff came across the Defendants, biscuits bearing the mark “CRACKO”, “KRACKER KING” and “PEEK-A-BOO” having trade dresses/packaging/labels which were identical with and/or deceptively similar to and/or substantial reproduction of Plaintiff’s Packaging.

Issues Involved

After having found Defendant’s impugned products, Plaintiff produced photographs of Defendant’s impugned products “CRACKO”, “KRACKER KING”, & “PEEK-A-BOO” which were identical/deceptively similar to Plaintiff’s products “MONACO”, “KRACKJACK”, and “HIDE AND SEEK” with a cash memo of sale of the impugned products in Big Bazaar outlet in Ville Parle, Mumbai.

The aforementioned findings resulted in the formation of the following issues before the Bombay High Court:

  1. Whether the Plaintiffs are the owners of Copyright in Plaintiff’s packaging of their products “MONACO”, “KRACKJACK” and “HIDE & SEEK”?
  2. Whether the Defendants have blatantly copied the Plaintiff’s packaging and label concerning their aforementioned products?

Plaintiff’s Contentions

  • It was submitted that according to the Nielsen Report for the year 2010 Plaintiff’s brand PARLE-G was certified as the world’s largest selling biscuit brand.
  • It is stated that since the beginning, Plaintiff has been openly, continuously, and extensively using Plaintiffs’ Packaging, upon and in respect of their goods in India.
  • It is also stated that Plaintiff has taken efforts to popularize their products bearing its Packaging and have been expending substantial sums of money and efforts towards popularizing and promoting sales of the relevant goods in India.
  • It was submitted that its Packaging includes the features thereof that have become distinctive of its goods and connote and denote to the members of the general public and trade the goods of Plaintiff alone and no one else.
  • It was argued that the Defendants have intentionally stocked their impugned products on the shelves alongside Plaintiffs’ products
  • It was contended that the Defendants had copied every element of Plaintiffs’ Packaging including the layout, color combination, placement, and all distinctive elements and features of Plaintiffs’ Packaging to the last millimeter.
  • He further submitted that Defendant’s usage of Plaintiff’s trade dresses, labels, and packaging amounted to an infringement of Plaintiff’s copyrights and passing off.

Comparison between the two goods are reproduced below:

Identical Packaging Infringement- Similarity in rival packaging cannot be coincidence

  • It was noted by the Hon’ble Bombay High Court (hereinafter referred to as ‘the Court’) that a comparison of the rival products hardly leaves any doubt about how Defendants have blatantly copied Plaintiffs’ Packaging/labels. There is no doubt that the rival labels are being used for identical products under nearly identical packaging and trade dresses. The labels/artworks/packaging/trade dresses of Defendants’ “CrackO”, “Kracker King” and “Peek-a-Boo” products are a reproduction of Plaintiffs’ Packaging used in respect of their “MONACO”, “KRACKJACK” and “HIDE & SEEK” products and/or reproductions of substantial parts thereof. Defendants must have had Plaintiffs’ products before them while designing the impugned packaging. The similarity in the rival packaging/labels cannot be a matter of coincidence.
  • The Court held that there were prima facie evidences that the Plaintiffs were the original owners of copyrights on the packaging of their products through which their brand Parle has gained substantial value in terms of reputation and goodwill.
  • With regards to the findings, Bombay High Court passed an ad-interim injunction order restraining the Defendants from reproducing, manufacturing, selling its products which are identical or deceptively similar to that of Plaintiff’s products’ packaging, labelling, trade dress, layout or color scheme to pass off their impugned products as the Plaintiff’s products.

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