IA No.10139/2016

1. The Plaintiff, ITC Limited (“ITC”), has filed the accompanying suit against the Defendant, Britannia Industries Limited (“Britannia”), for permanent injunction seeking to restrain Britannia from violating its rights in the Plaintiff’s packaging/trade dress of “Sunfeast Farmlite Digestive - All Good” biscuit by using a deceptively and confusingly similar trade dress for its Nutri Choice Digestive Zero biscuit. The relief claimed in the suit is also for an injunction to restrain Britannia from (a) passing off ITC’s rights in the trade dress/packaging/label, (b) diluting the mark, (c) infringing ITC's copyright in the said packaging and for delivery up, damages and rendition of accounts etc. By this application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure 1908 (CPC), ITC seeks an interim injunction to restrain Britannia from continuing to use the impugned packaging for its Nutri Choice Digestive Zero biscuit.

2. The packaging of ITC’s “Sunfeast Farmlite Digestive – All Good” biscuit which was launched in February 2016 is as under:

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3. In July 2016, Britannia launched in the market its Nutri Choice Digestive Zero biscuit, the packaging of which is as under:

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4. According to ITC, Britannia’s impugned packaging for its Nutri Choice Digestive Zero Biscuit is an imitation of ITC’s packaging for Sunfeast Farmlite Digestive – All Good. When placed next to each other, they are indistinguishable to the unwary customer.

5. The photographs depicting the manner of the products being displayed in the market place/stores when placed next to each other have been placed on record. It is pointed out that Britannia has been marketing and selling digestive biscuits under the mark “Nutri Choice” for the last several years. According to ITC, after the launch of its “Sunfeast Farmlite Digestive – All Good” biscuit with “No Added Sugar” and “No Maida”, Britannia filed a complaint before the Advertising Standards Council of India (“ASCI”). After failing attempt to the said complaint, Britannia, in July 2016, introduced Nutri Choice Digestive Zero biscuit claiming “0% Added Sugar” and “0% Maida” in packaging which is nearly identical and/or deceptively similar to that of ITC’s packaging.

6. At the first hearing of 22nd August, 2016, Mr. Sudhir Chandra, learned Senior counsel, instructed by Ms. Ishani Chandra and Mr. Sagar Chandra, Advocates appeared. Summons in the suit and notice in this application were accepted on that date itself. After the case was heard for some on that date, Mr. Chandra stated that he needed some time to take instructions on the suggestions made for possible variation in the impugned packaging. Therefore, no interim order was passed and the case was adjourned to 24th August, 2016 on which date both parties agreed, without prejudice to their respective rights, to sit down and explore the possibility of settling the dispute pertaining to the wrapper in respect of the Nutri Choice Digestive Zero biscuits of Britannia. The case was then listed for 31st August, 2016.

7. An offer was made by Britannia that they would substitute the blue colour in the impugned packaging with dark or navy blue. This was not acceptable to ITC. It was pointed out that Britannia has been using a different packaging for the same version of its Nutri Choice Digestive zero sold internationally. The Court was shown the said packaging which is as under:

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8. It was stated on behalf of ITC that as long as Britannia adopts the above packaging for its Digestive Zero biscuits in India, it would have no objection. Alternatively, it was suggested that if the blue colour in the impugned packaging is substituted by any other colour (other than a different shade of blue), ITC would have no objection.

9. On the side of Britannia, it is stated that yellow colour of Britannia’s packaging was an essential and prominent feature