Delhi High Court
Britannia Industries Ltd vs Itc Ltd & Ors. on 5 April, 2021
Author: C. Hari Shankar
Bench: C.Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on:24thMarch, 2021
Decided on: 5th April, 2021
I.A. 12115/2020 in
+ CS(COMM) 553/2020
BRITANNIA INDUSTRIES LTD ..... Plaintiff
Through: Mr. Sudhir Chandra and Mr.
Sandeep Sethi, Sr. Advs. assisted by Mr.
Sagar Chandra, Ms. Ishani Chandra and Ms.
Shubhie Wahi, Advs.
versus
ITC LTD & ORS. ..... Defendants
Through: Mr. Sajan Poovayya, Sr. Adv.
with Mr. Saikrishna Rajagopala, Mr. Sudeep
Chatterjee, Ms. Nupur Lamba, Mr.
Pratibhanu Singh and Mr.Kiratraj Sadana,
Advs. for D-1
I.A. 12125/2020 in
+ CS(COMM) 554/2020
BRITANNIA INDUSTRIES LTD ..... Plaintiff
Through: Mr. Jayant Mehta, Sr. Adv. with
Mr. Sagar Chandra, Ms. Ishani Chandra and
Ms. Shubhie Wahi, Advs.
versus
ITC LTD & ORS. ..... Defendants
Through: Mr. Sajan Poovayya, Sr. Adv.
with Mr. Sudeep Chatterjee, Ms. Nupur
Lamba, Mr. Pratibhanu Singh and Mr.
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:05.04.2021
11:43:31
Kiratraj Sadana, Advs. for D-1
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
% JUDGMENT
I.A.12115/2020 in CS (Comm) 553/2020
The lis
1. On 11th September, 2020, the Trademark Registry registered the
following trademark in favour of the plaintiff M/s Britannia Industries
Ltd., in respect of "biscuits, bread, buns, rolls, bakery products, coffee,
tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, savouries, snacks, cookies, pastry and
confectionary; cakes, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces, spices croissants", in Class 30 of the Trade
Marks Rules, 2017:
2. The plaintiff manufactures and clears "Nutri Choice Digestive"
biscuits, the packing whereof employs the above registered trademark.
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The pillow pack, in which the plaintiff "Nutri Choice Digestive"
biscuits are packed and sold, looks like this :
3. The plaintiff is aggrieved by the fact that the defendants M/s
ITC Ltd. are manufacturing and selling "Sunfeast Farmlite 5-Seed
Digestive" biscuits in packing which is, according to the plaintiff,
deceptively similar to the packing in which the plaintiff sells its "Nutri
Choice Digestive" biscuits. By adopting such confusingly similar
packing, it is alleged that the defendants have infringed the registered
trademark of the plaintiff. The plaintiff also alleges that the defendants
are passing off their "SUNFEAST FARMLITE 5-SEED
DIGESTIVE" biscuits as those of the plaintiff. The packing, in which
the defendants clear and sell their biscuits, looks like this:
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4. Accordingly, the plaintiff has sought an interim injunction,
restraining the defendants from manufacturing or selling biscuits in
the impugned packing, pending disposal of the present suit.
Proceedings thus far
5. Summons were issued in the suit and notice was issued in the
present application, by this Court, on 16th December, 2020. On the
said date, this Court recorded the submission, of learned Counsel for
the defendants, that the defendants would not release the impugned
pack/trade dress in the market, though they would continue to
manufacture the same. This Court clarified, however, that the order
would not impact those packages of the defendants which were
already in the market.
6. This order continues to remain in force till date, as it was
extended from time to time. As considerable stocks of the defendants'
products have accumulated, awaiting release into the market and sale,
the defendants sought modification of the aforesaid order, by
permitting the defendants to release, into the market, the goods already
manufactured by them. Mr. Rajagopal, learned Counsel for the
defendants submitted that, while tendering the aforesaid statement in
Court on 16th December, 2020, he did not envisage accumulation of
such a huge stock of biscuits. Biscuits being a perishable commodity,
Mr. Rajagopal prayed that directions, for release of the biscuits
already manufactured, be issued by the Court.
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7. Instead of examining the prayer for modification of the
statement made by learned Counsel for the defendants on 16th
December, 2020, with consent of learned Counsel for both parties, the
present application, under Order XXXIX Rule 1 and 2, filed by the
plaintiff, was finally heard. The plaintiff was represented by Mr.
Sudhir Chandra and Mr. Sandeep Sethi, learned Senior Counsel and
the defendants were represented by Mr. Sajan Poovayya, learned
Senior Counsel assisted by Mr. Saikrishna Rajagopal.
The legal position
8. Before adverting to the facts of the present case and contentions
advanced by learned Senior Counsel at the Bar, it would be
appropriate, in brief, to reconnoitre the legal position, insofar as
actions for infringement and passing off are concerned.
9. This Court has had occasion, in the recent past, to study various
decisions in this regard, and attempt to cull out the principles
emanating therefrom, in its judgments in FDC Ltd. v. Faraway Foods
Pvt. Ltd.1and Natures Essence Pvt. Ltd. v. Protogreen Retail
Solutions Pvt. Ltd.2. On the aspect of deceptive similarity, this Court,
after perusing the decisions in Satyam Infoway (P) Ltd. v. Siffynet
Solutions (P) Ltd.3, Cadila Health Care Ltd. v. Cadila
1
MANU/DE/0230/2021
2
MANU/DE/0474/2021
3
(2004) 6 SCC 145
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Pharmaceuticals Ltd.4, Kaviraj Pt. Durga Dutt Sharma v. Navaratna
Pharmaceuticals Laboratories5, National Sewing Thread Co. Ltd. v.
James Chadwick & Bros Ltd.6, Corn Products Refining Co. v.
Shangrila Food Products Ltd.7, Amritdhara Pharmacy v. Satya Deo
Gupta8, K. R. Krishna Chettiar v. Shri Ambal & Co.9, F. Hoffman-
La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.10,
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra
Ltd.11, Laxmikant V. Patel v. Chetanbhai Shah12, Khoday Distilleries
Ltd. v. Scotch Whisky Association13, Nandhini Deluxe v. Karnataka
Co-operative Milk Producers Federation Ltd.14 and Wockhardt Ltd.
v. Torrent Pharmaceuticals Ltd.15, culled out the following principles:
(i) In assessing deceptive similarity, the class of the
customer who would purchase the product is relevant. The
look/appearance, and the sound, of the trade marks, as well as
the nature of the goods, are all relevant considerations.
Surrounding circumstances are also relevant.
(ii) The onus of proof is on the plaintiff who alleges passing
off. As against this, in an opposition to the registration of a trade
4
(2001) 5 SCC 73
5
AIR 1965 SC 980
6
AIR 1953 SC 357
7
AIR 1960 SC 142
8
AIR 1963 SC 449
9
(1969) 2 SCC 131
10
(1969) 2 SCC 716
11
(2002) 2 SCC 147
12
(2002) 3 SCC 65
13
(2008) 10 SCC 723
14
(2018) 9 SCC 183
15
(2018) 18 SCC 346
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mark, the onus to prove deceptive similarity is on the defendant
who seeks non-registration, or removal of the trade mark from
the register.
(iii) "Confusion" refers to the state of mind of the customer
who, on seeing the mark, thinks that it differs from the mark on
the goods which he has previously bought, but is doubtful
whether that impression is not due to imperfect recollection.
The question is one of first impression.
(iv) This is especially true in the matter of phonetic similarity.
A meticulous comparison of the words, syllable by syllable, is
to be avoided. The possibility of careless pronunciation and
speech, both on the part of the buyer walking into the shop, as
well as the shop assistant, is also required to be factored into
consideration.
(v) The matter has to be examined from the point of view of
a person of average intelligence and imperfect recollection. It
has to be seen as to how such a purchaser would react to the
trade mark, the association which he would form and how he
would connect the trade marks with the goods he would be
purchasing.
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(vi) The Pianotist test16, postulated over a century ago, has
repeatedly been endorsed by the Supreme Court, as the
definitive test to be adopted while comparing rival trade marks.
According to this test, the Court is required to judge the rival
trade marks by their look and sound, and consider,
(a) the goods to which they are to be applied,
(b) the nature and kind of customer who would be
likely to buy those goods,
(c) all surrounding circumstances and
(d) the consequences which would follow if each of
the marks is used in the normal way as the trade mark for
the goods of the respective owners.
While doing so, the common part of the words forming the
competing marks may not be decisive. The overall similarity of
the composite words is required to be seen, having regard to the
circumstance (if applicable) that both are on like goods of
similar description. The test to be applied is whether, if the two
marks are used in a normal and fair manner, there is likelihood
of confusion or deception.
(vii) The whole word/mark is to be considered. An ordinary
man would not split a word or name, in a trade mark, into its
components, but would go by the overall structural and phonetic
similarity of the marks at the nature of the goods previously
16
Enunciated in In re. Pianotist Application, (1906) 23 RPC 774
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purchased, or of which he has been told and which he wants to
purchase. It has to be examined whether the totality of the trade
mark of the defendant is likely to cause deception/confusion or
mistake in the minds of the persons accustomed to the existing
trade mark of the plaintiff.
(viii) The resemblance may be phonetic, visual or in the basic
idea represented by the plaintiff's mark. The Court is, however,
required to apply both the phonetic and the visual tests. At
times, ocular similarity may be sufficient to find possibility of
confusion/deception, even if the marks are visually dissimilar,
though ocular similarity, by itself, may not, generally, be the
decisive test. Where, however, (i) in all other respects, the
marks of the plaintiff and defendant are different, (ii) the
word/words, in the marks, which are phonetically similar,
cannot be regarded as the dominant word, or essential feature, in
the marks, and (iii) the surrounding circumstances also belie any
possibility of confusion, it has been held that deceptive
similarity cannot be found to exist merely on the basis of
phonetic similarity or even identity. The matter, apparently, is
always one of fact. The Court would have to decide, on a
comparison of the two marks, and the parts thereof which are
phonetically similar, as to whether such phonetic similarity is
likely, considering all other circumstances, to confuse or
deceive a purchaser of average intelligence and imperfect
recollection, always bearing in mind the nature of the goods,
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and the degree of circumspection which would be expected of
the purchasers who would purchase such goods.
(ix) The Court is required to examine whether the essential
features of the plaintiff's mark are to be found in the mark of the
defendant. Identification of the essential features is a question of
fact, left to the discretion of the Court.
(x) No objective standards are possible, regarding the degree
of similarity which is likely to cause deception. It has to be seen
from the viewpoint of the purchasers of the goods.
(xi) The test to be applied would depend on the facts of the
case. Precedents are valuable only to the extent they specify
tests for application, and not on facts.
(xii) On the issue of deceptive similarity, and especially with
respect to the aspect of phonetic similarity, English cases are
not of relevance. English cases are useful only to the extent they
aid in understanding the essential features of trade mark law.
The tests for deceptive similarity, which apply in other
jurisdictions, may not always apply in India.
10. The first aspect to be examined, in any action for infringement
or passing off is, therefore, the aspect of deceptive similarity.
Infringement is a statutory tort, whereas passing off is a tort relatable
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to common law. The circumstances in which a trademark is infringed
are to be found in Section 29 of the Trademarks Act, 1999 ("the
Trademarks Act")17. 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
17
"29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively
similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and
in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part of the public, or
which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to
cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his business concern or part of the name, of his business concern
dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the registered trade
mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a
material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or
services, provided such person, when he applied the mark, knew or had reason to believe that the application
of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade
mark may be infringed by the spoken use of those words as well as by their visual representation and
reference in this section to the use of a mark shall be construed accordingly."
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sub-sections (1) to (4) of Section 29. Infringement occurs, under
these provisions,
(i) where the defendants' mark is identical with, or
deceptively similar to, the plaintiff's trademark and is used in
relation to goods or services in respect of which the trademark
is registered. [Section 29(1)],
(ii) where the defendants' trademark is identical to the
plaintiff's trademark, and the goods or services of the defendant
are so similar to those of the plaintiff, as is likely to cause
confusion, or association with the registered trademark [Section
29(2)(a)],
(iii) where the impugned trademark is similar to the registered
trademark and the goods or services of the defendant are
identical to those of the plaintiff, or so similar as is likely to
cause confusion, or have an association with the plaintiff's
trademark [Section 29(2)(b)],
(iv) where the registered trademark and the goods or services
of the defendant are identical to those of the plaintiff, as is
likely to cause confusion or have an association with the
plaintiff's trademark [Section 29(2)(c)] (in which case Section
29(3) creates a presumptive fiction of likelihood to cause
confusion on the part of the public), and
(v) where the defendants' mark, though identical with or
similar to the registered trademark of the plaintiff, is used in
relation to goods or services not similar to those of the plaintiff,
if the registered trademark has a reputation in India and use of
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the defendants' mark, without due cause, takes unfair advantage
of, or is detrimental to, the distinctive character or repute of the
plaintiff's registered trademark.
Analysis and Conclusion
Undisputed Facts
11. There is no dispute regarding the following facts:
(i) The plaintiff's trademark was registered on 11th
September, 2020, and the plaintiff has been using the said
trademark, on its digestive biscuits since 2014. Applying the
law laid down by the High Court of Bombay in SKOL
Breweries Ltd. v. Som Distilleries & Breweries Ltd.18, and this
Court in Radico Khaitan Ltd. v. Brima Sagar Maharashtra
Distilleries Ltd.19,the plaintiff is deemed to be using the
registered trademark since 2014.
(ii) The defendants do not have any registered trademark, in
respect of the impugned pack. The defendants' "SUNFEAST",
"SUNFEAST FARMLITE" and "5-SEED DIGESTIVE"
biscuits were launched, under the impugned pack on 28th
September, 2020.
18
2012 (49) P.T.C. 231 (Bom.)
19
2014 (60) PTC 405 (Del)
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(iii) Prior to adopting the impugned packing, the defendants
were marketing their "digestive" biscuits including their
"SUNFEAST", "SUNFEAST FARMLITE" and "5-SEED
DIGESTIVE" biscuits, in the following packs:
The plaintiff submits that these packs were not, in any manner,
infringing the plaintiff's pack and, in fact, uses this fact as a
ground to contend that the defendants deliberately changed their
pack to deceptively resemble that of the plaintiff, to encash on
the plaintiff's goodwill and reputation.
(iv) The plaintiff does not have any registration for the colour
combinations "red and yellow". In this context, I may note that
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one of the main contentions advanced by the defendants was
that, as the plaintiff does not have any separate registration for
the "red and yellow" colour - though colour combinations are
individually registrable as "marks" within the meaning of
Section 2(m) of the Trademarks Act20. The plaintiff has
submitted, in response, that it was not claiming any
infringement or passing off on the defendants' products because
of the usage by the defendants of the red and yellow colour
combination on its pack. The plaintiff has also acknowledged
the fact that it has not registered the red and yellow colour
combination as a registered trademark. Mr. Sudhir Chandra has
clarified that the claim of the plaintiff is that 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.
Deceptive similarity
12. Confusing or deceptive similarity is the sine qua non for any
action, alleging infringement or passing off, to succeed. In the
absence of confusing or deceptive similarity, other aspects cease to
matter.
20
"(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours or any combination thereof"
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13. Rival Contentions
13.1 Mr. Sudhir Chandra and Mr. Sandeep Sethi, learned Senior
Counsel for the plaintiff, submitted that the overall trade dress, colour
combinations, colour scheme, arrangement of features, get-up and
layout of the impugned pack of the defendants were deceptively
similar to that of the plaintiff. They, inter alia, highlight the following
similarities:
(i) use of the colour scheme of red and yellow, with yellow
on the left side of the pack and red on the right,
(ii) depiction of the image of the biscuit on the right side,
(iii) embossing of the brand name of the company and of the
biscuit on the body of the biscuit in similar font and style,
(iv) use of the word "Hi-Fibre", below the name of the
biscuit,
(v) depiction of the words "NUTRI CHOICE" in the case of
the plaintiff's pack, and of the words "5-SEED DIGESTIVE" in
the defendants' pack, on a white background,
(vi) depiction of two sheaves of wheat below the picture of
the biscuit on the right side of the pack along with scattered
grains of wheat,
(vii) an orange shading at the intersection of the yellow and
the red colour on the pack, and
(viii) depiction of the word "digestive" in red lettering on the
pack.
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13.2 It was submitted that the defendants had copied the essential
elements of distinction in the plaintiff's trademark without any valid
reason. In this context, Mr. Sudhir Chandra relies on the fact that the
trade mark, of which infringement is being alleged, stands registered
in the plaintiff's favour in respect of "biscuits" and would, therefore,
cover all categories of biscuits. In other words, submits Mr. Sudhir
Chandra, it would not be permissible for anyone to use any mark,
deceptively similar to that of the plaintiff, in respect of any kind of
biscuits. He has placed reliance, in this context, on Section 28 of the
Trademark Act, apart from Section 29. He submits that the manner in
which the defendants' pack infringes the registered trademark pack of
the plaintiff directly attracts Section 29(2)(b).
13.3 Mr. Sudhir Chandra also submits that, as the biscuits are
normally stocked together in stores, there is also a clear aspect of
"initial interest confusion". He further submits that, as the plaintiff's
and the defendants' biscuits are both digestive biscuits, the
constituents or ingredients of the biscuits are immaterial, in which
context Mr. Sudhir Chandra once again invites my attention to the
facts that registration has been granted to the plaintiff for "biscuits" as
an omnibus class. Mr. Sudhir Chandra relies on the judgment of the
Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories5, Parle Products (P) Ltd. v. J. P. & Co.
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Mysore21, and of this Court in Glossy Color & Paints Pvt. Ltd. v.
Mona Aggarwal22..
13.4 Mr. Poovayya, learned Senior Counsel for the defendant,
submits, per contra, that there are any 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. He
invites attention, in this context, to the fact that
(i) the plaintiff's pack contained two colours, i.e. red and
yellow, whereas the defendants' pack contained red, yellow and
saffron,
(ii) yellow is the predominant colour in the plaintiff's pack
whereas red is the predominant colour in the defendants' pack,
(iii) the plaintiff's pack predominantly displays the brand
name of the plaintiff pack "NUTRI CHOICE" in large green
letters, whereas the defendants' brand name is "FARMLITE"
printed in brown letters on the defendants' pack,
(iv) the defendants' pack contains a vertical curved band
towards the centre of the pack, in which the seeds contained in
the defendants' biscuits are reflected from top to bottom under
the head "Power Seeds", with a picture of each seed, indicating,
from top to bottom, flak seeds, chia seeds, watermelon seeds,
sunflower seeds and pumpkin seeds and
21
1972 SCC (1) 618
22
2015 (64) PTC 316 (Del.)
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(v) the brand name of the defendants', "SUNFEAST
FARMLITE DIGESTIVE" is predominantly displayed on the
biscuits, in the photograph on the impugned package.
13.5 Mr. Poovayya further submits that etching of the brand name of
the biscuits on the body of the biscuits was a common industry
practice and that, in fact, this feature would serve 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. He further submits that
representing wheat and grains on the pack of digestive biscuits, is also
a matter of common practice, as these serve to emphasise the
nutritional value of the biscuits and represent their ingredients. In this
context, Mr. Poovayya points out that the defendants' pack also shows
seeds, raisins and almonds, which are not present on the pack of the
plaintiff. Mr. Poovayya also submits that the use of the word "Hi
Fiber" was, again, a matter of common industry practice, as it
represented the high fiber content in the biscuits, again emphasising
their nutritional value. He points out, in this context, that the lettering
and the colour of the word "Hi Fiber" as contained on the impugned
pack of the defendants, is different from that of the plaintiff.
Analysis
14. Having examined the impugned pack vis-a-vis the pack of the
plaintiff, I am unable to convince myself that the pack of the
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defendant is so similar to that of the plaintiff, as is likely to result in
deception or confusion.
15. The definitive test, whether in the case of infringement or
passing off, is that of confusing or deceptive similarity. It is true that,
in examining this aspect, the court is not expected to ferret out points
of dissimilarity between two marks, as absolute identity between
marks is rarely, if ever, encountered, except where one makes
unauthorised 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. It is for this reason that courts have
held that the approach should be one of emphasising the similarities,
rather than the dissimilarities, between the marks.
16. Having said that, points of dissimilarity between rival marks
cannot be regarded as irrelevant. They cannot be ignored. The
perception, whether in the case of infringement or passing off, is to be
that of a person of average intelligence and imperfect recollection -
not of an idiot, or an amnesiac. The average human mind has not been
particularly conditioned to observe only similarities, and overlook
dissimilarities. Section 29(1) uses the word "deceptive", whereas
Section 29(2) uses the expression "cause confusion". Deception and
confusion are both states of mind, of which no physically tangible
evidence can ever be found. If similarities can cause deception or
confusion, dissimilarities, if sufficient, can also obviate any such
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possibility. At the end of the day, the court is required to come to an
opinion as to whether a person of average intelligence and imperfect
recollection is likely be deceived, or to confuse the defendants' marks
(in the case of infringement) or the defendants' product (in the case of
passing off) with that of the plaintiff. If, therefore, between the rival
marks, the points of dissimilarity are so stark that they shade or
overweigh the points of similarity, the court may legitimately arrive at
a conclusion that, irrespective of the points of similarity, no possibility
of confusion or deception exists.
17. For this, one of the most important assessments that the court is
required to make is as to the features, of the rival marks, which are
most prominent. If there is stark dissimilarity in the prominent, or
essential, features of the rival marks, as would impress on the mind of
the person of average intelligence and imperfect recollection, no
finding of confusing or deceptive similarity can be arrived at.
18. The points of similarity, between the plaintiffs' pack and the
defendants' pack, as highlighted by Mr. Sudhir Chandra, cannot be
gainsaid. It is true that (i) both packs use a red and yellow combination
of colors, with yellow on the left and red on the right, (ii) both packs
use the words "DIGESTIVE HI-FIBRE", below the brand name, (iii)
both packs depict the picture of a biscuit on the right side of the
package, with a photograph of sheaves of wheat below the biscuits,
and (iv) in both packs, the prominent word on the left side of the
package ("NUTRI CHOICE" in the case of the plaintiffs and "5 SEED
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DIGESTIVE" in the case of the defendants) are printed out a white
background.
19. At the same time, there are also stark and apparent points of
dissimilarity which, in my opinion, immediately impress themselves
on the mind, even of a person of average intelligence and imperfect
recollection. These may be enumerated as under:
(i) The most important distinction between the two packs is
the brand. The plaintiff's pack contains the brand "NUTRI
CHOICE" in large green prominent letters, on a white
background. As against this, the defendants' pack represents the
brand name "FARMLITE" in much more muted brown letters,
on a yellow background. While the word "FARMLITE" as used
on the defendants pack, does not immediately strike the eye, the
words "NUTRI CHOICE", as used on the plaintiffs pack, are
large and prominent. In my opinion, even a person of average
intelligence and imperfect recollection is bound to notice the
absence, on the pack of the defendant of the words "NUTRI
CHOICE", contained on the pack of the plaintiff. Viewed from
the "passing off" angle, once a person has initially bought the
plaintiffs "NUTRI CHOICE" product, if, on a later occasion, he
comes across the defendants "FARMLITE" biscuits, I find it
difficult to believe that he would confuse the defendants' biscuit
with the biscuit of the plaintiff which he had earlier bought,
purchase the defendants' FARMLITE biscuit confusing it for
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the plaintiff's NUTRI CHOICE biscuit, or even mentally
associate the latter with the former - unless his recollection is so
imperfect he forgets the fact that the earlier biscuit was "NUTRI
CHOICE". The test, to reiterate, has to be that of the perception
of a person of imperfect recollection, and not that of an
amnesiac.
(ii) In this context, there is substance in the submission of
Mr. Poovayya that a person who is prone to having digestive
biscuits and who has bought "NUTRI CHOICE", would
normally recollect the brand name of the biscuit which he has
bought. It is unlikely, therefore, that he would confuse another
package, which does not contain the brand name "NUTRI
CHOICE", as being the biscuit which he had consumed on an
earlier occasion.
(iii) By the same token, digestive biscuits having watermelon
seeds, Chia seeds, flax seeds, pumpkin seeds and sunflower
seeds are, clearly, a species of digestive biscuits sui generis.
Mr. Poovayya submits that there is no other manufacturer of
biscuits, digestive or otherwise, making biscuits containing the
5 seeds which are to be found in the defendants' biscuits. The
plaintiffs have not disputed this position. While examining the
aspect of possibility of confusion or deception, the Court cannot
proceed unmindful of the realities of the times. It is a matter of
common knowledge that consumption of flaxseeds, watermelon
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seeds, Chia seeds and pumpkin seeds have become a matter of
daily routine in many households, especially with persons who
are health-conscious. Multi grain bread, for example,
commands its own distinct clientele. Health-conscious
households, who are prone to consumption of such seeds, would
certainly prefer the biscuits of the defendants to those of the
plaintiff. For them, the biscuits of the defendants would be
"non-substitutable". For the average consumer of digestive
biscuits, therefore, the biscuits of the defendant would have
their own distinct identity, separate from the biscuits of the
plaintiff.
(iv) The defendants have also consciously underscored this
aspect of their biscuits by prominently displaying, on the
package, the words "5-SEED DIGESTIVE", apart from a clear
pictorial representation of the five seeds contained in the
biscuits. The words "5 SEED" are absent on the plaintiff's
pack. As per the submissions of Mr. Poovayya - which is not
controverted by learned Senior Counsel for the plaintiffs - the
defendants' biscuit is one of its kind, as it contains five distinct
seeds, i.e., chia seeds, flaxseeds, watermelon seeds, pumpkin
seeds and sunflower seeds, none of which are contained in the
plaintiff's biscuits. Clearly, therefore, the defendants' biscuit
has a unique identity, which is distinct and different from that of
the plaintiffs' biscuit. It is this identity - of being a "five seed
biscuit", which is prominently reflected by the use of the words,
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"5 SEED", as contained on the defendants' pack. The fact that
the words "5 SEED", is in bright red letters on a white
background, confers the words additional prominence and
render them even more capable of being re-collected by the
average consumer. The use of the words "5 SEED", are also
capable of acting as a distinctive feature, for the average
consumer to distinguish the product of the defendants from that
of the plaintiff, and avoid any possibility of confusion or
deception. To my mind, any presumption that a customer, who
comes across the defendants' biscuits, with the clear words "5
SEED DIGESTIVE" prominently displayed on the package,
with photographs of the 5 seeds, contained in the biscuits, in a
clear red band across the centre of the package, vertically from
top to bottom, the band outlined in gold, is likely to confuse the
defendants' biscuits with the "NUTRI CHOICE" biscuits of the
plaintiff, would be far-fetched and unrealistic.
(v) A fourth and equally distinctive feature of the defendants'
product vis-à-vis that of the plaintiff, is the fact that the picture
of the biscuit, on the right side of the package, clearly shows, in
stark prominence, the words "SUNFEAST FARMLITE
DIGESTIVE", with the words "SUNFEAST" and
"DIGESTIVE", in curved letterings towards the upper and
lower halves of the biscuit, the words "FARMLITE", in a
horizontal line towards the center of the biscuit. As against this,
the plaintiffs biscuit has the words "BRITANNIA" and
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DIGESTIVE" engraved on the face of the biscuit in curved lines
towards the top and lower halves and the words "NUTRI
CHOICE", embossed horizontally towards the center of the
biscuit. The different brands of the biscuit and the different
companies manufacturing the biscuits are, therefore,
prominently displayed on the pack both of the plaintiff as well
as of the defendants. It is only, therefore, if the mythical
gentleman of average intelligence and imperfect recollection
does not recollect either the brand of the biscuit or the name of
the company manufacturing the biscuit, or even the prominent
features of the left side of the pack (as emphasized
hereinabove), that he is likely to confuse the "FARMLITE 5
SEED DIGESTIVE" biscuit of the defendant for the "NUTRI
CHOICE DIGESTIVE" biscuit of the plaintiff.
20. The plaintiff has also enclosed photographs of the manner in
which the packs of the plaintiff and the defendants products are
stacked in stores, side by side, to submit that they look deceptively
similar. Here, again, I am unable to agree with learned Senior Counsel
for the plaintiff. If the packs of the plaintiff and the defendants biscuits
are stored side by side, then, unless the customer is situated at so great
a distance that he can see only the colors of the packs, and not the
distinctive features thereof, he is unlikely to be confused between the
two. If, on the other hand, he has, before him, the defendants' product,
for the reasons already aforementioned, he is equally unlikely, in my
view, to be confused or deceived into mistaking the "FARMLITE 5
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SEEDS DIGESTIVE" biscuits of the defendants for the "NUTRI
CHOICE DIGESTIVE" biscuits of the plaintiff.
21. Apart from all this, the fact that the brand names of the plaintiff
and the defendants are prominently displayed on the packs is also, in
my view, of no little importance. The plaintiff's and the defendants'
brands are both reputed and well-known, enjoying their own niche
clientele. I have already found the impugned pack of the defendant not
to be confusingly similar to that of the plaintiffs. No case of
infringement, therefore, exists, prima facie. 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.
22. In this context, I deem it appropriate to emphasize that, before
visualizing the consumer of "average intelligence and imperfect
recollection", it is necessary for the Court to be conscious of the
customer base to which the consumer belongs. It is true that the
plaintiff's trade mark is registered for "biscuits" as an omnibus
category. Mr. Sudhir Chandra and Mr. Sandeep Sethi are, therefore,
correct in submitting (on the aspect of infringement, not passing off),
that the legislative proscription contained in Section 29 of the Trade
Marks Act, against infringement, would apply to all biscuits, and not
digestive biscuits alone. For this purpose, learned Senior Counsel for
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the plaintiff rely on Section 29(2)(b), to submit that the clause also
covers infringement by use of similar trade marks on identical goods.
Therefore, submit learned Senior Counsel, as the goods of the plaintiff
and defendants are the same, viz. biscuits (in respect of which the
plaintiff has an omnibus trade mark registration), mere similarity of
the impugned trade mark of the defendants with that of the plaintiff
would suffice. The difficulty in accepting this submission stems from
the simple statutory reality that Section 29(2)(b) does not end with the
words "by such registered trade mark" but continues with the words
"is likely to cause confusion of the part of the public, or which is likely
to have an association with the trade mark". In other words, for
infringement to be proved to have occurred, within the meaning of
Section 29(2)(b), the plaintiff would have to establish that
(i) the defendant is not the registered owner of the allegedly
infringing trade mark, or a permitted user thereof,
(ii) the impugned trade mark is similar to the trade mark of
the plaintiff,
(iii) the goods covered by the impugned trade mark are
identical or similar to the goods covered by the plaintiff's trade
mark, and
(iv) because of such similarity of trade mark, and similarity
or identity of goods covered thereby, the impugned trade mark
is
(a) likely to cause confusion on the part of the public,
or
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(b) likely to have an association with the registered
trade mark of the plaintiff.
Condition (iv) is, in my prima facie view, not satisfied in the present
case. For the reasons already stated hereinbefore, the similarity in the
plaintiff's trade mark/pack and the impugned trade mark/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.
23. Considerable reliance was placed by learned Senior Counsel for
the plaintiff on the following passage from Parle Products21 (para 9 in
SCC):
"It is, therefore, clear that in order to come to the conclusion whether
one mark is deceptively similar to another, the broad and essential
features of the two are to be considered. They should not be placed
side by side to find out if there are any differences in the design and
if so, whether they are of such character as to prevent one design
from being mistaken for the other. It would be enough if the
impugned mark bears such an overall similarity to the registered
mark as would be likely to mislead a person usually dealing with one
to accept the other if offered to him. In this case we find that the
packets are practically of the same size, the colour scheme of the two
wrappers is almost the same; the design on both though not identical
bears such a close resemblance that one can easily be mistaken for
the other. The essential features of both are that there is a girl with
one arm raised and carrying something in the other with a cow or
cows near her and hens or chickens in the foreground. In the
background there is a farm house with a fence. The word "Gluco
Biscuits" in one and "Glucose Biscuits" on the other occupy a
prominent place at the top with a good deal of similarity between the
two writings. Anyone in our opinion who has a look at one of the
packets today may easily mistake the other if shown on another day
as being the same article which he had seen before. If one was not
careful enough to note the peculiar features of the wrapper on the
plaintiffs' goods, he might easily mistake the defendants' wrapper for
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the plaintiffs' if shown to him some time after he had seen the
plaintiffs'. After all, an ordinary purchaser is not gifted with the
powers of observation of a Sherlock Homes. We have therefore no
doubt that the defendants' wrapper is deceptively similar to the
plaintiffs' which was registered. We do not think it necessary to refer
to the decisions referred to at the bar as in our view each case will
have to be judged on its own features and it would be of no use to
note on how many points there was similarity and in how many
others there was absence of it."
(Emphasis supplied)
24. This passage, if anything, would seem to hold against the stand
canvassed by the plaintiffs. The only similarity between that case, and
this, is that, to some extent, the colour combination on the packs of the
plaintiff and the defendants is the same. In Parle Products21,
however, the Supreme Court found the colour scheme to be the same.
That apart, the Supreme Court noted that (i) a girl with one arm raised
and 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,
was the same essential feature in both packs (in fact, this stark
similarity may, even by itself, have been sufficient to justify the
finding of likelihood of confusion or deception), (ii) the rival brand
names were "Gluco Biscuits" and "Glucose Biscuits" (which are,
obviously, phonetically similar) and (iii) these brand names were
prominently displayed at the top of the pack with a good deal of
similarity between the two writings. None of these similarities - or
similarities akin in grade - can be said to exist, between the rival
packs in the present case. The mere representation of biscuits, with
sheaves of wheat below them - which, too, as Mr. Poovayya rightly
submitted, appears to be a practice in the case of digestive biscuits
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made out wheat - is, in my view, totally insufficient to lead to
confusion or deception. The judgement of the Supreme Court in Parle
Products21, therefore, if anything, emphasizes and underscores the
important of the necessity of similar features, beyond merely similarity
in pack size and colour scheme.
25. It was sought to be contended, by learned Senior Counsel for
the plaintiff, that the defendants had, by copying its "essential
features", infringed the plaintiff's registered trade mark. The
judgement in Parle Products21 effectively discredits this submission.
In the case where the trademark consists of the entire pack, such as the
present, identification of one, or the other features, as "essential", is no
easy task. Significantly, even in Parle Products21, the Supreme Court
did not rest with the finding that, as the size of the packs and the
colour scheme thereon were the same in the rival marks, infringement,
or passing off, stood established, but went on to record findings
regarding actual copying of the essential features of the packs, viz. the
picture of the girl with one arm raised and 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, the words "Gluco
Biscuits" in one and "Glucose Biscuits" on the other, and both the
names being represented, in similar writings, towards the top of each
pack. In the present case, such parallels are absent. As already
pointed out, the names of the two biscuits, as also their brands, are
totally different. They are prominently displayed in different colours.
Both packs contain the photograph of the biscuit, it is true, but, once
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the name of the manufacturer and the brand of the biscuit is also
prominently visible on the face of each, the allegation of copying of
essential features and of possibility of confusion or deception on that
score, would not sustain. The sheaves of wheat, submits Mr
Poovayya, are not unique either to the plaintiff's packs or the
defendants', they are seen in other packs of digestive biscuits as well.
All said and done, therefore, it cannot be said, prima facie, that the
defendants' packs have copied the essential features of the plaintiff's
pack and have, thereby, infringed the plaintiff's registered trademark,
or that the defendants have sought to pass off their packs as those of
the plaintiff.
26. Interestingly, Section 29 of the Trade Marks Act does not use
the mere word "similar". It uses, in sub-section (1), the words
"identical or deceptively similar". Sub-section (2) conditions all three
clauses, thereunder, with the requirement of "confusion" in the mind
of the consumer. One may, therefore, say that the similarity must be
either "deceptive" or "confusing". The Trade Marks Act does not
define either "confusion" or "deception". Etymologically,
"confusion" and "deception" are alike, the effect on the mind of the
victim being almost the same, the distinction being essentially with
respect to the intent of the person who seeks to confuse or deceive.
"Deception", in common parlance, involves an element of mens rea,
or guilty intent. With, or without, intent, however, the tort stands
committed.
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27. Confusion or deception is, however, not readily to be assumed.
The man of average intelligence and imperfect recollection cannot be
treated, for the purposes of the Trade Marks Act, as being easily
confused or deceived. It is for this reason that the legislature has,
consciously, used the word "deceptively similar" along with the word
"identical". Applying the noscitur a sociis principle23, the similarity,
therefore, must be one which confuses, or deceives one into believing
either that the later product is the same as the earlier, or that they are
made by the same manufacturer, or that there is an association
between them. In a case such as Parle Products21, where as 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.
28. 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.
23
"The meaning of a word is to be judged by the company it keeps." - Refer Rohit Pulp & Paper Mills v
Collector of Central Excise, (1990) 3 SCC 447
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29. Insofar as the allegation of passing off is concerned, keeping all
these factors in mind, it is extremely unlikely that a consumer,
howsoever average his intelligence and howsoever imperfect his
recollection, would purchase the SUNFEAST FARMLITE
DIGESTIVE biscuit mistaking it to be BRITANNIA NUTRI CHOICE
DIGESTIVE biscuit, merely because of the perceived similarities
between the packs, as argued by Mr. Sudhir Chandra.
30. Prima facie, therefore, I am unable to accept the plaintiffs'
submission that there is any deceptive similarity between the products
of the plaintiffs and the defendants.
31. In view of the aforesaid findings, it is not necessary for me to
return, even prima facie, any detailed findings regarding the other
submissions advanced by learned Senior Counsel, apropos priority of
user, reputation, goodwill, or the fact that the earlier pack of the
defendants, for its FARMLITE 5 SEED DIGESTIVE biscuits was
completely different from that of the plaintiffs. It may be true, as
submitted by learned Senior Counsel for the plaintiff, that the manner
in which the defendant has altered its pack has brought the impugned
pack closer, in appearance, to the pack of the plaintiff. Even so, I am
of the considered opinion that this closeness has not rendered the pack
so proximate, in appearance, as to be confusingly similar to that of the
plaintiff, or to result in the plaintiff mistaking the "FARMLITE 5
SEED DIGESTIVE" biscuit of the defendant for the "NUTRI
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CHOICE DIGESTIVE" biscuit of the plaintiff, viewed either from the
aspect of infringement or of passing off.
32. In view of the aforesaid, I am of the opinion that no case, for
granting any interim injunction, against the impugned pack of the
defendant, can be said to exist.
33. Accordingly, the application is rejected.
IA 12125/2020 in CS(COMM) 554/2020
34. Here, again, the tussle is between the box packs of the plaintiff
and the defendants, in which they clear and sell digestive biscuits. In
CS (COMM) 553/2020, the plaintiff was selling "NUTRI CHOICE
DIGESTIVE" biscuits, and the defendants were selling "FARMLITE
5-SEED DIGESTIVE" biscuits. In CS (COMM) 554/2020, the
plaintiff Britannia sells "NUTRI CHOICE 5 GRAIN DIGESTIVE"
biscuits, whereas the defendants sell "SUNFEAST FARMLITE
VEDA DIGESTIVE" biscuits. Both are sold in box packs.
35. I may note, here, that the defendants are also selling their
"SUNFEAST FARMLITE VEDA DIGESTIVE" biscuits in pillow
packs. However, there is no specific challenge, in the plaint, to the
pillow packs wherein the defendants sell their "SUNFEAST
FARMLITE VEDA DIGESTIVE" biscuits. Though Mr. Jayant
Mehta, learned Senior Counsel for the plaintiff, valiantly attempted to
envelope, within the challenge in the plaint, the pillow packs wherein
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the defendants sell its "SUNFEAST FARMLITE VEDA
DIGESTIVE" biscuits, I am not prepared to countenance that
submission. The cause of action, in a suit, has to be specifically set
out, and the defendants cannot be taken by surprise. The rival packs,
as depicted in the plaint, are the box packs, in which the plaintiff and
the defendants clear and sell their "5 GRAIN DIGESTIVE" biscuits.
As such, this judgment shall be restrained to the aspect of
infringement and passing off between the box packs in which
"BRITANNIA NUTRI CHOICE 5 SEED DIGESTIVE" biscuits and
"SUNFEAST FARMLITE VEDA DIGESTIVE" biscuits are sold.
36. The rival packs are the following :
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37. When compared with the rival packs in CS (COMM) 553/2020,
the packs in CS(COMM) 554/2020 are, undoubtedly, more proximate
in appearance to each other. The question to be addressed is whether
this proximity is such as to result in the pack of the defendants
becoming confusingly similar to that of the plaintiff (in which case,
prima facie, infringement would be made out) and whether a customer
of average intelligence and imperfect recollection is likely to confuse
the product of the defendants to be that of the plaintiff, on seeing the
two packs of the defendants at different points of time (in which case
the tort of passing off is made out).
38. The controversy, whether in CS (COMM) 553/2020 or CS
(COMM) 554/2020, has to be decided on the anvil of Section 29(2)(b)
of the 1996 Act. Under this provision, "a registered trademark is
infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a
mark which because of its similarity to the registered trademark and
the identity or similarity of the goods or services covered by such
registered trademark, is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered
trademark".
39. The factors which convinced me to answer this question in the
negative in CS(COMM) 553/2020, were (i) the representation of the
words "NUTRI CHOICE" in bold green letters, on the left side of the
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packing of the plaintiff, on a white circular background, whereas, in
the case of the defendants, there was no green lettering on the package
at all and, rather, the brand "FARMLITE" was depicted in muted
brown letters on a yellow background, (ii) the fact that the defendants'
"5 SEED" biscuits were a specie sui generis, as compared to the
biscuits of the plaintiff, which were plain digestive biscuits, (iii) the
clear depiction of this factual distinction by the words "5 SEED
DIGESTIVE" in large red letters on a white circular background on
the pack of the defendants, whereas there was no such depiction on the
pack of the plaintiff, which did not contain the words "5 SEED", (iv)
the depiction of the five seeds contained in the defendants' biscuits, in
a maroon semi-circular band running from the centre upper to the
lower edge of the pack with photographs of the seeds, one below the
other and (v) the words, "SUNFEAST DIGESTIVE FARMLITE", as
engraved on the face of the defendants' biscuits, which was
prominently displayed on the pack, as compared to the words
"BRITANNIA NUTRI CHOICE DIGESTIVE", which were engraved
on the face of the biscuits of the plaintiff, which was also prominently
visible on the pack of the plaintiff.
40. The reasons why these distinguishing features persuaded me to
hold that no confusing similarity, between the packs of the plaintiff
and the packs of the defendants, existed in CS (COMM) 553/2020, is
apparent from the decision in the said case.
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41. When one compares the rival packs in CS (COMM) 553/2020,
with the packs in present case, it is apparent that the degree of
similarity, between the packs of the defendants and the pack of the
plaintiff, in this case, is greater than in CS (COMM) 553/2020. In the
present case, unlike CS (COMM) 553/2020, "NUTRI CHOICE",
brand of the plaintiff and "VEDA DIGESTIVE", brand of defendants,
are both shown in large green letters on a white background. Both the
biscuits have five distinct ingredients, with the plaintiff's biscuits
being "5 Grain" biscuits whereas the defendants' biscuits contain five
Ayurvedic ingredients, i.e. Ashwagandha, Cardamom, Mulethi,
Ginger and Tulsi.
42. Having said so, on a plain glance at the two packs, I am unable
to convince myself that, even in this case, there is a 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.
43. In this case, too,
(i) the rival brands of the plaintiff and the defendant are
distinct and different, the former being "NUTRI CHOICE" and
the latter being, "FARMLITE VEDA",
(ii) being in the nature of box packs, the rival brands of the
plaintiff and defendant are prominently displayed on the face of
the pack ("BRITANNIA", in the case of the plaintiff and
"SUNFEAST FARMLITE", in the case of the defendant),
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(iii) the brand of the defendant, i.e. "FARMLITE", is shown,
as in CS (COMM) 553/2020, in muted brown letters on a
yellow background,
(iv) the defendants' biscuits contain five Ayurvedic
ingredients, namely, Ashwagandha, Cardamom, Mulethi,
Ginger and Tulsi, whereas it is not the case of the plaintiff that
its biscuits contain these ingredients,
(v) these five ingredients are, as in the case of CS (COMM)
553/2020, prominently shown in a curved green band running
from the top to the bottom of the pack, under the title "5
NATURAL INGREDIENTS" (the shade of green being
different from that on the remainder of the pack, thereby
lending it clear additional prominence), with photographs of the
five natural ingredients one below the other, and
(vi) in the case of the defendants' pack, the face of the biscuit,
which is prominently visible to the consumer, has engraved, on
it, "SUNFEAST FARMLITE DIGESTIVE" with the words
"SUNFEAST" and "DIGESTIVE" in curved letterings at the
upper and lower halves of the biscuit and the word,
"FARMLITE", in horizontal letters towards the centre of the
biscuit, whereas the plaintiffs' biscuits merely contain the words
"NUTRI CHOICE", in horizontal letters towards the centre of
the biscuit with no brand name or the word "DIGESTIVE"
[unlike the situation which obtained in CS (COMM) 553/2020].
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44. Mr. Poovayya, learned senior counsel for the defendant, has
drawn my attention to the fact that the "VEDA" category of biscuits is
a niche category, conceived by and indelibly identified with the
defendants. The "VEDA" class of biscuits, submits Mr. Poovayya, are
biscuits containing Ayurvedic ingredients, obviously keeping in mind
the health benefits of such ingredients. These biscuits, he submits,
cater to a very specific class of consumer.
45. In my view, there is considerable weight in these submissions.
The pack of the defendants prominently highlights the unique category
to which the defendants' biscuits belong. Biscuits containing these
Ayurvedic ingredients are not often encountered in the market, and,
therefore, a customer of average intelligence and imperfect
recollection, who has earlier consumed the plaintiff's "NUTRI
CHOICE" biscuits, is in my view, is extremely unlikely to confuse the
defendant's "VEDA DIGESTIVE", biscuits containing five distinct
Ayurvedic ingredients, prominently displayed on the pack, for the
"NUTRI CHOICE", biscuits of the plaintiff. Even more than in the
case of the defendants' "5 SEED DIGESTIVE" biscuits forming
subject matter of CS (COMM) 553/2020 are, therefore, the
defendants' "VEDA DIGESTIVE" biscuits, with these five Ayurvedic
ingredients, a specie sui generis.
46. Passing off has to be viewed from the perspective of the
customer who wants to purchase the product. Is he, having earlier
bought the product of the plaintiff, likely, on later coming across the
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product of the defendant, likely to confuse it as having been made by
the plaintiff? Are the packs so similar that the customer, of average
intelligence and imperfect recollection may, on later coming across the
defendants' pack, associate it with the plaintiff?
47. A prospective customer may come across the product to be
purchased through one of three modes. He may either purchase it
online, or pick it from the shelf, or be handed it by the shop assistant.
Online, the two products are obviously totally different, and there is
virtually no likelihood that the customer would confuse the products.
Even as displayed on the shelf, as in the case of the packs forming
subject matter of CS (COMM) 553/2020, any customer, who is within
viewing distance of the details of the packs, is unlikely to confuse
them. There is no reason to believe that a shop assistant, even
moderately familiar with the difference in the plaintiff's and
defendants' products, will provide, to the customer who wants 5 grain
digestive biscuits, the defendants' product, containing the 5 Ayurvedic
ingredients prominently displayed. Even if he does, it is not possible,
prima facie, to believe that the customer would, on seeing the pack,
link it with the plaintiff, or its "NUTRI CHOICE 5 GRAIN
DIGESTIVE" biscuits. There is, on the other hand, every possibility
of such a customer, who is not looking for biscuits containing
Ayurvedic ingredients such as Aswagandha, Tulsi, and the like,
returning the defendants' biscuits to the shop assistant. Not everyone
can be presumed to be an aficionado of biscuits containing Ayurvedic
herbs.
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48. It is necessary to reiterate, here, that the Court cannot, in a case
such as this, gloss over the distinction between plain digestive biscuits
vis-a-vis "5 grain", "5 seed" or "Veda" digestive biscuits containing
five Ayurvedic ingredients. Each is a distinct specie, with distinct
features, and markedly different, and unique, ingredients. These
distinctive features stand prominently reflected on the packs. The
addition of these distinct ingredients are clearly intended at conveying,
to the public, the unique health features resulting as a consequence.
The Court cannot, therefore, readily presume the digestive biscuit
consumer, even if of average intelligence and imperfect recollection,
to be unaware of the difference between these categories of digestive
biscuits. It is trite, in law, that, while examining the aspect of
deception or confusion, the Court has to identify the precise onsumer
base. Digestive biscuit consumers constitute an entirely different
category of consumers, from consumers of ordinary biscuits. Whether
one applies the "likelihood to cause confusion" test in Section 29(2),
or the "deception" test in Section 29(1), one has to examine the
possibility of deception or confusion keeping this frank reality in
mind. The Court, in my view, would be falling into serious error if it
were to assume that digestive biscuit consumers are ignorant of the
difference between ordinary, 5-grain, 5-seed and Ayurvedic digestive
biscuits, or likely to confuse one for the other, on the basis of the rival
packs. The fact that the registration held by the plaintiffs is in respect
of biscuits per se, as an omnibus class, is entirely irrelevant in this
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context, once, keeping the purveyors of such biscuits in mind, no
possibility of deception or confusion is found to exist.
49. I am willing to go along with Mr. Jayant Mehta in his
submission that, in designing the impugned pack of "VEDA
DIGESTIVE" biscuits, the defendant may have made a conscious
attempt to "copy" the plaintiff's packing. A conscious attempt at
copying, however, by itself does not constitute either infringement or
passing off. The matter has, in either case, to 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.
50. Though the defendants' packs in the present case are more
similar in appearance to the plaintiff's packs, vis-a-vis the position
which obtained in CS (Comm) 553.2020, these added points of
similarity in the present case are also, in my view, insufficient to
render the pack of the defendants confusing or deceptively similar to
that of the plaintiff.
51. Other salient points of the discussion in CS (Comm) 553/2020
apply, mutatis mutandis, to the present case as well. Parle Products21
cannot help the plaintiff in this case either.
52. For this reason, I am of the opinion, that even in this case, it is
not possible to arrive at a prima facie finding in favour of the plaintiff
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on the aspect of deceptive similarity, and, consequently, infringing or
passing off.
53. This application is also, therefore, dismissed.
C. HARI SHANKAR, J.
APRIL 5, 2021 dsn/ss/kr/r.bararia I.A. 12115/2020 in CS(COMM) 553/2020 & Signature Not Verified I.A. 12125/2020 in CS(COMM) 554/2020 Page 45 of 45 Digitally Signed By:SUNIL SINGH NEGI Signing Date:05.04.2021 11:43:31