Intellectual Property RightsTrademark In IndiaITC Limited Agrees to Amicably Resolve the Trademark Dispute with Britannia Limited

September 6, 20210

In the case Britannia Industries Limited v. ITC Limited & Ors., FAO (OS)(COMM) 65/2021 & CM Appl. 14813/2021, both the parties agreed to the disposal of the appeal in light of the amicable resolution of the dispute.


In 2020, Britannia Industries Limited (hereinafter referred to as “the Plaintiff”) filed for infringement of trademark by ITC Limited (hereinafter referred to as  “the Defendant”), over the fact that the Defendant was manufacturing and selling “Sunfeast Farmlite 5-Seed Digestive” biscuits (hereinafter referred to as “the product”/”the biscuit”), the packaging of which was deceptively similar to that of “Nutri Choice Digestive” biscuits, which is a product manufactured and sold by the Plaintiff.

The Plaintiff alleged that by adopting such deceptively similar packaging, the Defendant infringed its registered trademark.

Thus, aggrieved by the above, the Plaintiff filed an application for interim injunction to restrain the Defendant from manufacture and sale of the biscuits in the impugned packaging.

The Hon’ble Delhi High Court (hereinafter referred to as “the Court”) issued summons for the application on 16.12.2020, upon which the Defendants submitted that the Defendants would stop the further release of their product in the market in the impugned pack however, would not stop to manufacture.

Thus, in view of the above, the Court held that the said order dated 05.04.2021 would not affect the status of the packages which are already in the market.

On 05.04.2021, the Court held that there was no visible sign of similarity as the two packages differed in element. At a glance, no person of average intelligence could get confused because of the alleged similar packaging of the products. The Court thus, dismissed the application for interim injunction filed by the Plaintiff, which led to the filing of the present appeal.


i. Whether or not the Defendant had copied the essential elements of distinction of the Plaintiff’s trademark without any valid reason?

ii. Whether or not the alleged copied essential features and elements by the Defendants were similar to that of the packaging of the Plaintiff’s product?

iii. Whether the “likelihood to cause confusion” test be applied under Section 28 of the Trademarks Act, 1999 or the “deception” test be applied under Section 29(1) of the Trademarks Act, 1999?


The Plaintiff contended that the Defendant had copied their packaging details without any valid reasoning, which resulted into deceptively similar and confusion, causing degradation of sale of the Plaintiff’s products in the market.

Applying the principle of “Initial Interest Confusion”, the Plaintiff argued that since the brands were selling goods of same class i.e. “digestive biscuits”, the plaintiff holds a registered trademark within the same class of goods and thus, the packaging of the Defendant’s product is deceptively similar to that of the plaintiff. The Plaintiff further argued that the Defendant was also passing off its own “Sunfeast Farmlight 5-Seed Digestive” biscuits as a product of the Plaintiff.

Furthermore, it was contended that the Defendant was said to be passing off their own product as that of the Plaintiff’s, which affected the latter’s product market value. Thereby, it was argued that this infringed the Plaintiff’s registered trademark for their product and thereby, the Court issued an interim injunction on the production and sale of the Defendant’s products in question.

On the other hand, the Defendant contended that the products in question had distinctively dissimilar features, such as the difference in the use of colours, display of brand name and product name, design of the packaging and the additional use of term “Sunfeast Farmlite Digestive”. The imprint of the brand name on the body is a generally accepted industry practice, which excludes the product from the scope of deceptive similarity.

Therefore, it would not cause any confusion for the public, given that the Defendant’s product’s package had certain specifications mentioned which differentiated them clearly from the plaintiff’s products in question.


Prima facie, the Order passed by the Single Judge Bench of the Delhi High Court had overlooked the similarity in the idea of the product identity.

Therefore, the Court did not agree with the claim that the products in question have a remarkably similar packaging, design and colour scheme, as the Court did not find it necessary that a likely confusion could arise in the mind of an average person.

The Court observed that there were certain similarities and dissimilarities in the products. The Court noted and took into consideration the pointers namely; combination of the colours, use of words “Digestive Hi-Fibre”, use of a biscuit imprint and print of “Nutri Choice” on white background.

However, there were multiple points of dissimilarity, such as the difference of the usage of product name, which is unlikely to confuse one product with another. The use of “5 Seed” has been omitted by the Plaintiff, which adds as an additional feature to the Defendant’s product.

Lastly, the use of the brand name in different fonts and style is highly distinctive between the product of the Plaintiff and the Defendant, which separates the identity of the Defendant’s product in question from that of the concerned product of the Plaintiff.

The Court set aside the previous judgement and remarked that the same shall not be considered as a precedent. Also, it declared that the parties have come to an agreement to resolve the matter amicably on the conditions that the Defendants shall not use the impugned product packaging as referred in the Civil Suits CS(COMM) No. 553/2020 and CS(COMM) No. 554/2020.

The Court further observed that the Defendant has further modified the packaging of the product in question (“Sunfeast Farmlite 5-Seed Digestive” and “Sunfeast Farmlite Veda Digestive’s”) which is already available in the market, to which the Plaintiff had no objection whatsoever and, on those accounts, the Plaintiff gave up its claims for damages and further action against the Defendant.

Thus, the Court stated that both the parties agree to the disposal of the present appeal in light of the amicable resolution of the dispute.

The Court also observed the question of law raised in this present appeal being left open and went on to dispose the appeal along with the pending applications.


The present case is pivotal in terms of understanding the importance of resolving disputes within the parties in order to negate further chances of dispute.

The Court observed that one of the primary assessments required herein is to understand the features of both the products and their packaging and whether such features are deceptively similar for the consumers. The issues pertaining to deceptive similarity should be dealt with keeping in mind the understanding of the general public as they associate the product with its logo and packaging.

Intellectual Property Law has seen a multi-fold development in recent times. With the paradigm shift in IP Laws it is the need of the hour wherein IP management of the companies should be revisited and strengthened so as to safeguard the IP assets of the companies.

– Team AMLEGALS, assisted by Mr. Aryan Srivastava and Mr. Rohan Bangia (Interns)



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