Recently, a Single Judge Bench of the Delhi High Court comprising of Mr Justice C. Hari Shankar, dismissed a plea filed by biscuit manufacturer Britannia Industries Limited seeking directions against ITC Limited claiming that the defendants i.e. M/s ITC Ltd. and ors. are manufacturing and selling “Sunfeast Farmlite 5-Seed Digestive” biscuits in adopting a confusingly similar packing which is, according to the plaintiff, deceptively similar to the packing in which the plaintiff sells its “Nutri Choice Digestive” biscuits.
Britannia brought an action for infringement and passing off and had sought an interim injunction, restraining the defendants from manufacturing or selling biscuits in the impugned packing, pending disposal of the present suit. Their products in question are depicted as below:
It is pertinent to note here that the plaintiff’s trade mark was registered on 11-9-2020, and has been in use since the year 2014 for its digestive biscuits. However, the plaintiff does not have any registration for the colour combinations “red and yellow” as part of the packaging. While on the other hand, the defendants do not have any registered trade mark, in respect of the impugned pack. The defendants’ “SUNFEAST”, “SUNFEAST FARMLITE” and “5-SEED DIGESTIVE” biscuits were launched, under the impugned pack on 28-9-2020.
On behalf of the plaintiff
1. The overall trade dress, colour combinations, colour scheme, arrangement of features, get-up and layout of the impugned pack of the defendants were deceptively similar to that of the plaintiff. They have highlighted the following similarities:
(i) use of the colour scheme of red and yellow, with yellow on the left side of the pack and red on the right; (ii) depiction of the image of the biscuit on the right side; (iii) embossing of the brand name of the company and of the biscuit on the body of the biscuit in similar font and style; (iv) use of the word “Hi-Fibre”, below the name of the biscuit; (v) depiction of the words “NUTRI CHOICE” in the case of the plaintiff’s pack, and of the words “5-SEED DIGESTIVE” in the defendants’ pack, on a white background; (vi) depiction of two sheaves of wheat below the picture of the biscuit on the right side of the pack along with scattered grains of wheat; (vii) an orange shading at the intersection of the yellow and the red colour on the pack; and (viii) depiction of the word “digestive” in red lettering on the pack.
2. Defendants had copied the essential elements of distinction in the plaintiff’s trade mark without any valid reason.
3. Biscuits are normally stocked together in stores — so much so that there is also a clear aspect of “initial interest confusion” which should be taken into consideration.
4. Plaintiff’s and the defendants’ biscuits are both digestive biscuits, the constituents or ingredients of the biscuits are immaterial.
5. Considerable reliance was placed by the plaintiff on the following passage from Parle Products (P) Ltd. v. J.P. & Co.:
- It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other.
III. On behalf of the defendant
1. There are any number of distinctive features on the pack of the defendants’ products which make the two packs so dissimilar as to obviate any possibility of confusion or deception — (i) the plaintiff’s pack contained two colours i.e. red and yellow, whereas the defendants’ pack contained red, yellow and saffron; (ii) yellow is the predominant colour in the plaintiff’s pack whereas red is the predominant colour in the defendants’ pack; (iii) the plaintiff’s pack predominantly displays the brand name of the plaintiff’s pack “NUTRI CHOICE” in large green letters, whereas the defendants’ brand name is “FARMLITE” printed in brown letters on the defendants’ pack; (iv) the defendants’ pack contains a vertical curved band towards the centre of the pack, in which the seeds contained in the defendants’ biscuits are reflected from top to bottom under the head “Power Seeds”, with a picture of each seed, indicating, from top to bottom, flax seeds, chia seeds, watermelon seeds, sunflower seeds and pumpkin seeds; and (v) the brand name of the defendants’, “SUNFEAST FARMLITE DIGESTIVE” is predominantly displayed on the impugned package of the biscuits.
2. Etching of the brand name on the body of the biscuits was a common industry practice and that, in fact, this feature would serve to discredit the plaintiff’s allegation of deceptive similarity, as the brand name of the defendant company as well as of defendants’ biscuits are completely different from those of the plaintiff and are quite well known in the Indian market — as also agreed by the Judge.
3. Representing wheat and grains on the pack of digestive biscuits, is also a matter of common practice.
4. Use of the word “Hi Fibre” was, again, a matter of common industry practice the lettering and the colour of the word “Hi Fibre” as contained on the impugned pack of the defendants, is different from that of the plaintiff.
5. A person who is prone to having digestive biscuits and who has bought “NUTRI CHOICE”, would normally recollect the brand name of the biscuit which he has bought. It is unlikely, therefore, that he would confuse another package, which does not contain the brand name “NUTRI CHOICE”, as being the biscuit which he had consumed on an earlier occasion — putting emphasis on the class of consumers that would buy the product.
6. There is no other manufacturer of biscuits, digestive or otherwise, making biscuits containing the 5 seeds which are to be found in the defendants’ biscuits.
IV. Settled law
1. Infringement is a statutory tort, whereas passing off is a tort relatable to common law.
2. The circumstances in which infringement takes place are to be found in sub-sections (1) to (4) of Section 29. Infringement occurs, under these provisions:
where the defendant’s mark is identical with, or deceptively similar to, the plaintiff’s trade mark and is used in relation to goods or services in respect of which the trade mark is registered;
where the defendant’s trade mark is identical to the plaintiff’s trade mark, and the goods or services of the defendant are so similar to those of the plaintiff, as is likely to cause confusion, or association with the registered trade mark [Section 29(2)(a)];
where the impugned trade mark is similar to the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, or so similar as is likely to cause confusion, or have an association with the plaintiff’s trade mark [Section 29(2)(b)];
where the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, as is likely to cause confusion or have an association with the plaintiff’s trade mark [Section 29(2)(c)] [in which case Section 29(3) creates a presumptive fiction of likelihood to cause confusion on the part of the public]; and
where the defendant’s mark, though identical with or similar to the registered trade mark of the plaintiff, is used in relation to goods or services not similar to those of the plaintiff, if the registered trade mark has a reputation in India and use of the defendant’s mark, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the plaintiff’s registered trade mark.
3. “Confusion” refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question is one of first impression.
4. In assessing deceptive similarity, the class of the customer who would purchase the product is relevant. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.
5. It has to be examined whether the totality of the trade mark of the defendant is likely to cause deception/confusion or mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.
6. The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.
IV. Key observations of the Court
1. The approach should be one of emphasising the similarities, rather than the dissimilarities, between the marks.
2. The perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection — not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities.
3. When comparing the rival marks, the points of dissimilarity are so stark that they shade or overweigh the points of similarity, that, irrespective of the points of similarity, no possibility of confusion or deception exists.
4. The most important distinction between the two packs is the brand. The plaintiff’s pack contains the brand “NUTRI CHOICE” in large green prominent letters, on a white background. As against this, the defendants’ pack represents the brand name “FARMLITE” in much more muted brown letters, on a yellow background.
5. The different brands of the biscuit and the different companies manufacturing the biscuits are, therefore, prominently displayed on the pack of both of the plaintiff as well as of the defendants. It is only, therefore, if the mythical gentleman of average intelligence and imperfect recollection does not recollect either the brand of the biscuit or the name of the company manufacturing the biscuit, or even the prominent features. Hence, the allegation of copying of essential features and of possibility of confusion or deception on that score, would not sustain.
6. The defendants have also consciously underscored this aspect of their biscuits by prominently displaying, on the package, the words “5-SEED DIGESTIVE”, apart from a clear pictorial representation of the five seeds contained in the biscuits. The words “5 SEED” are absent on the plaintiff’s pack.
7. The fact that the words “5 SEED”, are in bright red letters on a white background, confers the words additional prominence and render them even more capable of being recollected by the average consumer.
8. In case of passing off, the fact that the “SUNFEAST” logo of the defendant and the “BRITANNIA” logo of the plaintiffs are clearly visible on the face of the rival packs, would also minimise the possibility of a consumer mistakenly purchasing the product of the defendant, assuming it to be that of the plaintiff.
9. The only similarity between that case, and this, is that, to some extent, the colour combination on the packs of the plaintiff and the defendants is the same.
10. The Court, vide the same order, also refused to pass any interim order of injunction with respect to the box packaging of defendant’s “VEDA DIGESTIVE” biscuits in another interim application clubbed in this suit, namely, IA No. 12125 of 2020 in CS (COMM) 554 of 2020. Laying rest to the issue of packaging, the Court opined that:
- 50. … in designing the impugned pack of “VEDA DIGESTIVE” biscuits, the defendant may have made a conscious attempt to “copy” the plaintiff’s packing. A conscious attempt at copying, however, by itself does not constitute either infringement or passing off. The matter has, in either case, to be examined from the point of view of the customer of average intelligence and imperfect recollection. Unless such a consumer is liable to get confused or deceived, howsoever, questionable the intentions of the defendants may be, no case of infringement or passing off can be said to exist.
†Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at email@example.com.