Design Infringement in Biscuits-making Industry

A sector requires constant innovation and upgradation to survive and sustain in the market and the food sector is no exception to this pre-requisite. With the emergence of new techniques and recipes, Intellectual Property Rights protection has emerged in the food industry. The protection ranges from contents of the advertisements to the recipes and design of the products. The rights applicable to the food industry are Patents, Trademarks, Copyrights and Trade secrets.

There have been many cases of infringement in the food industry related to recipe/formula of the product, shape of the product, packaging, tradename and copyrights. This article pertains solely to biscuit-making industry. A case related to trademark infringement has recently been brought before the hon’ble Delhi High Court.

Oreo-maker (Mondelez International Inc.) vs Parle [CS (COMM) 64/2021]

Recently in the beginning of 2021, the United States-based Intercontinental Great Brands LLC, a unit of Mondelez International Inc., filed a suit against Parle before the hon’ble Delhi High Court. The plaintiff contended that the design of Indian firm’s Fabio biscuits is “deceptively similar” to that of Oreo, which is a well-known and widespread brand. Intercontinental Great Brands LLC has its presence in India for considerable time. It had launched Oreo about a decade ago and brought further variations and flavours to the product, keeping the shape of the product same. On the other hand, Fabio, like Oreo, is a cream biscuit, launched in 2020, comprising white cream sandwiched between two black cookies. The branding of the product is also similar to that of Oreo, with its blue, black and white packaging.

Oreo CaseThe hon’ble court allowed the request of plaintiff to carry on the proceedings virtually (see here). However, the court declined the request to prepone the proceedings because of the current situation (see here). Further, the hon’ble court also asked the parties to present their written submissions. The proceedings have been delayed because one of the counsels tested positive for coronavirus. Moreover, the parties have also been delaying the proceedings by not submitting their statements. After multiple dates and paucity of time, the hon’ble court had fixed June 5, 2021 for further hearing and notifications (see here). The suit is pending before the hon’ble court.

Britannia Industries Ltd. vs Future Consumer Limited & Ors. [CS (COMM) 47/2020]

Britannia caseBritannia Industries filed a trademark infringement case against Future Consumer before the hon’ble Delhi High Court contending that the company has copied the packaging of several of its biscuit brands (see here). The petitioner alleged that defendant’s packaging of its “Tasty Treat” biscuits is “deceptively similar” to that of Good Day ‘Butter’, Cashew variants, Bourbon and other products of Britannia. Kishore Biyani-led company is listed with the Bombay Stock Exchange and deals in a number of products like namkeen, bhujia, ready to eat popcorns, sauces and juices. The parties informed the hon’ble court that they have mutually decided to opt for “out of court settlement.” Both the parties organized a meeting in Bengaluru to amicably settle their matter. The defendant agreed to the following terms:

  • For ‘Tasty Treat butter’ and ‘Tasty Treat Cashew’: Change of the words ‘GOOD TIMES’ to ‘GREAT TIMES.’
  • For ‘Tasty Treat Bourbon’: Change Orange/Brown to a very different shade of Pink.
  • For ‘Tasty Treat Rusk’: Change of colour Yellow to a different shade of Yellow (non-mustard).

The defendant agreed to comply with the above-mentioned changes by May, 2020 but on defendant’s request, the time was extended for a month i.e., June, 2020 (see here). Hence, the matter was disposed of by the hon’ble High court subject to filing of affidavit by the defendant.

Concluding Remarks

The Trademark Act, 1999 provides that the infringement of a registered trademark takes place when a person, not a registered proprietor of the mark, uses the mark in the course of his/her trade this is identical or deceptively similar. The question of “deceptively similar” in the food industry (specifically biscuit-making industry) is interpreted by Indian courts through various precedents. For instance, the case of Britannia Ltd vs Itc Ltd and Ors. [CS(COMM) 553/2020], the hon’ble Delhi High Court refused to recognize similarity between “digestive biscuits” of both the brands on certain grounds. The hon’ble court stated that while pronouncing, the court cannot gloss over the fact that there is an evident distinction between plain digestive biscuits and “Veda” digestive biscuits because the latter is derived from Ayurveda. Moreover, a prudent person has the ability to distinguish between the two and hence, there are less chances of confusion between the two (see here).

There is a benchmark to be fulfilled in the trademark infringement cases. The courts cannot blindly favour one of the parties. The biscuit makers should respect other’s brand, packaging and design to avoid any confusion in the minds of consumers. Increase in awareness of the companies can save a ton of judiciary’s time and resources.

Author: Tanya Saraswat – a student of  Narsee Monjee Institute of Management Studies (NMIMS), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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