Good Day v Mom’s Magic: Madras High Court Restrains Sunfeast From Selling Butter Cookies In Blue Colour Wrapper, But Allows Sale Of Existing Stock

The bench of Chief Justice SV Gangapurwala and Justice Bharatha Chakravarthy however, allowed the company to sell its existing stock of products packed in the offending blue color wrap.

Brittania had approached the court claiming that ITC was selling its priducts under the brand name “Sunfeast” in an identical blue colour trade dress/wrapper as that of Britannia and was thus trying to cash in on Brittania’s goodwill and reputation. Brittania claimed that the defendant was selling their product in red colour wrapper and only recently had started selling their butter cookies in blue color wrapper in South India with a dishonest intention to get unlawful gain.

Brittania also submitted that the current packaging was bound to create confusion among the consuming public. Brittania had thus sought for a permanent injunction and for delivery of offending materials and rendition of accounts and for damages to the tune of Rs 65 Lakh.

ITC on the other hand claimed that they were selling the cookies in red wrapper from the year 2020 and without altering the lay out or getup had merely changed the packaging to blue in line with the industrial practice of blue colour commonly being used for butter and diary derivative products.

ITC also claimed that both the wrappers were not similar in any way and would not confuse the users. It was also submitted that just because their product was getting more sales in the market, Brittania had filed the present suit to scuttle their sales.

The single judge, noting that ITC did not have any proper explanation on why they suddenly decided to change the colour of the wrapper to blue, had injuncted ITC from marking their products in blue colour wrapper.

During appeal, ITC contended that the entire arguments was in respect to the blue colour of wrapper. It was submitted that Brittania could not claim any proprietary rights over the colour blue as per the Trade Marks Act 1999 or the Copyright Act 1957 or under common law. it was also submitted that when various components used in the wrapper was compared with Brittania’s packaging, both the wrappers were different.

The court however observed that though the different elements in the wrapper like the brand name, trademark, device of biscuit etc were portrayed to be different, it was carefully and meticulously designed and placed in the wrapper to be similar to that of Brittania. The court added that one would have to be too naïve to believe that the same was only coincidental.

The court was thus convinced that the wrapper was similar to each other and would create confusion in the market. Since Brittania was the prior user of the wrapper, the court observed that the logical copying and dishonest adoption could be attributed only to the defendant, i.e., ITC.

“On a casual look or glance, there can be no doubt whatsoever that both the products are absolutely similar to each other. There will be confusion in the market. Especially, in the nature of the product being Cookies, being sold in the shelves of supermarkets, shops etc., any ordinary customer looking at the shelf is bound to be deceived and therefore, the product of the defendant is deceptively similar than that of the plaintiff. Admittedly, the plaintiff is the prior user and logically copying and dishonest adoption can only be attributed only to the defendant,” the court said.

The court added that ITC claiming that the elements in the wrapper were different over which Brittania could not claim exclusivity was like a person copying a story and claiming that the story was only made up of alphabets over which exclusivity could not be claimed.

“The fact of the matter is that its use in such a combination forms words and sentences that it shows the same story as that of the plaintiff. Similarly, the copyright in the artistic work lies in the effort to put in each and every element together in a particular manner and style. The trademark and the trade dress get distinctiveness in the combination of the colour scheme, getup thereof and not in individual bits and pieces,” the court added.

Thus, finding that there was a prima facie case for grant of injunction, the court deemed it fit not to interfere with the order of the single judge.

Counsel for the Appellant: Mr.A.L.Somayaji, Senior Counsel, Mr.Vijay Narayan, Senior Counsel, for Mr.Arun C.Mohan

Counsel for the Respondent: Mr.P.S.Raman, Senior Counsel, Mr.Satish Parasaran, Senior Counsel for Mr.M.S.Bharath, Mr.Reshma Raj, Mr.Preethi Jhabakh, Mr.V.S.Krishna, for M/s.Kria Law

Citation: 2023 LiveLaw (Mad) 350

Case Title: ITC Limited v Britannia Industries Ltd

Case No: O.S.A.(CAD).Nos.134 to 138 of 2023