The two dominant players in cigarette category ITC Limited, (ITC) and Godfrey Philips (India) Limited (Godfrey) are pitted against each other over the use of mark FLAKE, and its packaging. ITC took Godfrey to Bombay High Court seeking injunctive relief for infringement of copyright, trademark and passing off in relation to use of similar trademark, trade dress in relation to their SELECT FLAKE PREMIUM cigarette pack. The product was launched in 2019 by Godfrey. Both sides were earlier involved in numerous opposition proceedings before the Trademarks office involving FLAKE mark.

The post discusses ruling on the preliminary injunction by the Bombay High Court over the mark FLAKE and packaging adopted by Godfrey allegedly similar to ITC. The round one has gone in favour of ITC as the court found the packaging of Godfrey with brand elements to be similar. At the same time question whether FLAKE is descriptive of cigarettes was kept open.

The images/packaging of cigarette packs of both parties is provided below

The Plaintiff, ITC claims that:

• In 1971, ITC launched cigarettes using FLAKE word as a trademark. Over the years, several variants under its FLAKE trademark were launched including FLAKE PREMIUM, FLAKE REFINED TASTE, FLAKE EXCEL, FLAKE FINE CUT etc. It owns various registrations where FLAKE is the essential and leading feature.
• The trade dress of Godfrey’s FLAKE PREMIUM cigarette pack adopted in 2019 is a substantial reproduction of ITC’s FLAKE REFINED TASTE cigarette pack and infringes its copyright in the FLAKE REFINED TASTE pack which is an artistic work under Section 2(c) of Copyright Act. In particular, ITC compared trade dress of both products and highlighted various similarities, which are summarized below:
  • boomerang devices comprising of concentric arcs of Gold and Red colours in both products were identical/deceptively similar;
  • use of same colour scheme (White, Gold and Red);
  • identical colour of font and background used – FLAKE REFINED TASTE and SELECT FLAKE PREMIUM was written in red font against a white background in both products;
  • adoption of five spike crest device was a blatant copy of the five spike crest device used by ITC on its FLAKE REFINED TASTE cigarette pack. Godfrey used a different device earlier; and
  • use of the words FLAKE PREMIUM below the Godfrey’s brand name is similar to the trademark FLAKE of ITC.
• Godfrey has dishonestly adopted/copied essential features of the ITC’s FLAKE REFINED TASTE cigarette pack considering ITC owns copyright in the artistic work since 2012 and 2016. On the other hand, Godfrey’s cigarette pack bearing similar packaging features was launched in the same market in December 2019. Godfrey was aware of ITC’s application for  ,  marks which have been opposed by Godfrey’s. The test for copyright infringement is substantial similarity and the infringing copy need not be exact in microscopic detail.
• Use of the words FLAKE PREMIUM on Godfrey’s product packaging and cigarettes by Godfrey’s amounts to infringement of ITC’s registered marks containing the words FLAKE and FLAKE PREMIUM. No disclaimer on the word FLAKE has been imposed by Trademarks Registry.
• The mark FLAKE is not descriptive in relation to cigarettes. Godfrey admits that FLAKE PREMIUM is used in a trademark sense. Moreover, Godfrey has obtained registration for the mark SUN FLAKE and applied for registration of SELECT FAKE PREMIUM. Therefore, Godfrey is estopped from alleging that ITC’s FLAKE and/or FLAKE PREMIUM are descriptive.
• FLAKE range of cigarettes commands enormous goodwill and reputation which is evident from the gross sales of 50,475 crores (approx. US$ 68,82,851) since 1994. Godfrey is guilty of passing off cigarette as the trade dress of both products is deceptively similar.

The Defendant, Godfrey Phillips in its defense contended:

1. The get up, placement of features of both products are different. The similarity between the two works is required to be substantial and the prominent words in the trade dress which catch the viewer’s attention in both products are WILLS and SELECT written in a different font style. Microscopic examination of two works is not allowed under the law. The colour combination adopted is common to trade and there are various other differences in the trade dress even on side-ways comparison of both products. No case for copyright infringement is made out.
2. The SELECT FLAKE PREMIUM cigarette pack is unique and has been independently adopted.
3. The word FLAKE per se is not registered. ITC’s applications filed contain a disclaimer and opposition has been filed by Godfrey’s. The marks to be compared are WILLS FLAKE REFINED TASTE v SELECT FLAKE PREMIUM. Claim of trade mark infringement on the basis of ITC’s registration for FLAKE device/label is not maintainable.
4. FLAKE is commonly used in the cigarette industry and various parties own registration for marks containing FLAKE. FLAKE is a dictionary word used in relation to tobacco and tobacco products that denotes kind and quality of tobacco including cigarettes. In this regard, relevant evidence was filed. ITC’s is using FLAKE in a descriptive sense. FLAKE is commonly used by 3^rd Therefore, no monopoly can be claimed as ITC had not been able to secure registration for the word mark FLAKE.
5. No case for passing off is made out as there is sufficient added material. The consumers would buy cigarettes by calling for the product by its name and not merely by FLAKE.

Court Ruling

The Court, after considering the pleadings, arguments and case laws passed a detailed order granting interim relief to ITC and held that:

1. The infringing copy does not have to be exact in every microscopic detail.
2. The trade dress adopted by Godfreys in December 2019 appears to be substantial replication of ITC’s product considering it uses same colour scheme, stylized S of Godfrey is identical to ITC’s boomerang device, brand name in both products is represented in red font in capital letters against white background. Godfrey has failed to explain reason for change in colour scheme of the brand name and background considering the new trade dress was identical to ITC’s cigarette pack. Godfrey has failed to answer reasons for abandoning its crest device considering five spiked crest device adopted by it is nearly identical to ITC’s crest device.
3. Taking into account overall similarity between the cigarette packs, ITC has established prima facie case for infringement of copyright and passing off. The issue whether FLAKE is descriptive is kept open and will be decided when the interim application is listed for final disposal.

Interestingly, the arguments in this case were concluded in March 2020 and the judgment pronounced in July, 2020 due to Covid-19. Thus when a request was made by Godfrey’s counsel for stay of the operation of the order (at the time of pronouncement in July 2020) for purpose of filing an Appeal, the court noted “the matter was posted on 23rd March, 2020 for passing orders. However, since the Covid-19 Pandemic interjected, the Court’s normal working was disrupted and orders could not be passed on 23rd March, 2020. It is only in these circumstances that the order is being pronounced today. After having come to a prima facie conclusion that the defendant is guilty of copyright infringement as well as passing off, I do not think that this matter warrants any stay. The request for stay of the operation of this order is, therefore, rejected”.