Britannia claimed that it had registered a trademark on the packaging of NutriChoice Digestive biscuits on Sep 11, 2020 and had been using the same since 2014, whereas Sunfeast used to have different packaging back then for its digestive biscuits. However, Britannia claimed that subsequently, Sunfeast changed the packaging of its FarmLite 5-Seed Digestive biscuits w.e.f Sep 28, 2020, to be deceptively similar to NutriChoice’s packaging with the intention of encashing Britannia’s goodwill and reputation. Aggrieved by this, Britannia filed a petition alleging that the defendants have infringed the registered trademark of the plaintiff and that the defendants have been passing off their Sunfeast Farmlite 5-Seed Digestive biscuits as those of the plaintiff. Accordingly, the plaintiff sought an interim injunction, restraining the defendants from manufacturing or selling biscuits in the impugned packing.
ARGUMENTS BY THE PLAINTIFF:
- The plaintiff submitted that the earlier packaging used by ITC was not infringing the plaintiff’s pack which makes it evident that the defendants deliberately changed their packaging to deceptively resemble that of the plaintiff.
- The overall appearance of the defendants’ pack is confusingly and deceptively similar to the pack of the plaintiff’s product, in respect of which it has been granted registration by the Trademark Registry.
- It was submitted that the defendants had copied the essential elements of distinction in the plaintiff’s trademark without any valid reason.
- The plaintiff placed reliance on Sections 28 and 29(2) (b) of the Trademark Act.
ARGUMENTS BY THE DEFENDANT:
- The defendants submitted that there are a number of distinctive features on the pack of the defendants’ products which make the two packs so dissimilar as to obviate any possibility of confusion or deception.
- The etching of the brand name of the biscuits on the body of the biscuits is a common industry practice and that, in fact, this feature serves to discredit the plaintiff’s allegation of deceptive similarity, as the brand name of the defendant company as well as of defendants’ biscuits are completely different from those of the plaintiff.
- The defendants maintained that the use of the word "Hi-Fiber" on biscuit packets is a common practice in the industry.
OBSERVATIONS BY THE COURT:
- Confusing or deceptive similarity is the sine qua non for any action, alleging infringement or passing off, to succeed. The onus of proof is on the plaintiff who alleges passing off.
- The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection- not of an idiot, or an amnesiac. It has to be seen as to how such a purchaser would react to the trade mark.
- The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities. If the packs of the plaintiff and the defendant’s biscuits are stored side by side, then, unless the customer is situated at so great a distance that he can see only the colours of the packs, and not the distinctive features thereof, he is unlikely to be confused between the two.
- The different companies manufacturing biscuits prominently display on the pack name of the biscuit minimizing the possibility of any consumer mistakenly purchasing the wrong product, as the plaintiff’s and the defendants’ brands are both reputed and well-known, enjoying their own niche clientele.
- The impugned pack of the defendant is not confusingly similar to that of the plaintiffs, viewed either from the aspect of infringement or of passing off. The court held that no case of infringement, therefore, exists prima facie.
- Holding that there was no likelihood of confusion, the Court, vide the same order, also refused to pass any interim order of injunction with respect to the box packaging of Defendant's “VEDA DIGESTIVE” biscuits
- Sections 29(1) and 29(2) of the Trademark Act have to be interpreted keeping in mind that the points of dissimilarity between rival marks cannot be regarded as irrelevant or be ignored.
- In the event where the similarities can create confusion or deception, dissimilarities, if adequate, can likewise obviate any such possibilities.
- For the purposes of Trademark Act, the perception is to be of the man of average intelligence and imperfect recollection in cases of infringement or passing off.