ITC Limited V. Britannia Industries Ltd.

Summary

ITC Limited (The Appellant), filed an appeal against the order of a single judge wherein the Appellant was injuncted from selling its Sunfeast Mom’s Magic Butter Cookies in the blue coloured wrapper.

Facts of the Original Suit

The Plaintiff of the original suit, Britannia Industries Limited, uses the trade dress / wrapper in blue colour with the brand name ‘GOOD DAY’ and the other devices contained therein. The Plaintiff’s mark has been registered in different combinations in class 30. It was submitted that the consuming public connect the very trade dress, colour dress and getup with that of the Plaintiff and the Plaintiff’s product namely, Good Day Butter Cookies. The Plaintiff apprised the learned single judge that its product “Good day Butter Cookies” alone was sold for a total sum of Rs.1,889 crores in the year 2022-2023 and the Plaintiff has spent a sum of Rs.137.27 crores for advertisements and sales promotion for its product Butter Cookies.

The Plaintiff further apprised the single judge that its mark along with colour scheme, getup and style, has been recognised as well-known mark by the Intellectual Appellate Board and also by the Delhi High Court.

It was the case of the Plaintiff that ITC Limited (Defendant in the original suit) is selling a similar product under their brand name ‘SUNFEAST’ by adopting the trademark Mom’s Magic. The Plaintiff argued that the Defendant in the month of March, 2023, started selling their products also in an identical blue colour trade dress / wrapper and that too only in South India. The Plaintiff contented that if both the products are placed side by side, it would be difficult to differentiate even with a careful observation and when the products are on shelves of various supermarkets and shops, they are absolutely bound to create confusion It was contended that such action amounts to infringement of the Plaintiff’s mark, passing off its goods as that of the Plaintiff, violation of the copyright of the Plaintiff in their artistic works, dilution of the goodwill and reputation of the Plaintiff’s trade dress and amounts to unfair competition.

The Single Judge, being satisfied with the Plaintiff, injuncted the defendant from marking its product Sunfeast Mom’s Magic Butter Cookies in the blue colour wrapper. Aggrieved by this, the Defendant has appealed the said order.

Arguments by Appellant

• The Appellant listed various points of dissimilarity between the products of the Appellant and Respondent.
• The Appellant even went on to say that being a leading manufacturer for popular brands, has no need to piggyback on the goodwill and reputation of the Respondent and that Appellant itself has spent huge amount of money to advertise their products.
• The Appellant compared its old packaging to its new one and argued that apart from colour, no aspect of the packaging has been changed.
• It was also contended that using blue colour for dairy products (butter, in the present case) has been an industry wide practice.
• Further, it was argued that Respondent cannot claim monopoly over the colour ‘blue’.

Issues to be considered

1. Whether the defendant’s trade dress / wrapper is deceptively similar to that of the plaintiff?
2. Since the plaintiff is not aggrieved by using the same set of devices, pictures and combinations in red colour wrap, whether the plaintiff’s claim is to be rejected as claiming exclusivity of blue colour?

Decision

• The Court, for the first issue, opined that while the Defendant’s products are portrayed to be different, yet they are carefully and meticulously designed and combined at appropriate places in the wrapper so as to absolutely be similar to that of the Plaintiff.
• For the second issue, the Court rejected the Appellant’s contention of Plaintiff claiming exclusivity in the colour. As per the Court, the said contention does violence to the context in which the claim is made, and it is not the colour per se alone but the colour scheme and getup which gives rise to the proprietary right of the exclusive use. The Court stated that

“The final straw is the defendant’s product’s use of blue as the wrapper’s background, which violates the Plaintiff’s intellectual rights to their trade dress, trademarks, and copyright. This suggests that the defendant may have adopted dishonestly in order to pass off its goods and unfairly benefit from them.”

Conclusion

The Court upheld the Single Judge’s order while allowing the Defendant to sell existing stock of their products packed in offending blue colour wrap and the status of the current stock, their movement and sale thereof shall be informed in writing and the exemption is only in respect of current stock of the quantity of 23.7 tonnes.