ITC Turns Blue Over Britannia Digestive Zero

While ITC has filed a copyright infringement suit

against Britannia Industries, seeking to restrain the

latter from using ITC’s rights in packaging/trade

dress of Sunfeast Farmlite Digestive – All Good

biscuits, this cookie saga is far from over...

The competition to control the over 25-billionrupee

Indian biscuit market reaches the Delhi

High Court. ITC Ltd. (ITC), which sells biscuits

under its umbrella brand Sunfeast, filed a

suit for copyright infringement, passing off,

delivery up, damages and rendition of accounts etc. against

Britannia Industries Ltd. (BIL) seeking to restrain BIL from

using ITC’s rights in the packaging/trade dress of “Sunfeast

Farmlite Digestive - All Good” biscuit. ITC alleged that BIL

had used a deceptively and confusingly similar trade dress

for its “Nutri Choice Digestive Zero biscuit”.

The product packaging of rival parties is depicted below:

The court passed a restraint order against BIL asking it to

stop the use of confusingly similar trade dress for its ‘Nutri

Choice Digestive Zero’ biscuit.

Background and contention of parties

ITC in support of its case contended that:

1. ITC launched the packaging of ‘Sunfeast Farmlite

Digestive – All Good’ biscuit in February 2016. ITC

has achieved sales of '50 million in five months and

incurred marketing expenditure of '140 million.

2. BIL launched ‘Nutri Choice Digestive Zero’ biscuit in

July 2016. BIL being the subsequent adopter has copied

the packaging, get-up, layout, unique color scheme etc.

to pass off their ‘Nutri Choice Digestive Zero’ biscuit

products as ITC’s ‘Sunfeast Farmlite Digestive – All

Good’ biscuit.

3. The product packaging of BIL is identical and/or

deceptively similar to that of ITC. The rival products,

their pricing and trade channels are identical. Thus,

confusion is inevitable.

4. Use of a deceptively similar packaging for identical

products by BIL constitutes the infringement of the

original artistic work in the unique product packaging/

label under Section 51 of the Copyright Act 1957 and also

amounts to misrepresentation and unfair competition.

5. The packaging of BIL’s ‘Nutri Choice Digestive Zero’

biscuit in a small font states that “this biscuit contains

sucralose not recommended for children”. This would

tarnish the image of ITC including ‘Sunfeast Farmlite

Digestive – All Good’ biscuits considering they are

suitable for consumption by children.

6. After the launch of ITC’s “Sunfeast Farmlite Digestive –

All Good biscuit with No Added Sugar and No Maida”,

BIL filed a complaint against ITC’s “Sunfeast Farmlite

Digestive – All Good” biscuit (and not its packaging)

before Advertising Standards Council of India (ASCI).

The complaint was decided in favor of ITC.

7. BIL uses different packaging for Nutri Choice Digestive

Zero biscuits sold internationally.

BIL contended that

1. BIL is manufacturing/marketing a range of Nutri Choice

Digestive biscuits with the primary/predominant color

of the product packaging being yellow along with a

secondary color to indicate the variant since 2008.

2. The yellow color in the product packaging was an

essential and prominent feature and formed part of a

color scheme that identified a range of BIL’s digestive

biscuits. There are three variants in the BIL’s digestive

biscuit segment that use yellow as predominant color:

• Hi Fibre - Yellow + Red
• 5 Grains - Yellow + Green
• Zero - Yellow + Blue

3. BIL has used a color combination of yellow and blue in

the product packaging of Coconut Crunchees, Nice Time

and Marie Gold biscuits. The color blue also reflects

‘World Diabetes Day’.

4. BIL has used blue color on its other range of zero

percent added sugar Nutri choice Essentials Oat and

Ragi cookies at least since November 2010.

5. ITC had earlier adopted a packaging that was a

combination of lemon green and blue for the ‘Sunfeast

Farmlite Digestive – All Good’ biscuits.

6. BIL started the manufacturing of ‘Nutri Choice Digestive

Zero’ prior to the issuance of the ASCI order.

7. ITC has failed to show that it enjoys formidable goodwill

or reputation in ‘Sunfeast Farmlite Digestive – All Good’

biscuit.

8. The get-up of rival products is distinct, and no case for

passing off is made out.

The Court restrained BIL from using the packaging of ‘Nutri

Choice Digestive Zero’ biscuits in its present form and held

that:

1. ITC has established that ‘Sunfeast Farmlite Digestive –

All Good’ biscuit has acquired a growing reputation.

2. The color scheme of the product packaging with

yellow color on the left and blue on the right and the

positioning of the letters ‘No Sugar’ above and ‘No

Maida’ below are strikingly similar and is likely to

confuse consumers.

3. The court also took into account that BIL entered the No

Sugar category of Digestive six months after the launch

by ITC and they had a growing reputation with sale in

five months exceeding '50 million.

4. The court while restraining BIL granted them four

weeks’ time to phase out the existing stocks of Nutri

Choice Zero Digestive biscuits bearing the present

packaging.

Last word is yet to be written in this cookie saga. The

matter is listed before the court in January 2017 for

the framing of issues. BIL had appealed the order to two

judge bench aka Division Bench. The Division Bench refused

to grant an interim injunction or stay the order of the

single judge who granted four weeks to BIL to phase out

existing stock. Subsequently, the appeal was disposed of

as not pressed by BIL. Meanwhile, BIL has filed countersuit

against ITC for the use of yellow color on its packaging

of digestive biscuits. The Court has issued a notice to ITC

to respond. The matter is further listed for hearing on

19th December, 2016.

Disclaimer – The views expressed in this article are the personal views of the author and are purely informative in nature.