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  • Writer's pictureIPTT Team

Farm Lite VS Nutri Choice : Did You Get Biskframed?

Updated: Jun 17, 2020

The present case portrays how deceptively similar packaging and similarity of the packet used by two prominent companies leads to confusion in the mind of the buyer. This shows that the packaging strategy is of a paramount concern but was used by the companies in an almost similar manner, however only changing the name did not suffice and resulted in the present litigation[i].

The present case was an application under Order XXXIX Rule 1 and 2. Indian Tobacco Company had filed a suit against Britannia Industries Limited, the defendant, on the ground of violating the purported right in packaging or trade dress of the product, Sunfeast FarmLite Digestive All Good Biscuit and was alleged to use a deceptively similar trade dress for the defendant's product named Nutri Choice Digestive Zero Biscuit. ITC sought an injunction while filing the suit. The injunction was sought to restrain the defendant Britannia inter alia to pass off ITC’s alleged rights for such similarity[ii].

Further, it is very well known that Britannia is one of the leading Biscuit manufacturer in India, selling various kinds of biscuits that are well known to the public at large and always tend to prefer the defendant company since it has reposed a sense of trust on the ground of taste and affordable products while at the same time maintaining an unparalleled quality. The company was formed in the year 1892, headquartered in Kolkata, with an estimated share of 38%.

On the other hand, ITC basically is a Company based in India which has its main branch of operations in the city of Kolkata, West Bengal. It has mainly 5 diversified businesses which consists of FMCG or Fast Moving Consumer Goods (hygiene care, cigarettes, food articles, match box, clothes and education),hotel, special papers for printing and other purposes, packing business, Agriculture based business and IT. The tobacco business contributes to around 80-85% in the profits of the business of the company, and the reason for which these proportions are used in the soft moving of the cigarette business.

This company was earlier known as the ‘INDIAN TOBACCO COMPANY OF INDIA LIMITED’ when it was formed in the year 1910, but later the company was renamed as ‘INDIAN TOBACCO COMPANY LIMITED’ and finally again renamed to ‘I.T.C. LTD.’ The dots which were used in the name were removed on September 2001 for renaming the company to ‘ITC LIMITED’. In the year 2010, the company has completed its 100 years of service and as of the year 2012-13, the company made a huge amount of turnover of around US$ 8.32 billion. It hires around 30,000 people at around 60+ locations all across India and has recently ranked 2000 under the magazine, Forbes.

From the above present case we can clearly see that Britannia was fully restrained or stopped from using blue colour in the packet of “Digestive Zero” variant biscuits. This was under the ‘interim injunction’ order. The company was only allowed to use blue colour in the biscuit packets. It allows further that other thing of packing rather than combination of blue with yellow at this ‘prima facie’ stage will not at all make any sort of case.

The main principles involved in this following case are ‘passing off’ and ‘trade dress’ respectively. The principle ‘passing off’ comes under section 27 of trademarks act, 1999. This section mainly recognizes the normal law right of the owner of the particular trademark so as to take any sort of action towards any person who passes off goods as goods of someone else or in respect of the services that are provided by another person, or any such remedies thereof.  This particular remedy was stated under the section 27 of the act. The act portrays the protection of the rights of proprietor of some unregister trademark so as to register a complaint against that person who passed off his goods as goods of the proprietor. An unregistered proprietor can also oppose application against this as enumerated under section 11 of this particular act[iii].

The principle ‘trade dress’ is mainly a term which is of legal nature that mainly refer to the feature of visual appearance of  an item or the packet design which signifies the main source of an item for a particular consumer. This term comes under the branch of IP. This particular provision came into existence under the ‘trademark act,1997’, which mainly came in existence in September 2003 and this also led to the discovery of the new definition of trademark. This was mainly encompassed as a branch under the US law[iv].

The present case was clearly considered as one of the passing off cases in relation to the similar trade dress or the get up of the packet used in the product. In the case Reckitt & Colman Products Ltd. vs. Borden (1990 RPC 341 HL), it was called the ‘Jif Lemon Case’. In this case, a product named ‘Jif Lemon’ came in a plastic container which was in the shape of a lemon. Now, Borden made a product which was fully similar to Jif Lemon but it was slightly larger than the flattened side. Reckitt had sued Borden for this mistake. The verdict of the case was given by Lord Oliver in three parts which were as follows:-

Firstly, a sense of goodwill should be formed so that consumers favour you more in the market & will really help in increasing the profits of the overall company. The product features should be such that it should be considered as fully distinctive by the public. Secondly, he should demonstrate a sense of misrepresentation by defendant to the common public which will be leading or it will likely lead the public that all the products and services offered by him belong to the plaintiff. Thirdly, he should demonstrate that he suffers or is likely to suffer damage by view of the erroneous belief which is endangered by the misrepresentation by the defendant that the good and service offered by the defendant is the same as that of the plaintiff[v].

There were many such cases like A.G.Spalding & Bros. Vs. A.W. Gamage Limited( 1915 [32] RPC 273 [284]) which showed the dispute under the commercial motor vehicle tax & tariff & many such cases which portrayed the fact of passing judgements by the judges.

In the case of Shree Nath Heritage Liquor Pvt. Ltd. vs. Allied Blender & Distillers Pvt. Ltd.  2015 (63) PTC 551 (Del.) (DB) at p. 570 the Court found that “Officer’s Choice” & “Collector’s Choice” prima facie deceptively similar as they conveyed the same meaning.

Further, Deceptive Similarity between the trade dress of two products will be taken as violation of the rights of the prior user.

In the case of Pfizer Products, Inc. vs.  GS Pharmaceuticals Pvt. Ltd. 2013 (56) PTC 407 (Del.) , the Delhi High Court held that the plaintiff was proprietor of the trademark ‘VIAGRA’ which was registered in India since 1986. The plaintiff adopted the mark prior to the defendant and made continuous and extensive use of that. The plaintiff was further successful in proving that the blue diamond shaped tablet’s trade dress was distinctive & adoption of the mark ‘V-GRA’ was clearly deceptively similar to the plaintiff’s trademark ‘VIAGRA’.

Again, in the case of Pfizer Products, Inc. vs. R.K. Singh 2014 (59) PTC 93 (Del.) at p. 105 it was held by the Delhi High Court that the adoption of the tablet, colour and shape by the defendant which was deceptively similar to the plaintiffs inherently distinctive blue diamond shaped tablet, trade dress was also in violation of the rights of the plaintiff. ‘VIHAGRA’ was also found phonetically and deceptively similar to ‘VIAGRA’.

Further, in the case of Sun Pharmaceuticals Industries Ltd. vs. Mukesh Kumar P. 2013 (55) PTC PTC 209 (Del.) at p. 213 it was held by the Delhi High Court that phonetic & structural similarity was found in ‘AMLOBET’ & ‘AMLOVATE’, where the two drugs were prescribed for treating the same symptom viz. high blood pressure.

Finally, the court came to a conclusion that since ITC launched their product before Britannia; the judgement should be made in favour of ITC. But, the interim injunction was not granted by court which was pleaded by ITC. Since, it is just a matter of mistake, no such order was passed or punishment given. Britannia was given three to four weeks to change the packet of the packet of the product. In the end, ITC & Britannia solved the issue outside the court & thus, Britannia removed the colour blue from their products & only used yellow colour. The dispute thus came to an end.[vi]

To conclude with this case, we can clearly see that it was just a matter of mistake made by Britannia. It was not at all done intentionally. That is why even the court gave both the companies an opportunity to solve the issue outside court and they complied with the same. With an wholesome study of the case it is evident that there can be a slight mistake with respect to the packaging or any other factor that may lead to confusion.  Preferably matters of this nature shall be solved outside the court before seeking legal remedy from the same.

Thus, the need of Intellectual Property Rights should be well known and its importance should be spread all over and given priority. If we can get a clear-cut knowledge of Intellectual Property then we can clearly know the branches under which these cases fall and the available remedies for it. Especially the local entrepreneurs shall give paramount importance to the law, so that they do not commit any such mistakes in the near future and thus conduct an honest business because no one is greater for not knowing something.

[i] Dr. VK Ahuja, Law Relating to Intellectual Property Rights, Third Edition, 2017; Lexis Nexis, Gurgaon, Pg- 327.

[iii] Dr. Mathew Thomas; Understanding Intellectual Property; 1st Edition 2016; Eastern Book Company, Lucknow; Pg-117.

[iv] Dr. Mathew Thomas; Understanding Intellectual Property; 1st Edition 2016; Eastern Book Company, Lucknow; Pg-122.

[v] Dr. VK Ahuja, Law Relating to Intellectual Property Rights, Third Edition, 2017; Lexis Nexis, Gurgaon, Pg- 330-331.

Prepared by-
Atish Chakraborty (BA LL.B, Sem 8, ALSK)
Debdeep Das (BA LL.B, Sem 4, ALSK)
Manav Sony (BA LL.B, Sem 2, ALSK)
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