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ITC Turns Blue Over Britannia Digestive Zero
While ITC has filed a copyright infringement suitagainst Britannia Industries, seeking to restrain thelatter from using ITC’s rights in packaging/tradedress of Sunfeast Farmlite Digestive – All Goodbiscuits, this cookie saga is far from over...The competition to control the over 25-billionrupeeIndian biscuit market reaches the DelhiHigh Court. ITC Ltd. (ITC), which sells biscuitsunder...
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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.