July 2019
Plaintiff: Surya Food and Agro Limited & BUTTER DELITE (“BD”)
Defendant: Om Traders and Raja Udyog Private Limited & BUTTER KRUNCH (“BK”)
Plaintiff’s case
The plaintiff alleged that the defendant’s product BUTTER KRUNCH has similar packaging as plaintiff’s product BUTTER DELITE. They also alleged that BK has copied the artwork, features and placement of every product element on the packaging of BD. The plaintiff further alleged that the packaging of BK has a similar trade dress as that of BD with regards to the product type (biscuits), which has created confusion in the market among consumers. Referring to case Parle Products (P) Ltd. v J.P. & Co. (1972) 1 SCC 618 vs Allied Blenders & Distillers Private Limited v Shree Nath Heritage Liquor Private Limited 2014 SCC OnLine Del 3412, the plaintiff’s counsel requested the court to compare the two products from the perspective of unwary consumers, but in an overall manner rather than a microscopic manner.
High Court’s observations and opinions
The High Court referred to a few past cases in reviewing this case, particularly The Paddington Corporation Vs. Attiki Importers & Distributors, Inc. MANU/FESC/0210/1993; Gemmy Industries Corp. Vs. Fun- Damental Too, Ltd. MANU/FESC/0286/1997; S.M. Dyechem Ltd. Vs. Cadbury (India) Ltd. (2000) 5 SCC 573 and Colgate Palmolive Company Limited v Patel ( (2005) 31 PTC 583).
The Court tried to ascertain whether the deception/confusion test being applied is of similarities and not of dissimilarities. It also analysed whether the similarities seen are distinctive and peculiar of the plaintiff’s packaging and not those which are found generally on the packaging of the same product regardless of maker. The Court then stated that the similarities mentioned by the plaintiff are generally found in the same products of nearly all marketers or manufacturers of biscuits and cookies. It opined that even if the colour scheme used in the defendant’s packaging matches the colour scheme of the plaintiff’s product, it is generic and not inherently distinctive, and therefore cannot confuse consumers, as alleged by the plaintiff.
In referring to the Gemmy Industries case, the court held that trade dress protection has limits. If it consists of the shape of a product that conforms to a well-established industry custom, it is considered generic and hence not eligible for protection.
The plaintiff claimed that it is using this packaging since 2015 but applied for trademark registration for BD only in 2016. The defendant also claimed that they are doing similar packing since 2016. Therefore, HC stated that the length of time for which the plaintiff had been using the packaging was too short to be imprinted on the minds of customers and cause any confusion.
Finally, the HC held that while it judged the generic similarities, it believes that the dissimilarities which stand out and prevail over the similarities also count.
Outcome
The HC observed that, “the use of the mark PRIYAGOLD engrossed on a white background on the packaging of the plaintiff and RAJA engrossed on a yellow background on the packaging alone is enough to prevent confusion between the packaging of these two”.
The Court dismissed the suit.
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