Madras High Court restrains sale of Sunfeast Butter biscuits in blue wrapper after Britannia files trademark suit

The Madras High Court recently restrained ITC from selling its ‘Sunfeast Mom’s Magic Butter Biscuits’ in blue wrappers after noting that such packaging was “deceptively” similar to that of Britannia Industries’ ‘Good Day Butter Cookies’ and was therefore, likely to create confusion among consumers..In an order passed on November 8, a division bench of Chief Justice SV Gangapurwala and Justice D Bharatha Chakravarthy upheld an order passed last month by a single judge of the High Court restraining ITC from selling its biscuits in blue wrappers..The division bench has now directed ITC to change the colour of such wrappers. It, however, permitted ITC to exhaust all existing stock of the biscuits packed in blue wrappers..The bench was hearing a batch of appeals filed by ITC against single judge, Justice PT Asha’s order passed on October 10 this year restraining it from continuing with the blue wrapper packaging for ‘Sunfeast Mom’s Magic Butter Biscuits.’.The order was passed after Britannia filed a trademark infringement suit. Britannia argued that it had been using a combination of blue and yellow wrappers for its Good Day Butter Cookies since 1997. On the other hand, ITC began to use a similar colour for their butter biscuits from June 2023 with dishonest intentions, Britannia contended..The counsel for ITC denied this claim and argued that while in north India, the said butter biscuits were sold in red wrappers, in the southern states, the company began using blue wrappers as most dairy products such as butter, milk, etc., were sold in blue packaging.ITC’s counsel also contended there were six distinct differences between the packaging used by ITC and Britannia, including differences with regard to the dollops of butter, the pictures of the biscuit and the cookie, the font used, etc..The division bench, however, held that this explanation was not adequate to show why ITC had suddenly changed the packaging from red to blue.The Court further said that on a casual glance, both the Sunfeast and Good Day packets looked absolutely similar..“Even on a careful consideration thereof, it can be seen that though the brand name, trademark, device of the biscuit, swoosh of butter are portrayed to be different, yet, it is carefully and meticulously designed and combined at appropriate place in the wrapper so as to absolutely to be similar than that of the plaintiff. Admittedly, the plaintiff is the prior user of the present colour scheme, getup, combination of the picture of biscuit, butter etc. One would be too naive to believe that this is just a coincidence. Even the manner in which the defendant's mark, Mom's Magic which appears on both the ends of the wrapper clearly resembles that of the plaintiff's depiction of its mark 'GOOD DAY' at the same place. Thus, even though from the picture portrayed in the paragraph No 5.4 above, the learned Counsel for the defendant would demonstrate that each and every component is different, yet, they are very similar even on a careful comparison,” the division bench said..It, therefore, decided to confirm that the single judge’s order restraining ITC from selling the ‘Sunfeast Mom’s Magic Butter Biscuits’ in its current blue packaging..“However, the defendant is permitted to sell existing stock of their products packed in offending blue colour wrap and the status of the current stock, their movement and sale thereof shall be informed in writing and the exemption is only in respect of current stock of the quantity of 23.7 tonnes as prayed by the learned Senior Counsel and nothing more or further,” the High Court said..Senior Advocates AL Somayaji and Vijay Narayan and Advocate Arun C Mohan appeared for ITC.Senior Advocates PS Raman and Satish Parasaran and advocates MS Bharath, Reshma Raj and Preethi Jhabak along with advocate VS Krishna of M/s Kria Law appeared for Britannia Industries..[Read order]