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IN THE HIGH COURT OF JUDICATURE AT MADRAS
P.T. ASHA, J.
Britannia Industries Ltd., Ravichandran Rajagopal, Kolkata - Appellant
Versus
ITC Limited, Kolkata - Respondent
O.A. Nos. 551 to 555 of 2023 In C.S. (Comm Div). No. 153 of 2023
Decided On : 10-10-2023
| Table of Content |
|---|
| 1. background of trademark dispute over biscuit packaging. (Para 1 , 2 , 3 , 4 , 5 , 6 , 7 , 8) |
| 2. arguments presented by appellant and respondent. (Para 9 , 10 , 11 , 12 , 13 , 15) |
| 3. court's observations regarding consumer confusion and trademark law. (Para 23 , 24 , 27 , 28 , 29 , 30 , 42) |
| 4. legal principles regarding color monopolies and passing off. (Para 36 , 38 , 48) |
| 5. final assessment on passing off based on established reputation. (Para 44 , 49) |
| 6. final order granting injunction against respondent's product. (Para 50) |
JUDGMENT
(Prayer: Judges summons is filed for the following reliefs:
(a) Ad-interim injunction restraining the Respondent, their partners, proprietors, Companies, Sister Concerns, directors, executives, as the case may be, its officers, servants and agents or anyone acting for and on their behalf from manufacturing, exporting, marketing, offering for sale (physical or online platforms), selling (physical or online platforms), advertising (physical or online platforms) or in any manner dealing in any Biscuits/Cookies including but not limited to Butter Cookies and/or such allied and cognate goods which is identical or deceptively similar to the Applicant’s registered trademark/ Trade Dress/packaging/ colour scheme/get up/layout of BRITANNIA GOOD DAY BUTTER COOKIES amounting to infringement of Applicant’s registered trademark/trade dress/packaging/ colour scheme under Registration Numbers 4182344, 5186937, 5186938, 5186939 and 5186940 in Class 30, pending disposal of suit.
(b) Ad-interim injunction restraining the Respondent, their partners, proprietors, Companies, Sister Concerns, directors, executives, as the case may be, its Officers, servants and agents or anyone acting for and on their behalf from manufacturing, exporting, marketing, offering for sale (physical or online platforms), selling (physical or online platforms), advertising (physical or online platforms) or in any manner dealing in any Biscuits and/or such allied and cognate goods under the Impugned Trade Dress of Respondent in the present Plaint or any ofher trade dress deceptively similar to applicant's Trade Dress/packaging/ colour scheme/get up/layout of BRITANNIA GOOD DAY BUTTER COOKIES or any trade dress/packaging/ colour scheme as used or had been used by Applicant for its product BRITANNIA GOOD DAY BUTTER COOKIES amounting to passing off , pending disposal of suit.
(c) Ad-interim injunction restraining all the Respondent, their partners, proprietors, Companies, Sister Concerns, directors, executives, as the case may be, its officers, servants and agents or anyone acting for and on their behalf from manufacturing, exporting, marketing, offering for sale (physical or online platforms), selling (physical or online platforms), advertising (physical or online platforms)or in any manner dealing in any Biscuits including but not limited to ‘Sunfeast MOM’S MAGIC BUTTER’ Cookies and/or such allied and cognate goods under the Trade Dress/packaging/ colour scheme/get up/layout of Applicant’s BRITANNIA GOOD DAY BUTTER COOKIES or any other trade dress/ colour scheme of the Applicant which is a reproduction and/or substantial reproduction of BRITANNIA GOOD DAY BUTTER COOKIES so as to infringe the Applicant’s Copyright in the original artistic works by reproducing the same in any material form or using the same or any colourable imitation thereof or otherwise howsoever, pending disposal of suit.
(d) Ad-interim injunction restraining the Respondent, their partners, proprietors, Companies, Sister Concerms, directors, executives, as the case may be, its officers, servants and agents or anyone acting for and on their behalf from launching, selling (physical or online platforms), manufacturing, marketing (physical or online platforms), offering for sale (physical or onli
The court held that trademark and trade dress can attain distinctiveness over time; sudden changes in competitors' branding could constitute passing off if it causes public confusion.
The main legal point established in the judgment is that the adoption of a similar trade dress, including color scheme, with a dishonest intention to infringe a well-known trademark and pass off good....
if there is no infirmity found in the order of the Trial Court, injunction against encashment of bank guarantee and letter of credit should not be granted except where fraud or irretrievable damage i....
Trademark infringement and passing off claims are assessed based on overall consumer confusion and not merely by direct comparison of marks.
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....
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
The court confirmed that mere similarity in trademarks does not constitute infringement; factors like market presence and distinct branding are critical.
Establishing trademark passing off requires proof of goodwill, misrepresentation, and likelihood of damage, emphasizing overall impression over minor differences.
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