Rivals see red on biscuit packaging

By Manisha Singh and Dheeraj Kapoor, LexOrbis
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Over the years, competition between the Indian biscuit giants Britannia and ITC has seen many a battle arising from disputes over trademark infringement and passing off. In 2017, the Delhi High Court allowed an appeal by Britannia against a judgment in ITC’s favour in which Britannia was restrained from using blue on its product packaging in combination with yellow, and from passing off ITC’s alleged rights in its packaging label. The high court held that as ITC had not established exclusivity and distinguishable goodwill in the particular colour combination, it had not made out a case of passing off. However, this was not the end of the trademark saga between the two cookie monsters and they soon returned to the courtroom.

Manisha-Singh,-Partner,-LexOrbis
Manisha Singh
Partner
LexOrbis

In April 2021, in a fresh case, the Delhi High Court decided in favour of ITC and refused to grant interim relief to Britannia. It held that there was no case of infringement or passing off in ITC’s biscuit packaging. Britannia had alleged infringement of its registered label by the use of ITC’s packaging label and passing off.

Britannia had relied on its use since 2014 of the registered label mark Nutri Choice Digestive using yellow and red colours. ITC owned no registered mark in respect of the label and packaging for Sunfeast Farmlite 5-Seed Digestive biscuits, a brand that launched in September 2020. Britannia (plaintiff) argued that as the earlier labels used by ITC (defendant) were not infringing in nature, it had deliberately changed its packaging to resemble in a deceptive way that of the plaintiff in order to make illegal profits. The plaintiff alleged similarities such as the colour combination of yellow and red in the defendant’s label, the use of the biscuit’s image with etched lettering, the arrangement of essential features, and the get-up and layout to support its case of infringement and passing off.

Dheeraj Kapoor, Managing associate, LexOrbis
Dheeraj Kapoor
Managing associate
LexOrbis

The defendant argued that there were many distinctive features on its product label that made the two packs so dissimilar as to obviate any possibility of confusion or deception. The defendant asserted that while the plaintiff’s label contained two colours, yellow and red, its label displayed red, yellow and saffron. Yellow was the predominant colour in the plaintiff’s label whereas the predominant colour in the defendant’s label was red. The plaintiff’s label displayed the words Nutri Choice in large green letters whereas the defendant’s label contained the brand name Farmlite in brown. The brand name Sunfeast Farmlite Digestive was prominently displayed on the defendant’s label. The defendant argued that its label contained a distinguishing vertical curved band at the centre in which the five seeds in the defendant’s biscuits were shown under the heading Power Seeds. The defendant pleaded that the etching of the brand name on the biscuits and the words Hi Fibre were common in the industry, thus vitiating the plaintiff’s allegation of deceptive similarity.

The court held that the points of dissimilarity between the rival marks could not be ignored. The perception in cases of infringement and of passing off should be that of a person of average intelligence and imperfect recollection. The most important distinction between the two labels was the brand name, which would obviate any confusion. Considering the labels in their entirety, the court held that the dissimilarities outweighed the similarities. The presence of the expression 5-Seed on the defendant’s label and its absence on the plaintiff’s label gave the defendant’s product a unique identity thereby precluding the possibility of confusion or deception. Even in the case of Parle Products (P) Ltd v JP & Co Mysore, on which the plaintiff had relied, the Supreme Court underscored the need for similar features to be present, beyond the mere similarity of pack size and colour scheme.

The high court held that the defendant’s label was not confusingly similar to that of the plaintiff and did not bear a deceptive similarity. There was neither infringement nor passing off. Britannia may have succeeded if it had registered just the colour combination of yellow and red for biscuits, which it did not. Seeking separate statutory protection for important individual aspects of an overall brand may provide better protection to brand owners.

Manisha Singh is a partner and Dheeraj Kapoor is a managing associate at LexOrbis

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