Nutri Choice accusation for trade dress infringment against Britannia
In this case, ITC Limited (hereinafter referred to as the Plaintiff) filed a suit against Britannia Industries Ltd (hereinafter referred to as the Defendant) to permanently injunct the latter from violating the packaging/trade dress rights of the Plaintiff’s products.
Brief facts and background of the case
The Plaintiff had launched a new product called “Sunfeast Farmlite Digestive – All Good” biscuit in February 2016. The packaging consisted a combination of the colors yellow and blue.. The launched a similar product under the name “Nutri Choice Digestive Zero” biscuit a few months later (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. The Defendant had filed a complaint against the Plaintiff before the Advertising Standards Council of India (ASCI).
In the present case, the Defendant had offered to replace the blue color in their packaging by another shade of blue, and the same was deemed unacceptable by the Plaintiff. The Defendant stated that the color blue is an integral part of their packaging, as it supposedly reflects the “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.
The Plaintiff 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 Plaintiff averred that the Defendant 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.
The Defendant claimed that they held 66% of the market share, whereas the plaintiff 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.
The Defendant stated that while there might be a similarity in the two packagings, when viewed as a whole there was no case made out for passing off. To that end, the defendant 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 Plaintiff’s packaging.
- That the shades of blue and yellow used in the impugned packaging are different from that of the Plaintiff’s
The Defendant 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 Defendant to public, and establishing the loss suffered) were not demonstrated by the Plaintiff. 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 Plaintiff 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 the Defendant of the trade mark of the Plaintiff 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 Ltd. v. Borden Inc, wherein the elements of passing off were definitively established as-
- Establishing goodwill,
- Demonstrating misrepresentation by respondent to public
- And establishing the loss suffered
The Court’s Decision
The Court observed that the sales and turnover figures submitted by the Plaintiff in support of their claims is a significant factor whilst examining the reputation of the Plaintiff’s product.
The Court also opined that secondary meaning or distinctiveness can be acquired in a short span of time. Even more so for eatables. They also observed that with respect to eatables like biscuits, the color scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.
It was held that the Defendant’s packaging was deceptively similar to that of the Plaintiff’s product, and that the three elements of passing off are fulfilled in the present case.
As per the Court’s reasoning, the balance of convenience is in favor of the Plaintiff, and that granting an interim injunction would cause far less damage to the Defendant as their product has been in the market for only two months.
The Court thereby granted an interim injunction, and restrained the Defendant from using any variant of color blue in the packaging. But they allowed the Defendant to use any other distinctive color instead or to use the same packaging as used in the international markets for the same product.