ITC filed the suit for passing off and copyright infringement before the Additional City Civil and Sessions Judge, Commercial Court, Bengaluru against CG Foods Pvt Ltd (CGF), makers of noodles under the brand 'Wai Wai'. 

ITC alleged CGF has copied the visual appearance of Sunfeast Yippee Noodles wrapper .

ITC seeks to restrain CGF from using Wai Wai branded noodles sold in the packaging appended below:

The question before the Court was to determine the most crucial feature in a composite mark, is it the verbal elements or the overall visual appearance. The post discusses Appeal filed by ITC at the Karnataka High Court against the Order of the City Civil and Sessions Judge, Commercial Court, Bengaluru.

 Facts in brief

ITC, in its claim, primarily relied upon the overall visual appearance /get up of its orange, red colour scheme for its Sunfeast Yippee Magic Masala Noodles wrapper. ITC claimed that it has been using the packaging since 2010. It has spent a substantial amount on promotion and advertisements of its packaging and brand. Therefore, it is well-known among the trade and public. CGF's use of an identical get-up for its Wai Wai branded white noodles amounts to passing off and copyright infringement and damages its reputation and goodwill.

CGF defended the action contending that they are engaged in manufacturing, supplying, and exporting food products and is a leading player in the FMCG and packaged foods segment. They deny similarity in the rival wrappers as the purchaser is more likely to identify the packet through verbal elements of the mark such as the brand name, rather than rely on the colour scheme or get-up for source identification.

The trial court after hearing the parties dismissed the injunction application filed by ITC who in turn filed the Appeal before Karnataka High Court.

 Appeal before the High Court

In the Appeal the Division Bench (two-Judge bench) considered the following:

Issue no:1: Regarding the comparison of the rival wrappers, the High Court was of the view that the trial judge ought to have first identified the distinctive features in ITC's wrapper and then proceeded to examine if there existed similar features in CGF's wrapper so as to cause confusion. Instead, the Court has approached the deceptive similarity test by engaging in a side-to-side comparison which is an error.

Issue no: 2: The cause of action for passing-off lies if a misrepresentation by the Defendant causes damage to the business or goodwill of the Plaintiff. The ultimate question is whether CGF is liable for making a material misrepresentation as to the source of goods or the business's identity. While considering passing off, the Court ought to consider the distinctiveness of Plaintiff's mark and the deceptive similarities of the rival marks.

The Court opined that there is a distinction between 'distinctiveness in fact and distinctiveness in law’. In its legal sense, a name, mark, or get-up can be said to be distinctive if it denotes the goods of the claimant to the exclusion of all others. What Plaintiff claims to be distinctive may be 'distinctive in fact' but Plaintiff cannot have the final say on what is ‘distinctive in law’.

On considering the pleadings, documents, and arguments the Court was of the view, the features said to be 'distinctive' in law are those that the relevant public would rely on to associate the goods as that of ITC, which in the instant case is the brand 'Sunfeast Yippee'. To a lesser extent, the sub-brand indicates the various flavours - in this case, 'Magic Masala' and not the orange, red colour scheme.

For a 'single colour or combination of colours to be protected, it has to be seen that the colours had achieved a high level of distinctiveness in law. Furthermore, the customers relied on the colour to identify the goods.

Misrepresentation

Whether ITC has made a case that CGF is liable for making a material representation of the distinctive features used in its wrapper, two questions need to be considered: (1) the hypothetical consumer and (2) a comparison of deceptive similarities. The hypothetical person cannot be understood as importing a rigid, unchanging, and constant 'standard of reference.' It is fluid in a sense; he takes the shape that is given to him. The nature of the goods sold, the circumstances of sale, the class of persons to whom the product is sold, and other factors are to be considered. On a perusal of the rival wrappers, it is evident that verbal marks dominate ITC's wrapper as compared to purely visual marks. The 'bowl of noodles' is common to the trade and 'sun emoji', the red-orange colour scheme is not distinctive of ITC's goods. CGF's wrapper does not contain the brand name 'Sunfeast Yippee' and the layout is conspicuously at variance.

The High Court further considered the chances of deception occurring on sales through brick-and-mortar stores and digital platforms. A search for the word 'red-orange noodles' has not shown ITC's or CGF's wrapper. This corroborates the finding that ITC's wrapper cannot be said to have achieved distinctiveness in the 'red-orange colour scheme'. From the perception of the hypothetical purchaser in a shop, even after making allowance for imperfect recollection, the point of reference for purchasing ITC's product is primarily the brand - Sunfeast Yippee or 'Yippee Magic Masala' and not the red-orange colour scheme. Thus, the chances of deception is not sufficient to meet the standard of a passing-off action.

Copyright infringement: It is well settled that while considering copyright infringement, the essential part is to see whether there is a substantial reproduction of the Plaintiff's work. ITC can claim copyright in the entire get-up ('artistic work') of its noodles packet even without registration. As observed earlier, it cannot be said that CGF has copied the essential features of ITC's work. If ITC cannot demonstrate that substantial features of their get up have been reproduced in CGF's get up, then merely showing similarity in other non-essential features will be of no consequence. Thus, no copyright infringement is made out.

In view of the above discussion and findings, the Court concluded there is no infirmity in the impugned Order passed by the Commercial Court and dismissed the Appeal filed by ITC.