Observing that consumers generally do not ‘spot six differences’ between two identical biscuit packets, the Madras High Court has restrained ITC Limited from selling their Sunfeast Mom’s Magic Butter biscuits in a blue wrapper that was deceptively similar to the one used by Britannia Industries Limited for its Good Day Butter Cookies.
Justice P.T. Asha granted the interim injunction after pointing out that the Trade Marks Act, 1999 states that the term ‘mark’ would include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
Unlike the old Trade and Merchandise Marks Act, 1958, the law enacted in 1999 had recognised the fact that colour could also be registered as a mark. In fact, a reading of the objects and reasons to the new Act would show that the definition of the term ‘mark’ had been enlarged to include shape of goods, packaging and combination of colours.
“This could possibly be on account of the fact that colour photography had come into existence long back and the manufacturers were attracting consumers both through visual media as well as print media , whereby, the colour of a mark was also given importance,” the judge wrote.
She agreed with Senior Counsel P.S. Raman, representing Britannia Industries, that his client had been using a combination of blue and yellow wrapper for their Good Day Butter Cookies since 1997 whereas ITC had begun to use a similar colour for their butter biscuits suddenly from June 2023 with a dishonest intention.
The judge recorded the submission of Britannia that it had been in the business of biscuits since 1892 when it was started in a small house in Kolkata. It had taken the present Britannia Industries Limited in 1979 and selling biscuits, breads, cakes, rusk and dairy products which included butter, cheese, yogurt and milk.
The most popular brand of the applicant was Good Day which had a huge market base and brings a sizeable turnover for the company ever since it was introduced in 1986. The market share of Good Day Butter Cookies alone was 32.7 % out of the total 61.4% that the entire Good Day brand had cornered.
On the other hand, ITC had entered the butter biscuit business only in 2015 and had been selling them only in red colour wrappers until June 2023. Even now, Sunfeast butter biscuits were continued to be sold in north India in red colour wrappers and only in south India, the respondent company had begun to test the waters by selling them in blue wrappers, Mr. Raman claimed.
