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Britania Industries Limited v. ITC Limited - (High Court of Delhi) (10 Mar 2017)

In a passing off case, it is the goodwill which is sought to be misappropriated


Intellectual Property Rights

Instant appeal is against order passed by a learned single Judge, by virtue of the impugned order, granted an interim injunction against Britannia. ITC had filed said suit seeking an injunction restraining Appellant / defendant (Britannia Industries Limited) from violating its purported rights in the packaging / trade dress of its product “Sunfeast Farmlite Digestive – All Good” biscuit by allegedly using a deceptively and confusingly similar trade dress for its “Nutri Choice Digestive Zero” biscuit. An injunction was sought for restraining Britannia from, inter alia, passing off ITC’s alleged rights in trade dress / packaging / label and dilution of the mark etc.

From interim injunction order, it is evident that Britannia has been restrained from using colour blue in packaging for the “Digestive Zero” variant of biscuits, while it has been permitted to retain the colour – yellow. Entire controversy in present appeal centres around use of blue and / or its variants in packaging. It is, therefore, clear that in case the appellant / Britannia uses same packaging, but substitutes the blue with any other colour, which is not a variant of blue, then there would be no case for passing off. It further follows that, all other elements of packaging other than combination of yellow with blue do not, at this prima facie stage, make out a case of passing off vis-à-vis the trade dress/get-up.

It is evident that a passing off action has to be examined from the standpoint of three factors: (1) goodwill and reputation; (2) misrepresentation / possibility of deception; and (3) likelihood of damage. Goodwill and reputation do not refer to the same thing though, there could be some degree of overlap. There may be a reputation and yet there may not exist any goodwill. As an example, a particular mark may have a reputation worldwide. But, there may be no sales under that mark in a particular territory, say, India. Thus, although mark would have a reputation worldwide, including India, it would not have a goodwill attached to it in India. It is not just the reputation, but the goodwill which constitutes property as it represents a link between business and the customer.

It is evident that in a passing off case, it is the goodwill which is sought to be misappropriated. It is this misappropriation which provides a cause of action at common law. Thus, before a passing off action can succeed, the plaintiff must establish that a goodwill attaches to the goods he supplies in the mind of the purchasing public by association with the identifying get-up under which particular goods or services are offered to the public. The connection between get-up must be such that it is recognized by public as distinctive specifically of Plaintiff’s goods or services. In facts of present case, ITC, in order to succeed at this stage, must establish, at least prima facie, that combination of yellow and blue that is used in its packaging for its “Sunfeast Farmlite Digestive – All Good” biscuit has become distinctive specifically of its goods. Whenever a possible customer sees a packaging for digestive biscuits using the combination of yellow and blue, it is immediately recognized as being sourced from Plaintiff and not from anyone else. It is well-settled that each case turns upon its own facts. Combination of yellow and blue as used by ITC for its “Sunfeast Farmlite Digestive – All Good” biscuits – has not become so identified with its goods as to become a “badge of its goodwill”.

Appropriation of and exclusivity claimed vis-à-vis a get-up and particularly a colour combination stands on a different footing from a trade mark or a trade name because colours and colour combinations are not inherently distinctive. It should, therefore, not be easy for a person to claim exclusivity over a colour combination particularly when the same has been in use only for a short while. It is only when it is established, may be even prima facie, that colour combination has become distinctive of a person’s product that an order may be made in his favour. Court felt that present is not such a case. When the first element of passing off, is not established, there is no need to examine the other elements of misrepresentation and likelihood of damage.


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