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2023 Supreme(Online)(MAD) 21681
IN THE HIGH COURT OF JUDICATURE AT MADRAS Reserved on : 23.08.2023 Delivered on : 10.10.2023 CORAM THE HONOURABLE Ms. JUSTICE P.T. ASHA O.A.Nos. 551 to 555 of 2023 in C.S.(Comm Div). No. 153 of 2023 Britannia Industries Ltd., Mr. Ravichandran Rajagopal
5/1A, Hungerford Street, Kolkata – 700017 West Bengal, India ...applicant Vs ITC Limited Virginia House, 37, J.L. Nehru Road, Kolkata – 700071 and also at
69 Pasumpon Muthuramalinga Thevar Road, (Chamiers Road), Austin Nagar, Nandanam, Chennai – 600 035 and also at ITC Limited Education & Stationary Products Business ITC Centre, 4th and 5th Floor, 760 Anna Salai, Chennai – 600002. ...respondents 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 online platforms) or in any manner dealing in any Biscuits/Cookies including but not limited to ‘Sunfeast MOM’S MAGIC BUTTER’ Cookies under the trade dress which is identical or deceptively similar to Applicant’s Trade Dress/packaging/ colour scheme/get up/layout used for BRITANNIA GOOD DAY BUTTER COOKIES or any other trade dress/ colour scheme which is identical or deceptively similar to the Applicant’s trade dress/ colour scheme amounting to dilution of the goodwill and reputation of the applicant's trade dress / colur scheme or doing any other thing which will lead to dilution of the applicant's, intellectual property (e)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 launching, selling (physical or online platforms), manufacturing, marketing (physical or online platforms), offering for sale (physical or online platforms) or in any manner dealing in any Biscuits/Cookies including but not limited to ‘Sunfeast MOM’S MAGIC BUTTER’ Cookies under the trade dress which is identical or deceptively similar to Applicant’s Trade Dress/packaging/ colour scheme/get up/layout used for BRITANNIA GOOD DAY BUTTER COOKIES or any other trade dress/ colour scheme which is identical or deceptively similar to the Applicant’s trade dress/ colour scheme amounting to unfair competition or doing any other act amounting to unfair competition, pending disposal of suit.
For applicant : Mr. P.S.Raman for Mr. M.S. Bharath For respondent : Mr. Vijay Narayanan Senior Counsel Mr. S.R. Rajagopal Senior Counsel Mr. Srinath Sridevan Senior Counsel for Mr. Arun C.Mohan.
JUDGMENT
Aggrieved by the colour scheme suddenly adopted by the defendant / respondent for their Butter Cookies “Sunfeast Mom's Magic Butter Cookies” which is visually identical to the colour scheme and label of the plaintiff / applicant's Butter Cookies “Good Day”, the applicant has approached this court seeking relief to restrain the respondent from adopting the same and marketing / selling their products in the market.
2. The applicant would contend that they are a well known company which was initially set up to manufacture biscuits way back in the year 1892. They had started their business in a small house in Calcutta (as it was then known). The applicant has taken its present name, namely, Britannia Industires Limited, in the year 1979. The applicant manufactures various varieties of biscuits, breads, cakes, rusk and dairy products which includes butter, cheese, yogurt, milk etc., One of the most popular brands of the applicant is their “Good Day” brand, which in turn has several flavours.
3. The above suit is with reference to one such flavour / variant called “Good Day Butter Cookies”. The applicant has a pan India presence and the products are available throughout the country. It is the contention of the applicant that they have developed a huge market base through their wide spread advertisement and the turnover for the brand Good Day is also sizable.
4. The applicant would contend that under the umbrella Good Day apart from Butter Cookies, there are various other variants / flavours, namely, Cashew Cookies, Choco Chip, Pista Badam Cookies, Choco Nut cookies, Choco Almond cookies, mixed fruit etc,. It is the applicant's contention that the name Britannia Good Day was adopted by them in the year 1986 and since then, they have been continuously and extensively using the same. From the year 1997, the applicant has started selling the Butter Cookies in a distinctive wrapper having blue as a primary colour and yellow as its secondary colour. Though the elements / design imposed on the wrapper had undergone changes over the years, from the year 2021 the trade dress of the applicant's brand Good Day Butter Cookies is in the same fashion as depicted in this suit. The colour continues to be primarily blue with yellow as a secondary colour, with the name Britannia in white lettering inside a red band above the words Good Day. The name Good Day in white is artistically depicted with a word “day”
being drawn below the word “good” and “y” being drawn to depict a smile.
5. That apart, the wrapper has the picture of a single biscuit with butter shavings at the base of the biscuit. The applicant would submit that the smily device “day” has also been registered. It is the applicant's case that the over all get up and the colour blue and yellow has become associated with the applicant's biscuits in the minds of the public.
6. The applicant has further stated that the other manufacturers of Butter Cookies have adopted other colours for the wrappers and those who have adopted the colour blue with the attendant images of the cookies and butter shavings which resembles the trade dress of the applicant have been visited with legal proceedings initiated by the applicant. The applicant would submit that in and around June 2023, the applicant had come across the respondent's product Sunfeast Mom's Magic Butter Cookies wrapped in the same trade dress. The wrapper is identical to that of the applicant's. The applicant would submit that the respondent had started marketing Butter Cookies only in the year 2015. From 2015 to 2023, the biscuit was being sold in a red coloured wrapper. It is only with effect from June 2023 that the respondent had suddenly switched to the colour blue for its wrapper.
7. It is the applicant's contention that with the introduction of the colour blue except for the name, in all other respects the respondent's products are identical to that of the applicant's. According to the applicant, this is a dishonest adoption by the res
