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HC holds ‘BUTTER KRUNCH’ has not adopted trade dress of ‘BUTTER DELITE’, mentions colour per se cannot be claimed as a trade mark

Surya Food and Agro Ltd. vs. Om Traders & Anr.

This present suit has been instituted by Surya Food and Agro Limited (Plaintiff) against Om Traders and Raja Udyog Private Limited for permanent injunction restraining selling, offering for sale any goods, advertising or promoting any product under the packaging, get up, trade dress of the defendants’ product ‘BUTTER KRUNCH’ or any packaging, get up, trade dress which is similar to that of plaintiff’s product ‘BUTTER DELITE’ and likely to cause passing off and for ancillary reliefs. Plaintiff alleged that Defendants’ product under the trademark of ‘BUTTER KRUNCH’ had similar packaging as that of plaintiff’s ‘BUTTER DELITE’ and ‘BUTTER KRUNCH’ has copied the artwork, printed and written contents of the packaging of BUTTER DELITE‘ and copied every feature, placement of different elements on the product and packaging of ‘BUTTER DELITE’.  Plaintiff further alleged that Defendant has also adopted packaging with similar get up and trade dress as that of BUTTER DELITE‘ especially in relation to biscuits, which has created confusion and deception.  

The Plaintiff has argued that this is not a case of similarity between trade marks but similarity in packaging and trade dress. Counsel for the plaintiff referred Parle Products (P) Ltd. v J.P. & Co. (1972) 1 SCC 618 and Allied Blenders & Distillers Private Limited v Shree Nath Heritage Liquor Private Limited 2014 SCC OnLine Del 3412 to contend that comparison must be made from the eye of an unwary consumer with imperfect recollection and similarity is to be assessed from an overall comparison and not microscopic comparison. 

After hearing the arguments, High Court observed that in order to ascertain the deception/confusion test to be applied is of similarities and not of dissimilarities but the similarities to be seen are the similarities distinctive and peculiar of the packaging of the plaintiff and not similarities which are found generally on packaging of all makers of the same product. Further, Court elaborated that in their opinion similarities mentioned by the plaintiff are generally found in the same products of nearly all marketeers/producers of biscuits/cookies. HC in the present case held that, 

“colour scheme of the packaging of the plaintiff is not unique or distinctive of the products as there are a large number of other biscuits available with the same colour scheme. Moreover, the choice of colours for use in packaging is limited and merely because the colour of the packaging of the defendant is the same as of the product of the plaintiff, cannot confuse the consumers.”

HC referred to The Paddington Corporation Vs. Attiki Importers & Distributors, Inc. MANU/FESC/0210/1993 wherein it held that where it is the custom of an industry to package products in a particular manner, a trade dress in that style would be generic and therefore not inherently distinctive. The same Court again, in Gemmy Industries Corp. Vs. Fun- Damental Too, Ltd. MANU/FESC/0286/1997 held that trade dress protection has limits; a trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected. 

High Court relied on Colgate Palmolive Company Limited v Patel ( (2005) 31 PTC 583) where it was held that, 

“colour per se cannot be claimed as a trade mark and that colour must combine with other things to acquire a distinctive design which may afford protection. Further, it was held that red, yellow and blue are primary colours and on mixture whereof, all other hues of the colour can be created and that exclusivity and monopoly of a colour and colour scheme is not favoured”. 

In addition, HC observed that plaintiff had claimed that it is doing the packaging since 2015 but application of the application for registration of trade mark BUTTER DELITE‘, filed in the year 2016. However, defendant also claimed that they are doing similar packing since 2016. Therefore, HC held that the length of time for which the plaintiff had been using the packaging of which passing off was alleged, was for a short span of time only thus it does not qualify to be imprinted on the minds of the customers.

HC referred to Kellogg Company Vs. Pravin Kumar Bhadabhai 1996 (36) DRJ wherein it was held that, 

“in cases of passing off is, whether the thing taken in its entirety, looking at the whole thing, is such that in the ordinary course of things a person with reasonable apprehension and with proper eyesight would be deceived. It was held to be impermissible to say that ―the square on the left side top had a small red and green border and or there was a red band horizontally and defendant’s carton if examined from close quarters, showed these feature”. 

Further, HC relied on S.M. Dyechem Ltd. Vs. Cadbury (India) Ltd. (2000) 5 SCC 573 wherein the Court stated that, 

“ the occurrence of the name ―CADBURY on the defendant‘s wrapper was a factor to be considered while deciding the question of passing off and that the presence of the defendant‘s name on its goods was an indication that there was no passing off, even if the trade dress was similar”.

Thereafter, HC analysed the judgement passed in Star Bazaar Pvt. Ltd. Vs. Trent Ltd. 2010 (43) PTC 154 (Del), Intex Technologies (India) Ltd. Vs. AZ Tech (India) (2017) 239 DLT 99 (DB), King & Co. Ltd. Vs. Gillard [1905] 22 R.P.C. 327 , J&P Coats Ltd. Vs. Chadha & Co. (India) (1967) 3 DLT 595, Kuber Khaini Pvt. Ltd. Vs. Prabhoolal Ramratan Das Pvt. Ltd. 2002 (24) PTC 135 (Cal) and held that, 

“ the element of brand loyalty if any of the goods of the plaintiff will not let the consumers thereof eschew the all- important trade mark on the goods that he intends to buy.”

Thereafter, HC observed that, 

“the plaintiff has not raised any objection to the trade mark BUTTER KRUNCH of the defendant. It is not the case of the plaintiff that use by the defendant BUTTER KRUNCH amounts to passing off the same as BUTTER DELITE‘ of the plaintiff. Similarly, though objection is taken to the placement of the words Namkeen Butter Biscuits‘ in both the packaging but not to use of the words Namkeen or Butter or Biscuits. Butter, if required to be depicted, cannot be depicted in the shape in which it is generally found in homes and shops i.e. in a brick or slab form and in which form if depicted on advertisements and packaging would be not identified as butter and to be recognized as butter in all advertisements, is shown in curly shape as in packaging of both. It is so shown also in the packaging of Britannia Good Day Rich Butter Cookies, McVitie‘s Butter Cookies, Parle 20-20 Butter Cookies and Unibic Butter Cookies. Thus, the curly shape in which butter is show on the packaging of both plaintiff and defendant, is also found to be generic. “

Hence, HC held that. 

“while judging the generic similarities, the dissimilarities which stand out and which prevail over the similarities also count.”

Hence in the present case 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”. 

On the basis of the abovementioned observations, Court dismissed the suit.


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