IPR CASE STUDIES

1. BRITANNIA INDUSTRIES LTD. V. ITC LTD.

Brief Facts:

The Respondent, ITC Ltd. filed a civil suit against the Appellant, Britannia Industries
Ltd. for passing off and infringement of Copyright of the trade dress of Respondent’s
product ‘Sunfeast Farmlite All Good’ which is a No Added Sugar and No Maida digestive
biscuit.

As per the Respondent, Appellant’s product ‘Nutrichoice Digestive Zero’ which was also
a No Added Sugar and No Maida product had a packaging which was deceptively similar
to Respondent’s product packaging of ‘Sunfeast Farmlite All Good’. Allegedly, both the
products were being sold in the colour combination of Yellow and Blue.

The said suit was listed before the Learned Single Judge of the Hon’ble High Court of
Delhi. After hearing arguments on the application for interim relief, the Learned
Single Judge granted a temporary injunction in favour of the Respondent in the
following terms:

“An interim injunction is, accordingly, issued restraining Britannia from using the
impugned packaging get-up/wrapper for its Nutri Choice Digestive Zero biscuits in the
present form during the pendency of this suit. It will however be open to Britannia to
adopt the packaging it uses for the product internationally or while retaining the yellow
colour, substitute the blue colour in the impugned packaging with any other distinctive
colour other than variants of blue. In sum, it can adopt any packaging which is
distinctively different from the packaging that is currently used by ITC for its
Sunfeast Farmlite Digestive All Good biscuits.”

Aggrieved by the said decision, the Appellant filed the present appeal.

Some Observations of the Learned Single Judge:

When a new product with a distinctive packaging is introduced, it is not necessary for
the Plaintiff to show that it has established a formidable reputation in that product
for a number of years.

The factum of sales of 5 crores was a significant factor in examining the question of
reputation of the product, as also the factum of Rs 14 crores spent on advertising.

Britannia had been late in introducing its “Digestive Zero” variant till after six months
after ITC introduced its product and this was a factor which weighed in favour of ITC.

Sales of Rs 5 crores of the said biscuits in a short span of five months was indicative
of the growing reputation of ITC‟s product which deserved protection.

Even if it were to be accepted that yellow as a colour was integral to Britannia’s

packaging scheme for Digestive biscuits, Britannia’s purpose could well be served by
adopting a colour other than blue, to combine with the yellow colour of its packaging.

Appellant’s Contentions (observed in the order in question)

Britannia Digestive biscuits are being sold under three different variants. One variant
is the “Nutri Choice Hi Fibre Digestive” biscuit. The other variant is the “Nutri Choice
Digestive 5 Grain” biscuit and the third variant is the one in issue, that is, the “Nutri
Choice Digestive Zero” biscuit.

First invoice of ITC is of May 2016.

Colour blue was being used worldwide in relation to sugarless or zero sugar products.

Britannia was using similar packaging for its Digestive Hi Fibre and Digestive 5 Grain
biscuits, which all had the features of stacked biscuits, ears of wheat and other grains.
The Digestive Hi Fibre packaging, which was also a pillow packing, had a yellow-red
combination. The Digestive 5 Grains packing employed the yellow – green combination.
In this context, it was suggested on behalf of Britannia that the packing for “Nutri
Choice Digestive Zero” biscuits employed the yellow – blue combination to distinguish
its other products.

All three variants of Appellant’s Digestive biscuits had the same genre of package
design and the similar colour concepts. Yellow was the primary colour with a
combination of red for Digestive Hi Fibre and a combination with green for the
Digestive 5 Grain biscuits and now with a combination of blue for its Digestive Zero
biscuits.
5 crores sales of ITC’s product is not substantiated by any Chartered Accountant’s
Certificate.

14 crores spent on advertising is not only in respect of the get-up, but more so for the
trade marks and other features of the product.

Division Bench’s observations:

Britannia has been restrained from using the colour blue. It has been permitted to
retain the colour – yellow. In other words, the entire controversy in the present appeal
centers around the use of blue and / or its variants in the packaging. It is, therefore,
clear that in case the appellant / Britannia uses the same packaging, but substitutes
the blue with any other colour, which is not a variant of blue, then there would be no
case for passing off. (Paragraph 8)

It is evident that a passing off action has to be examined from the standpoint of three
factors: (1) goodwill and reputation; (2) misrepresentation / possibility of deception;
and (3) likelihood of damage. (Paragraph 10)

In a passing off case, it is the goodwill which is sought to be misappropriated. It is this

misappropriation which provides a cause of action at common law.

ITC, in order to succeed at this stage, must establish, at least prima facie, that the
combination of yellow and blue that is used in its packaging for its “Sunfeast Farmlite
Digestive – All Good” biscuit has become distinctive specifically of its goods. (Paragraph
15)

The issue here, in this case of passing off, is not that a new biscuit or a new product
has acquired popularity in a short span of time, but whether the get-up and, in
particular, the colour combination of yellow and blue has become exclusively
identifiable with the plaintiff‟s product ?

We are of the view that the focus ought to be on the question whether the get-up (the
yellow-blue combination of the package) was exclusively and distinctively associated
with ITC.

In the present case, we find that ITC in its advertisements mainly relies on its trade
marks and business name. That being the case, ITC would, in any event, have greater
difficulty in establishing its claim based on general getup and in the present case, on
the combination of yellow and blue.
We do not think that in the short span of time and, particularly when Britannia has
alleged that the first invoice of ITC is of May 2016, the yellow-blue combination in the
packaging of ITC‟s biscuits had become so identified with ITC so as to enable ITC to
prevent its use by competitors.

There are a good number of products which use the colour blue for sugarless, zero
sugar or sugar free products.

Britannia has been using yellow as the primary colour in combination with red and green
for its earlier products and, therefore, its natural evolution into a combination of
yellow and blue for the Digestive Zero product was quite understandable.

The appropriation of and exclusivity claimed vis-à-vis a get-up and particularly a colour
combination stands on a different footing from a trade mark or a trade name because
colours and colour combinations are not inherently distinctive. It should, therefore, not
be easy for a person to claim exclusivity over a colour combination particularly when
the same has been in use only for a short while. It is only when it is established, may be
even prima facie, that the colour combination has become distinctive of a person’s
product that an order may be made in his favour. We feel that the present is not such
a case. When the first element of passing off, in our view, is not established, we need
not examine the other elements of misrepresentation and likelihood of damage.
(Paragraph 23)

The Division Bench observed that ITC was not entitled to an interim injunction and
therefore the impugned order of the Learned Single Judge was set aside.

2. Horlicks Limited And Ors. vs Kartick Sadhukan, Delhi High Court 2002 (25) PTC
126 Del

This case revolves around the principle of infringement of trademark and copyright
laws. HORLICKS Limited (hereinafter referred to as H) is a foreign company engaged
in manufacturing of a wide range of food products, including foods for infants, children
and invalids, malted milk, biscuits, toffees, etc. under the trademark HORLICKS, of
which it claims to be the original registered owner. The trademark 'HORLICKS' was
registered in India in relation to foods for infants, children as well as mailed milk as
early as 1943, for biscuits in 1961 and in respect of toffees in 1966. H is also the owner
of copyright of HORLICKS label and is exclusively entitled to reproduce and alter the
features of the HORLICKS label in any material form as it deems fit.

Kartick Confectionery (hereinafter referred to as K) started manufacturing a similar

look-alike product, namely, toffees under the trademark ‘HORLIKS’ infringing the
trademark rights enjoyed by 'HORLICKS'. K also reproduced the label of H thereby
amounting to the infringement of the copyright of the latter.

H contended that since the consumers of the product under the trademark HORLICKS
included infants, children and adults it was the obligated to ensure that the quality and
standard of the product met the prescribed requirements under the law. They further
stated that they ensured that the products under the trademark HORLICKS were
made under strict hygienic conditions. Accordingly, if K is permitted to use the
challenged trademark HORLIKS, the right of which was never granted neither
permitted by H, the latter was at all times at a risk of facing the consequences of K’s
conduct and unauthorized use. Hence they filed for a suit seeking to permanently
restrain K from infringing the H's trademark HORLICKS and also its copyrights which
it enjoyed over the product.

A Single Judge Bench of the Delhi High Court comprising of Justice B Chaturvedi found
out that H was indeed the original registered owner of the trademark HORLICKS in
respect of food for children, malted milk, biscuits and toffees and all other products
as a result of prior marketing and registration. With regards to toffees registration
was done in India in 1966. And the company carried out various advertisements of its
products under the trademark HORLICKS and thereby enjoyed sufficient goodwill and
reputation for its products in India. The court ruled that use of the label and
trademark HORLIKS by K in respect of toffees is very likely to cause confusion among
the people. It would thereby lead to deception, majorly as a result of K having copied
the trademark HORLICKS and also its label as and how it appears on the products
manufactured and marketed by H.

Accordingly the court restrained K from manufacturing and selling toffees or other
related goods under the trademark HORLIKS or under any other name that is similar in
expression to H’s trademark HORLICKS. Further the court barred K from reproducing,
printing or publishing any label which was a mere reproduction or imitation of K’s
HORLICKS label, thereby protecting the latter’s copyright to the label.

3.

IMPORTANT LINKS:

1. https://spicyip.com/tag/passing-off
2. http://www.legalservicesindia.com/forum/topic245-godrej-soaps-p-ltd-vs-dora-
cosmetics-co-copyright-law.html

3. http://www.legalservicesindia.com/forum/topic248-exphar-sa-anr-vs-eupharma-
laboratories-ltd-anr-copyright.html

4. http://www.legalservicesindia.com/forum/topic252-khajanchi-film-exchange-and-
anr-vs-state-of-mp-and-ors-copyright.html

5. http://www.legalservicesindia.com/forum/topic254-lal-babu-priyadarshi-and-anr-vs-
badshah-industries-and-ors-copyright.html

6. http://www.lawinfowire.com/articlescategory/leading-indian-ip-legal-case-studies

7. https://indiancaselaws.wordpress.com/category/intellectual-property-rights/