FMCG brands ITC Limited and Britannia Industries Limited recently called off their year long legal battle. The Delhi High Court was brought forth that ITC Limited have modified their packaging of the products “SUNFEAST FARMLITE 5-SEED DIGESTIVE” and ‘SUNFEAST FARMLITE VEDA DIGESTIVE’ for which Britannia has no objection.
Britannia dragged ITC to the court, stating that they have been manufacturing and selling “SUNFEAST FARMLITE 5-SEED DIGESTIVE” biscuits in packing which is deceptively similar to the packing in which it sells its “NUTRI CHOICE DIGESTIVE” biscuits, and such adoption of confusingly similar packing, amounts to infringement of its registered trademark. Britannia also alleges that ITC is indulged in passing off their “SUNFEAST FARMLITE 5-SEED DIGESTIVE” biscuits as those of Britannia.[1]
BRITANNIA ITC
Arguments by Britannia:
Britannia highlighted the following similarities in ITC’s product:
- Use of the colour scheme of red and yellow, with yellow on left side of the pack and red on the right;
- Depiction of the image of the biscuit on the right side;
- Engraving the brand name of the company and of the biscuit on the body of the biscuit in similar font and style,
- Use of the word “Hi-Fibre”, below the name of the biscuit,
- Depiction of the words “NUTRI CHOICE” in the case of Britannia, and “5-SEED DIGESTIVE” in ITC, on a white background,
- 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,
- An orange shading at the intersection of the yellow and the red colour on the pack, and
- Depiction of the word “digestive” in red letters on the pack.
Arguments by ITC:
ITC, on the other hand, stated:
- Britannia’s pack contained two colours (red and yellow), whereas ITC’s pack contained (red, yellow and saffron);
- Yellow is the predominant colour of Britannia’s pack while red is the predominant colour in case of ITC;
- Britannia’s pack predominantly displays the brand name “NUTRI CHOICE” in large green letters, whereas ITCs’ brand name is “FARMLITE” printed in brown letters.
- ITC’s pack contains a vertical curved band towards the centre of the pack, in which the seeds contained in its biscuits are reflected from top to bottom under the head “Power Seeds”, with a picture of each seed i.e, flak seeds, chia seeds, watermelon seeds, sunflower seeds and pumpkin seeds and
- The brand name of ITC, “SUNFEAST FARMLITE DIGESTIVE” is predominantly displayed on the biscuits, in the photograph on the impugned package.
Judgement by Single Bench:
The Bench of Justice C. Hari Shankar held that packaging of both products are not similar so as to cause deception or confusion. The Bench said that the test for a case of infringement or passing off is that of confusing or deceptive similarity, and the courts must delve upon as to whether there is a deceptive extent of similarity between the marks irrespective of their individual dissimilar features, and the approach must emphasise upon the similarities, rather than the dissimilarities between those marks. The Bench explained the differences between the terms “deceptive” and “cause confusion” under Sections 29(1) and (2) respectively that both states of mind, of which no physically tangible evidence can ever be found, and if similarities can cause deception or confusion, dissimilarities can also obviate any such possibility. The Bench said that most important assessment that the courts are required to make is upon the features of the rival marks, which are most prominent, and if there is dissimilarity in the prominent or essential features of the rival marks, so as to impress the mind of the person of average intelligence and imperfect recollection, no finding of confusing or deceptive similarity can be arrived into. Relying upon few precedents and Defendant’s arguments, the Bench dismissed the allegations.
Judgement by Division Bench:
Before the Division Bench of Justices Manmohan Singh and Navin Chawla, ITC reproduced its modified packaging of its “SUNFEAST FARMLITE 5-SEED DIGESTIVE” and ‘SUNFEAST FARMLITE VEDA DIGESTIVE” biscuits. Below attached are the modified packs of both the biscuits.[2]
[1] CS(COMM) 553/2020 & CS(COMM) 554/2020
[2] FAO(OS) (COMM) 65/2021 & CM APPL 14813/2021
