A conscious attempt at copying by itself does not constitute either infringement or passing off. The matter will be examined from the point of view of the customer of average intelligence and imperfect recollection. Unless such a consumer is liable to get confused or deceived, howsoever, questionable the intentions of the defendants may be, no case of infringement or passing off can be said to exist. This auspicious judgment was passed by the High Court of Delhi in the matter of BRITANNIA INDUSTRIES LTD V. ITC LTD & ORS. [I.A. 12115 of 2020 in CS(COMM) 553/2020 and CS(COMM) 554/2020] by Honourable Justice C. Hari Shankar.
In this case, the court dealt with two Civil Commercial suits, wherein in the former case, the Trademark Registry registered a trademark in favour of M/s Britannia Industries Ltd. and now M/s ITC Ltd. is selling “Sunfeast Farmlite 5-Seed Digestive” biscuits in packing which is contended to be deceptively similar to the packing of the plaintiff’s product and thus it is alleged that the defendants have infringed the registered trademark by adopting such confusingly similar packing since the earlier packing had different colors while the new packing has the same color combination however they admitted that they do not have trademark on this combination.
The Court relied on previous cases to cull out principles relevant while assessing deceptive similarity and stated that, “Infringement is a statutory tort, whereas passing off is a tort relatable to common law. The circumstances in which a trademark is infringed are to be found in Section 29 of the Trademarks Act, 1999. Under Section 29, an action for infringement can lie only at the instance of the proprietor of a registered trademark. The circumstances in which infringement takes place are to be found in sub-sections (1) to (4) of Section 29.”
Hence, the Court stated, “It is true that, in examining this aspect, the court is not expected to ferret out points of dissimilarity between two marks, as the absolute identity between marks is rarely if ever, encountered, except where one makes unauthorized use of the mark of another. The examination by the court is, generally, required to be directed towards assessing whether there is a deceptive extent of similarity between the marks irrespective of their individual dissimilar features.”
The Court pointed out different dissimilarities in the two products, equally distinctive feature include the words “SUNFEAST FARMLITE DIGESTIVE”, with the words “SUNFEAST” and “DIGESTIVE”, prominent display of the words “5-SEED DIGESTIVE”, no other manufacturer of biscuits, digestive or otherwise, making biscuits containing the 5 seeds which are to be found in the defendants’ biscuits, do not contain the brand name “NUTRI CHOICE” and the fact that plaintiff’s pack contains the brand “NUTRI CHOICE” in large green prominent letters while the defendants’ pack represents the brand name “FARMLITE” in muted brown letters.
Thus, the Court stated that “When it comes to the question of passing off, additionally, the fact that the “SUNFEAST” logo of the defendant and the “BRITANNIA” logo of the plaintiffs are clearly visible on the face of the rival packs, would also minimize the possibility of a consumer mistakenly purchasing the product of the defendant, assuming it to be that of the plaintiff.” Also, “The similarity in the plaintiff’s trademark/pack and the impugned trademark/pack of the defendants is unlikely to either cause confusion on the part of the public, or lead the public to presume any association between the defendant’s pack and the pack of the plaintiffs.”
The Court also draws similarity from an earlier judgment by the SC and observed that “In a case such as Parle Products, where distinctive a figure as a girl with arms raised, carrying something in the other with a cow or cows near her and hens or chickens in the foreground, with a fence in the background, is common to the two packs, at the very least, an inference of association of the latter pack with the former is inevitable. Such prominently distinctive features – as impress themselves in the mind’s eye, as it were, so as to create an association at a later point of time – are, in my opinion, wanting in the present case. The distinguishing features, in the present case, are, on the other hand, just too many. They more than counterbalance the similarities, and, prima facie, negate any possibility of confusion, much less deception.”
Additionally, in the second civil suit also the court analyzed the issue of proximity between the products due to the same color scheme and stated, “there is no possibility of a customer of average intelligence and imperfect recollection mistaking the defendant’s product for that of the plaintiff, by reason of the similarity between the packs, since the Brand Names are distinctly visible”
Thus, the Court rejected the plea for granting any interim injunction against the impugned pack of the defendant and also dismissed the second commercial civil suit and held that “it is not possible to arrive at prima facie finding in favour of the plaintiff on the aspect of deceptive similarity, and, consequently, infringing or passing off.”