ITC Injuncted From Selling Butter Cookies in Blue Wrapper

In a judgment dated November 8, 2023, the Madras High Court injuncted the appellant, ITC Limited, from selling its ‘Mom’s Magic’ butter cookies in a blue wrapper, holding the same to be violative of the proprietary rights of the respondent, Britannia Industries Ltd. to its trademarks, trade dress and copyright with respect to ‘Good Day’ butter cookies.[1]

In this case, the respondent filed a suit for a permanent injunction against the appellant, alleging that the latter, in March 2023, began selling its products with trade dress in blue colour identical to that of the respondent. In response to the allegations, the appellant contended that it had obtained various registrations for the trademark with respect to the goods in question, ‘Mom’s Magic’ sold under its brand, Sunfeast. Further, it was submitted that the said products had been sold since 2020 in red coloured wrappers, and recently, it was changed to blue without making any alterations to the trade dress. It was also pointed out that the colour blue was associated with dairy products.

The Single Judge Bench of the Madras High Court observed that the respondent had been selling its butter cookies with the blue-coloured wrapper since 1997, and the appellant started selling them only in 2014 (the current scheme of visual elements adopted in 2020) and that too in red coloured wrapper. Holding that there was no justification for the appellant to suddenly switch to blue-coloured wrappers for the sale of its products in South India, the Court granted an injunction in favour of the respondent. Aggrieved by the same, the appellant approached the Division Bench of the Madras High Court.

It was noted that the similarity in both the products will certainly cause confusion in the market, and customers would be deceived on looking at the products kept on store shelves. The Court added that the use of the blue colour in the product’s packaging was in violation of the respondent’s proprietary rights and led to the “inference of dishonest adoption on the part of the defendant in order to pass off its goods so as to unjustly enrich itself”.

With this, the Court confirmed the order dated October 10, 2023, issued by the Single Judge Bench, and partly allowed the appeal by permitting the Defendant to sell the current stock (of 23.7 tonnes) of the products packed in the offending blue colour wrap provided that the status update regarding the same was provided in writing.

[1] ITC Limited vs. Britannia Industries Ltd. [OSA(CAD) No. 134-138 of 2023]