Madras High Court: In batch of appeals against the order of the Single Judge, dated 10-10-2023, wherein the Court has injuncted ITC Ltd. from marking its product Sunfeast Mom’s Magic Butter Cookies in the blue colour wrapper, the division bench of Sanjay V. Gangapurwala, CJ. and D. Bharatha Chakravarthy, J. upheld the impugned order. However, it permitted ITC Ltd. to sell the existing stock which is already packed in the offending blue colour wrappers.
Britannia Industries Limited (‘Britannia’), filed a suit pleading that it was established in the year 1892 and has been manufacturing biscuits in India. Its name has gained a high reputation and goodwill, and it has several products in the market which are very well known among the consuming public. It has also adopted the mark ‘Good Day’ in the year 1986 and by virtue of continuous extensive use, advertisement and maintenance of high quality, ‘Good Day’ biscuits are a well-known trade mark throughout the country. Under the said umbrella mark, they are making and selling various biscuits. It has specifically designed and adopted the trade dress / wrapper for packaging the biscuits with distinct style, colour scheme and getup. The colour scheme, style and getup are adopted with variations in respect of the different flavours.
For its Butter Cookies, Britannia uses the trade dress in blue colour with the brand name ‘Good Day’. The mark has been registered in different combinations. Britannia’s mark, along with colour scheme, getup and style, has been recognised as a well-known mark by the Intellectual Appellate Board and also by the Delhi High Court in the connected litigations.
Britannia pleaded that ITC Ltd. is selling similar products under their brand name ‘Sunfeast’ by adopting the trade mark Mom’s Magic, with a dishonest intention to cash in on the goodwill and reputation of Britannia. Suddenly, in the month of March 2023, ITC Ltd. started selling their products also in an identical blue colour trade dress. Britannia submitted that when the products are on the shelves of various supermarkets, they are bound to create confusion. Hence, a suit was filed for permanent injunction and for a decree for delivery of the offending materials and for rendition of accounts and for damages to a tune of Rs.65,00,000/-.
The Court said that though the brand name, trade mark, device of the biscuit, swoosh of butter are portrayed to be different, yet it is carefully and meticulously designed and combined at appropriate place in the wrapper to absolutely to be similar than that of Britannia.
It further said that Britannia is the prior user of the present colour scheme, getup, combination of the picture of biscuit, butter etc. One would be too naive to believe that this is just a coincidence. Even the way the ITC ‘s mark, Mom’s Magic appears on the end of the wrapper clearly resembles that of Britannia’s depiction of its mark ‘Good Day’ at the same place. Thus, even though from the picture it demonstrates that each component is different, yet they are very similar even on a careful comparison.
The Bench remarked that from a casual glance, there can be no doubt that both the products are similar to each other. There will be confusion in the market. Especially, in the nature of the product being Cookies, sold in the shelves of supermarkets, any ordinary customer looking at the shelf is bound to be deceived. Therefore, the product of ITC Ltd. is deceptively similar to that of Britannia.
Moreover, the Court said that it is the colour per se alone, but the colour scheme and getup which gives rise to the proprietary right of the exclusive use. Use of blue colour as the background in wrapper made ITC’s product offend the proprietary rights of Britannia to their trade marks and trade dress and their copyright. The same also leads to the inference of dishonest adoption on the part of ITC to pass off its goods to unjustly enrich itself.
Thus, the Court upheld the impugned order.
[ITC Limited v Britannia Industries Ltd, 2023 SCC OnLine Mad 6972, decided on 08-11-2023]
Advocates who appeared in this case :
For Appellant: Senior Counsel A.L.Somayaji, Senior Counsel Vijay Narayan
For Respondent: Senior Counsel P.S.Raman, Senior Counsel Satish Parasaran