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HIGH COURT OF JUDICATURE AT MADRAS
SANJAY V. GANGAPURWALA, D. BHARATHA CHAKRAVARTHY, JJ.
ITC Limited Virginia House, Kolkata & Ors. - Appellants
Versus
Britannia Industries Ltd., Authorized Representative, Ravichandran Rajagopal - Respondent
O.S.A.(CAD).Nos. 134 to 138 of 2023
Decided On : 08-11-2023
Trademark Infringement - Trade Dress - Commercial Courts Act, 2015 - Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956
Fact of the Case:
The plaintiff, Britannia Industries Limited, sought injunctions against the defendant, alleging trademark infringement, passing off, and unfair competition. The plaintiff claimed that the defendant's use of a similar blue color trade dress for its product 'SUNFEAST Mom's Magic Butter Cookies' infringed on the plaintiff's well-known trademark 'GOOD DAY' and its trade dress for 'Good Day Butter Cookies'. The defendant argued that the blue color was commonly used for butter and dairy products and that its use did not amount to infringement or passing off.
Finding of the Court:
The court found that the plaintiff had built a considerable consumer base and that the defendant's adoption of the blue color trade dress appeared to be dishonest with the intention to infringe the plaintiff's trademark and pass off its goods. The court granted interim injunctions in favor of the plaintiff, restraining the defendant from using the blue color wrapper for its product.
Issues: The main issue was whether the defendant's use of a similar blue color trade dress for its product constituted trademark infringement, passing off, and unfair competition.
Ratio Decidendi: The court held that when determining deceptive similarity, the standard should be that of an ordinary gullible customer, and the similarity cannot be determined by factor-wise comparison but by a wholesome consideration of the offending marks, labels, or trade dress. The court found that the defendant's product was deceptively similar to that of the plaintiff and that the defendant's adoption of the blue color trade dress was dishonest.
Final Decision: The court partly allowed the appeals, confirming the grant of interim injunctions in favor of the plaintiff. The defendant was permitted to sell existing stock of its products packed in the offending blue color wrapper, and the status of the current stock was to be informed in writing. No costs were awarded, and the related motions were closed.
JUDGMENT
(Prayer: Commercial Appellate Division filed under Section 13 of the Commercial Courts Act, 2015 read with Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956 to allow this appeal and set aside the common order, dated 10th October, 2023 passed in O.A.No.551 of 2023 in C.S. (comm) No.153 of 2023.Commercial Appellate Division filed under Section 13 of the Commercial Courts Act, 2015 read with Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956 to allow this appeal and set aside the common order, dated 10th October, 2023 passed in O.A.No.552 of 2023 in C.S. (comm) No.153 of 2023.Commercial Appellate Division filed under Section 13 of the Commercial Courts Act, 2015 read with Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956 to allow this appeal and set aside the common order, dated 10th October, 2023 passed in O.A.No.554 of 2023 in C.S. (comm) No.153 of 2023.Commercial Appellate Division filed under Section 13 of the Commercial Courts Act, 2015 read with Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956 to allow this appeal and set aside the common order, dated 10th October, 2023 passed in O.A.No.553 of 2023 in C.S. (comm) No.153 of 2023.Commercial Appellate Division filed under Section 13 of the Commercial Courts Act, 2015 read with Order XXXVI Rule 9 of the Original Side Rules of the High Court of Madras, 1956 to allow this appeal and set aside the common order, dated 10th October, 2023 passed in O.A.No.555 of 2023 in C.S. (comm) No.153 of 2023.)
COMMON JUDGMENT
D. Bharatha Chakravarthy, J.
A. The Appeals:
These Original Side Appeals are directed against the order of the learned Single Judge, dated 10.10.2023 in O.A.Nos.551 to 555 of 2023 in C.S.(Comm Div).No.153 of 2023.
1.1. In the above applications, the respondent herein has prayed for interim injunction restraining the appellant herein from (i) indulging in unfair competition; (ii) infringement of their registered trademarks, (iii) passing off their goods as that of the plaintiff; (iv) infringement of copyright in the original artistic work in the wrapper; and (v) from diluting the goodwill and reputation of the plaintiff's trade dress and colour scheme. In this judgment the parties are referred to as per their array in the suit.
B. The Case of the Plaintiff :
2. The plaintiff, Britannia Industries Limited, filed the above suit pleading that it was established in the year 1892, from which date, it has been manufacturing biscuits in India. It started from a small house in Central Kolkata and now, it is a leading food Company with approximately Rs.13,000 crores as revenue. It's name itself has gained high reputation and goodwill and it has several products in the market which are very well known among the consuming public. While so, it has also adopted the mark 'GOOD DAY' in the year 1986 and by virtue of continuous extensive use, advertisement and maintenance of high quality, GOOD DAY biscuits is a well known trademark throughout the country. Under the said umbrella mark, they are making and selling Butter Cookies, Cashew Cookies, Nut Cookies, Pista Badam Cookies, Choco Chunkies etc.
2.1. The plaintiff has been spending huge amounts for advertisements and sales promotion. For the year 2022-2023, it had spent Rs.255 crores for advertisement of the said brand. It has specifically designed and adopted the trade dress / wrapper for packaging the biscuits with distinct style, colour scheme and getup. The colour scheme, style and getup are adopted with variations in respect of the different flavours.
2.2. As far as the Butter Cookies are concerned, the petitioner uses the trade dress / wrapper in blue colour with the brand name 'GOOD DAY' and the other devices contained therein. The plaintiff's mark has been registered in different combinations vide Application N
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