Design infringement
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This article is written by Manya Dudeja, from the University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University. The article deals with the dispute between the two biscuit companies whereby one of them has dragged the other to the court alleging an infringement of design. 

Introduction

Isha is a 5-year-old who loves to have chocolate biscuits, she always buys the chocolate cream biscuits of a particular brand which is quite popular among the kids of her generation. What this 5-year-old however, lacks is attention to detail and the ability to read and remember names. It is the catchy colours of her favourite brand that makes her reach her hand out and pick them up from the supermarket shelves. This time around too, during her visit to the supermarket she jubilantly grabs her favourite biscuits, or what she thought were her favourite biscuits. However, as the taste reveals to her, she’s disappointed to find out that these were not her all-time favourite biscuits, but were merely similar looking to them.

People use their creative ability to develop products that are different and haven’t been created earlier. They do this in order to attract a customer base and to use their unique individuality to make a mark in the industry. While it often happens that others end up replicating the original product and deviating a mass of their customer base. This might be done with the intention to deceive the customer into buying the ‘similar’ product in place of the original product. At other times, it might just be an unintentional coincidence of similar ideas. It is then on the court to decide and arbitrate on such matters depending upon the law that has been laid down. 

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Facts of the case

The parties involved

Intercontinental Great Brands which is a unit of the US-based, Mondelez International, a snacking giant has filed a suit against the Fast Moving Consumer Good (FMCG) company Parle. Mondelez International is the company that manufactures the famous Oreo biscuits, it has alleged that the Indian company, Parle has introduced a biscuit named Fabio in 2020, the design of which is decisively similar to that of the Oreo biscuit. Intercontinental Great Brands has filed a case against Parle for trademark infringement in the Delhi High Court.

The launch timeline

Oreo was launched in India, nearly a decade ago in the year 2010 and took a lead in the biscuit market in India. It is a premium cookie brand in the world and made a sale of $3.1 bn in the year 2019. While Fabio biscuits were launched by Parle in January 2020 in two flavours- Vanilla and Chocolate Cream. 

Similarities

There are various similarities in the design of the two biscuits.

Packaging

The colour scheme adopted by both companies is similar and is blue and white in colour. Here, even the shade of blue used is very similar. They both are supported by blue and white branding.

Biscuit design

Both the biscuits are dark in colour and the structure is such that, two dark biscuits sandwich a white cream filling. The two dark biscuits of the Fabio biscuit are also stamped with a filigree design. 

Which is the law that is being infringed in this case

The Trade Marks Act, 1999 is the law governing trademarks in India and it is the provisions of this law that are being infringed in the case at hand.

What is trademark infringement

In India, trademarks are protected by a legislation called the Trade Marks Act of the year 1999. The Act states all the necessary rules which deal with the registration, protection and penalties against the infringement of trademarks. These trade marks have been granted the status of intellectual property across the globe. Organisations both at the national as well as international level attempt to protect intellectual properties, such as trademarks. The Indian Patent Office which is administered by the Comptroller General of Patents, Designs and Trademarks is responsible to deal with the protection of trademarks in India. 

Trademark infringement refers to the use of a mark that is unauthorised and is identical or deceptively similar to a trademark that is already registered. 

Meaning of “deceptively similar”

Under this provision, the trademark that is being alleged to be used by a person who is unauthorised to do so has to be identical or “deceptively similar” to the original design in order to be called a trademark infringement. It has to be sufficiently similar so as the consumer might be confused and might mix up the two products thinking of them to be the same. Here, this only has to be a possibility, i.e. it “may” happen and there is no burden of proof to prove it to be actually happening, there only needs to be a possibility of this happening. Even if there is a chance of such confusion or misrecognition happening, it is enough to prove a trademark infringement.

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Trade Dress

Meaning of trade dress

Trade Dress refers to the way a product looks in its physical shape or the visual appearance of a product. It includes packaging, shape, pattern, design, graphics, as well as the colour combination of the product. They are the attributes that attract a customer to the product and grab their attention towards that particular brand. Hence it is important to protect a brand’s trade dress from competitors who might try to use it for their personal gains and this is why companies get the trade dress of their product registered. The concept of a trade dress finds its origin in the US legislation- The Lanham Act. There is no specific and separate Act protecting dress in India. Rather, it is dealt with by the Trade Marks Act, 1999, the provision came into being in the year 2003 and is on the lines of the English Trade Marks Act, 1994.

Objective of trade dress

  • The provision intends to protect the consumer from mistakenly buying a product that merely imitates the original product the consumer is willing to buy. It protects the consumer from the physical appearance or visual presentation of the product which might be misleading.
  • It also aims at discouraging the copying of goods and services.
  • To prevent any confusion regarding the product and its unfair use.

Legal provision related to trade dress in India

Section 2 of the Trade Marks Act, 1999 was added in the Act through an amendment. Indian courts had started recognising the concept of trade dress before 2003. In the context of the case at hand, trade dress refers to everything ranging from the blue and white packaging of the biscuits to the design imprinted on them and to their structural representation.

According to Section 2 of the Act, the overall appearance and graphical representation of a product is what establishes it to be different from other goods and services. It is this shape, unique packaging and the combination of colours that distinguish a product. 

This section of the Act defines the terms “Package” and “Mark”. 

Section 9(3) provides that, for a mark to be registered it should be distinctive and easily recognisable i.e. it should add a substantial amount of value to the product. Also, the shape of the good should not be one that comes from nature.

Other instances of trademark infringement in the biscuit industry

  • In the year 2016, ITC dragged the biscuit company, Britannia to the court on the accusations of trademark and copyright infringement. ITC accused Britannia and said that the packaging of Britannia’s NutriChoice Digestive Zero biscuits were identical to that of ITC’s Sunfeast Farmlite Digestive All Good biscuit. On this, Britannia told the court that it was ready to change the colour of the packaging of its biscuits. This legal battle was won by ITC and the court asked Britannia to curb the sale of its NutriChoice Zero biscuits. 
  • In December 2020, it was Britannia that moved to the Delhi High Court against ITC and claimed that the packaging of ITC’s Sunfeast Veda Digestive and Sunfeast 5-Seed Digestive biscuits was deceptively similar to that of Britannia’s NutriChoice Hi-Fibre and NutriChoice Digestive biscuits. 
  • The cases and allegations of trademark infringement are nothing new for the biscuit industry. The previous year, in February 2020, biscuit maker Britannia took to the court, Future Consumer and accused the company, it said that the packaging of Future Consumer’s, ‘Tasty Treat’ was deceptively similar to the biscuits of Britannia. 

Oreo vs. Twins

Oreo biscuit has been in a similar dispute earlier as well. The case commenced in the year 2015 for the registration of an EU trade mark. The plaintiff was Twins from Spain and presented their case in front of the European Court of Justice (CJEU). Intercontinental Great Brands filed their opposition to this and claimed their own popularity and earlier trade mark which was similar to the Twins.

In the year 2018, the trademark request was refused by the European Union Intellectual Property Office (EUIPO) citing as a reason the likelihood of confusion with the earlier and better-established Oreo, the similar shape of the biscuit was also cited as a reason. 

Twins appealed against this decision. This dispute led to some important questions being raised, for example: Is a biscuit shape like that of the Oreo, distinctive? 

The Spanish company, Galletas Gullon claimed that no company can be given an exclusive right over a round-shaped chocolate biscuit filled with cream. Hence, the only distinctive feature of the biscuit then remains the word “Oreo”. The CJEU then pointed out that in order to get a registered trade mark by the European Union, there has to be at least a minimum level of distinctiveness. It also said that the assessment has to be done keeping in mind the similarities in the overall product as a whole and it cannot be limited to a single mark.

The CJEU did not answer the question of whether the biscuit shape of Oreo, distinctive, however, it said that in this case, the value regarded to the shape cannot be negligible. The application to consider the word “Oreo” as the only distinctive element failed as it was felt that for a customer attention would not be drawn to a particular word in a round biscuit joined with cream filling. The products were termed to be identical and the appeal made by the Spanish company was dismissed.

Conclusion

The Court has scheduled the next hearing for this case on April 12, 2021. Even though the US lawyers requested an earlier date of hearing for the issue, the Delhi High Court declined the request. With the advent of globalization and products reaching far off places and trade expanding beyond boundaries, the protection of intellectual property has become one of the major concerns for the twenty-first-century producer. On the other hand, the confusion created by the availability of multiple “deceptively similar” products in the market is a problem that dooms the consumer. Due to this, the consumer often ends up buying something he/she/they was/were not willing to or did not intend to buy. This brings loss, not only to the consumer but also to the producer who ends up losing on his/her/their potential sales and customer base.

It is important that laws are adequately put in place and implemented to defy such efforts which are malice in nature and can hinder ethical trade. The biscuit industry unfortunately has fallen victim to a number of such cases where leading brands had to sue each other for trade mark infringement. Some of the leading brands involved are Britannia, Parle, ITC etc. Though it remains unknown whether the present case is a result of intended, carefully thought out and organised imitation or a surprisingly similar-looking coincidence of ideas, the court has the duty to protect ethical trade and the intellectual property of producers.

References

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