Ranjan Narula Associates

ITC turns blue over Britannia Digestive Zero
The competition to control over 25 billion rupees Indian biscuit market reaches Delhi High Court. ITC Limited (ITC) that sells biscuits under its umbrella brand Sunfeast filed a suit for copyright infringement, passing off, delivery up, damages and rendition of accounts etc. against Britannia Indistries Ltd (BIL) seeking to restrain BIL from using ITC's rights in the packaging/trade dress of "Sunfeast Farmlite Digestive - All Good" biscuit. ITC alleged that BIL had copied a deceptively and confusingly similar trade dress for its "Nutri Choice Digestive Zero biscuit".

The product packaging of rival parties are depicted below:

Plaintiff's product (ITC)
Defendant's product (BIL)

Ranjan Narula Associates

Ranjan Narula Associates

The court passed a restraint order against BIL asking it to cease use of confusingly similar trade dress for its 'Nutri Choice Digestive Zero' biscuit.

Background and contention of parties

ITC in support of its case contended:
  1. ITC launched packaging of 'Sunfeast Farmlite Digestive - All Good' biscuit in February 2016. ITC has achieved sales of Rs. 50 million in five months and incurred marketing expenditure of Rs. 140 million.

  2. BIL launched 'Nutri Choice Digestive Zero' biscuit in July 2016. BIL being subsequent adopter has copied the packaging, get up, lay out, unique colour scheme etc. to pass off their 'Nutri Choice' Digestive Zero' biscuit products as ITC's 'Sunfeast Farmlite Digestive - All Good' biscuit.

  3. The product packaging of BIL is identical and/or deceptively similar packaging to ITC's product packaging. The rival products, it's pricing and trade channels are identical. Thus, confusion is inevitable.

  4. Use of a deceptively similar packaging for identical products by BIL constitutes infringement of the original artistic work in the unique product packaging/label under Section 51 of the Copyright Act, 1957 and also amounts to misrepresentation and unfair competition.

  5. The packaging of BIL's 'Nutri Choice Digestive Zero' biscuit in small font states that "this biscuit contains sucralose not recommended for children". This would tarnish the image of ITC including 'Sunfeast Farmlite Digestive - All Good' biscuits considering they are suitable for consumption by children.

  6. After the launch of ITC's "Sunfeast Farmlite Digestive - All Good' biscuit with No Added Sugar" and No Maida", BIL filed a complaint against ITC's "Sunfeast Farmlite Digestive - All Good" biscuit (and not its packaging) before Advertising Standards Council of India (ASCI). The complaint was decided in favour of ITC.

  7. BIL uses different packaging for Nutri Choice Digestive Zero biscuits sold internationally.

    Ranjan Narula Associates
BIL contended that:
  1. BIL is manufacturing/ marketing range of Nutri choice Digestive biscuits with the primary/predominant colour of the product packaging being yellow along with a secondary colour to indicate the variant since 2008.

  2. The yellow colour in the product packaging was an essential and prominent feature and formed part of a colour scheme that identified a range of BIL's digestive biscuits. There are three variants in BIL's digestive biscuit segment that use yellow as predominant colour.

    1. Hi Fibre- Yellow + Red
    2. 5 grains- Yellow + green
    3. Zero- Yellow + blue

  3. BIL has used colour combination of yellow and blue in the product packaging of Coconut Crunchees, Nice Time, Marie Gold, biscuits. The colour blue also reflects 'World Diabetes Day'.

  4. BIL has used blue colour on its other range of zero per cent added sugar Nutri choice Essentials Oat and Ragi cookies at least since November 2010.

  5. ITC had earlier adopted a packaging which was a combination of lemon green and blue for the 'Sunfeast Farmlite Digestive All Good' biscuits.

  6. BIL started manufacturing of 'Nutri Choice Digestive Zero' prior to the issuance of the ASCI order.

  7. ITC has failed to show that it enjoys formidable goodwill or reputation in 'Sunfeast Farmlite Digestive All Good' biscuit

  8. The get up of rival products is distinct and no case for passing off is made out.

The Court restrained BIL from using the packaging of 'Nutri Choice Digestive Zero' biscuits in its present form and held that:

  1. ITC has established that 'Sunfeast Farmlite Digestive All Good' biscuit has acquired a growing reputation.

  2. The colour scheme of the product packaging with yellow colour on the left and blue on the right, the positioning of the letters 'No Sugar' above and 'No Maida' below are strikingly similar and is likely to confuse the consumers.

  3. The court also took into account that BIL entered the No Sugar category of Digestive six months after the launch by ITC and they had a growing reputation with sale in 5 months exceeding Rs 50 million.

  4. The court while restraining BIL granted them four weeks' time to phase out the existing stocks of Nutri Choice Zero Digestive biscuits bearing the present packaging.
Last word is yet to be written in this cookie saga. BIL has appealed the order to two judge bench aka Division Bench. The Division Bench refused to grant an interim injunction or stay the order of the single judge that granted 4 weeks to BIL to phase out existing stock. Meanwhile, BIL has filed counter-suit against ITC for use of yellow colour on its packaging of digestive biscuits. The Court has issued notice to ITC to respond. The matter is further listed for hearing in October 2016.

All rights reserved ©RNA,IP Attorneys