This post summarizes an order passed by the Division Bench (Two Judge Bench) of the Madras High Court in an appeal against the order of the Single Judge granting an injunction in favour of Britannia Industries. The Plaintiff, Britannia Industries Limited (Britannia) filed the suit against the Defendant, ITC, before the Madras High Court alleging trademark infringement, passing off, copying of trade dress, unfair trade practices, etc.

Facts in a nutshell

1. Britannia seeks to restrain ITC from using the trade dress and colour scheme for its Moms Magic Butter Cookies which is deceptively similar to its Britannia Good Day Butter Cookies
2. Britannia claims that they adopted the mark ‘Good Day’ in the year 1986 and by virtue of extensive use, high quality of the products and advertisements, it is a well-known trademark.
3. Britannia claims that from 1997 they started selling butter cookies in a distinctive wrapper having blue as a primary colour and yellow as its secondary colour. Though the design on the wrapper has undergone changes over the years, the colour continues to be primarily blue and yellow. The overall get up and the colour blue and yellow has become associated with Britannia.
4. In and around June 2023, Britannia came cross ITC’s product Sunfeast Mom’s Magic butter cookies wrapped in the same trade dress. ITC started marketing butter cookies only from 2015 and until 2023, the biscuits were sold in a red-coloured wrapper. However, from June 2023 they suddenly switched to an identical blue colour scheme. Adoption is dishonest and use of an identical trade dress amounts to passing off.

ITC countered the injunction on the following:

1. ‘Mom’s Magic’ was adopted in the year 2014 under the Umbrella mark Sunfeast and the mark is also registered in class 30.
2. The rival marks and packaging are different and there is no scope for confusion.
3. There are several brands having the colour blue on their wrappers which shows that Britannia does not have a monopoly over the colour blue.
4. The colour combination for which the monopoly is sought to be asserted is nothing but a colour denoting the characteristics of the product, yellow denotes butter and the colour blue is associated with dairy products.

The Single Judge, after considering the pleadings and arguments injuncted ITC from using the blue color scheme and trade dress for Moms Magic butter cookies. The Court observed that Britannia has been using trade dress with elements and colour combination since 1997. Moreover, there is no proper explanation as to why ITC suddenly adopted the blue colour scheme and trade dress.

Aggrieved by the injunction order ITC approached the DB in appeal on the following grounds.

1. The Single Judge erred in finding that there was no explanation for ITC in adopting the blue colour in the year 2023. It has been specifically pleaded that adoption was in consonance with the common practice of depicting the dairy products in blue colour.
2. Considering there are several leading brands having considerable market share are using the blue colour wrapper, there is no prima facie case, and the Judge ought not to have granted the interim injunction.
3. Britannia cannot claim any proprietary rights over the colour blue. The rival wrappers without the colour background and with various other components are entirely different.
4. The law does not confer exclusive use of a particular colour and the order of the learned Single Judge ought to be set aside.

Britannia contended:

1. The rival products are deceptively similar, causing confusion as each and every component in ITC’ s wrapper is crafted carefully so as to imitate the product of Britannia.
2. The injunction is only with the blue colour wrapper and ITC can continue to sell its products with the red colour wrapper which was earlier used by them.
3. Britannia is not claiming exclusive use of the colour blue, but it forms a unique scheme along with the other devices and depiction in the wrapper to create a distinctive trade dress. Thus, the Single Judge’s order calls for no interference.

The DB in appeal held:

• On a perusal of the rival products, and it is evident that the various components of ITC’s wrapper have been meticulously designed and combined at appropriate place to be deceptively similar to that of Britannia.
• Considering the similarities there is bound to be confusion as the products are of the same nature, cookies, being sold on the shelves of supermarkets, shops, etc. Admittedly, Britannia is the prior user and logically copying and dishonest adoption can only be attributed on ITC.
• ITC’s contention that Britannia cannot claim exclusivity over the colour blue as there are various elements in the wrappers which makes it visually different ought not to succeed. The distinctiveness in the trademark and trade dress lies in the combination of the colour scheme, getup thereof and not in individual components.
• ITC’s use of blue colour scheme for the wrapper offends the proprietary rights of Britannia’s trademarks and trade dress and leads to the inference of dishonest adoption.

Considering the above, the DB refused to interfere with the order of the Single Judge. However, the DB allowed ITC to sell the existing stock which was already packed in the offending blue colour wrappers.

Our comment

In the current times, trade dress such as packaging, colour scheme and overall appearance has a lasting impact on the consumer experience and brand recall. The trade dress of the product is being given special attention by the brand owners to distinguish their products from competitors and build affinity for their brand. The courts are therefore seeing an upward trend in cases being filed by businesses to enforce rights in trade dress, packaging and other brand elements.