In order to establish infringement of a registered trademark or passing off, the plaintiff must show that the defendant's mark is deceptively similar to its own mark and that there is a likelihood of confusion or deception on the part of the average consumer.

JUDGMENT

C.Hari Shankar, J. - On 11th September, 2020, the Trademark Registry registered the following trademark in favour of the plaintiff M/s Britannia Industries Ltd., in respect of "biscuits, bread, buns, rolls, bakery products, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, savouries, snacks, cookies, pastry and confectionary; cakes, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, spices croissants", in Class 30 of the Trade Marks Rules, 2017:

2. The plaintiff manufactures and clears "Nutri Choice Digestive" biscuits, the packing whereof employs the above registered trademark. The pillow pack, in which the plaintiff "Nutri Choice Digestive" biscuits are packed and sold, looks like this :

3. The plaintiff is aggrieved by the fact that the defendants M/s ITC Ltd. are manufacturing and selling "Sunfeast Farmlite 5-Seed Digestive" biscuits in packing which is, according to the plaintiff, deceptively similar to the packing in which the plaintiff sells its "Nutri Choice Digestive" biscuits. By adopting such confusingly similar packing, it is alleged that the defendants have infringed the registered trademark of the plaintiff. The plaintiff also alleges that the defendants are passing off their "SUNFEAST FARMLITE 5-SEED DIGESTIVE" biscuits as those of the plaintiff. The packing, in which the defendants clear and sell their biscuits, looks like this:

4. Accordingly, the plaintiff has sought an interim injunction, restraining the defendants from manufacturing or selling biscuits in the impugned packing, pending disposal of the present suit.

Proceedings thus far

5. Summons were issued in the suit and notice was issued in the present application, by this Court, on 16th December, 2020. On the said date, this Court recorded the submission, of learned Counsel for the defendants, that the defendants would not release the impugned pack/trade dress in the market, though they would continue to manufacture the same. This Court clarified, however, that the order would not impact those packages of the defendants which were already in the market.

6. This order continues to remain in force till date, as it was extended from time to time. As considerable stocks of the defendants' products have accumulated, awaiting release into the market and sale, the defendants sought modification of the aforesaid order, by permitting the defendants to release, into the market, the goods already manufactured by them. Mr. Rajagopal, learned Counsel for the defendants submitted that, while tendering the aforesaid statement in Court on 16th December, 2020, he did not envisage accumulation of such a huge stock of biscuits. Biscuits being a perishable commodity, Mr. Rajagopal prayed that directions, for release of the biscuits already manufactured, be issued by the Court.

7. Instead of examining the prayer for modification of the statement made by learned Counsel for the defendants on 16th December, 2020, with consent of learned Counsel for both parties, the present application, under Order XXXIX Rule 1 and 2, filed by the plaintiff, was finally heard. The plaintiff was represented by Mr. Sudhir Chandra and Mr. Sandeep Sethi, learned Senior Counsel and the defendants were represented by Mr. Sajan Poovayya, learned Senior Counsel assisted by Mr. Saikrishna Rajagopal.

The legal position

8. Before adverting to the facts of the present case and contentions advanced by learned Senior Counsel at the Bar, it would be appropriate, in brief, to reconnoitre the legal position, insofar as actions for infringement and passing off are concerned.

9. This Court has had occasion, in the recent past, to study various decisions in this regard, and attempt to cull out the principles emanating therefrom, in its judgments in FDC Ltd. v. Faraway Foods Pvt. Ltd.,MANU/DE/0230/2021 and Natures Essence Pvt. Ltd. v. Protogreen Retail Solutions Pvt. Ltd.,MANU/DE/0474/2021. On the aspect of deceptive similarity