No relief to ITC in injunction case; Karnataka HC analyses ‘test of distinctiveness’ & ‘test of deceptive similarity’ as parameters for deciding Material misrepresentation & Copyright infringement

Read Judgment: ITC LTD vs. CG FOODS INDIA PVT LTD

Pankaj Bajpai

Bengaluru, October 8, 2021: The Karnataka High Court has recently held that ‘Material misrepresentation’ occurs when the central or prominent feature or the ‘idea of the mark’ of plaintiff’s goods (test of distinctiveness) is embodied in the defendant’s work in such a way that the public may be led to believe that there is or may be a relevant connection between the two parties (test of deceptive similarity). 

A Division Bench of Justice Aravind Kumar & Justice Pradeep Singh Yerur observed that plaintiff cannot claim that defendant has copied the essential features of the plaintiffs work, if plaintiff cannot demonstrate that substantial features of plaintiff’s get up has been reproduced in the defendant’s get up. 

As Lord Halsbury has advisedly said, though it is useful to consider ‘distinctiveness’ and ‘deceptive resemblance’ as two successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether material misrepresentation is likely is ultimately a single question of fact, added the Bench. 

The background of the case was that an appeal was filed by plaintiffs (ITC) in a suit for passing off and copyright infringement, challenging the order passed by Additional City Civil and Sessions Judge, Commercial Court, Bengaluru, allowing the defendant’s (CG Foods) application for vacation of ex-parte interim order and refusing to grant the relief of temporary injunction. 

The Plaintiff being one of India’s largest business conglomerates, having diversified presence across industries such as cigarettes, Fast Moving Consumer Goods and hotels, had filed appeal seeking to prevent the defendant from passing off defendant’s wrapper as that of the plaintiffs. 

The plaintiff was stated to have launched itself into the manufacturing and sales of ‘instant noodles’ in September 2010, under the brand name, ‘Sunfeast YiPPee!’ and plaintiff manufactures, markets and sells under brand different variant of noodles, including ‘Magic Masala’, ‘Mood Masala’, ‘Classic Masala’, to name a few. 

Plaintiff claimed protection from alleged misrepresentation and copyright infringement in respect of the ‘overall visual appearance’ (wrapper) of ‘Magic Masala’ variant of Sunfeast Yippee noodles. 

On the other hand, the defendant was an Indian company, established in the year 2002 and was engaged in the business of manufacturing, supplying, and exporting food products. 

The plaintiff alleged that the wrapper adopted by the defendant for packaging, one of its white-noodles product, ‘WAI WAI Xpress Noodles Majedar Masala’ was deceptively similar or nearly identical to its (plaintiff’s) wrapper used for packaging ‘Sunfeast Yippee Magic Masala’ brand of noodles. 

The Plaintiff therefore claimed that the action of the defendant had caused damage to its goodwill and reputation in the market and as such defendant has to be restrained from using same. 

After considering the pleadings, the High Court said that the defendant’s wrapper does not contain the brand name ‘Sunfeast Yippee’ and the layout is conspicuously at variance. 

The brand name ‘Wai Wai’ appears on the left-side along with the flavour variant, ‘X=press Majedar Masala’, just below it and the font design and colour combination used for the font is not similar to that of defendant, added the Court.

Further, the Division Bench elaborated that the general idea of the appearance of the article that would be left in the mind of the purchaser when he sees plaintiffs wrapper, cannot be seen in isolation, and it has to be understood chiefly from the manner in which the plaintiff has sought to generate goodwill; that is, through its advertising campaigns. 

And when seen in that background, the advertiser has succeeded in developing recall value for the ‘Yippee’ mark to the highest extent, and to a slightly lesser, though similar extent, ‘Sunfeast Yippee’ as a composite mark, and to ‘Yippee Magic Masala’. 

The Bench highlighted that, from the perception of the hypothetical purchaser, even after making allowance for imperfect recollection, the point of reference for purchasing the plaintiff’s goods is primarily the brand – Sunfeast Yippee, or the mark – Yippee or the phrase ‘Yippee Magic Masala’. 

It is well established that while deciding the question of infringement of copyright it is not necessary that the defendants work must be an exact reproduction of the plaintiffs work. What is essential is to see whether there is a reproduction of the substantial part of the plaintiffs work, observed the High Court.

The Court also said that it cannot be disputed that the plaintiff can claim copyright in the entire get-up (artistic work) of its noodles packet even without registration. But as noticed, it cannot be said that the defendant has copied the essential features of the plaintiffs work. 

If the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence, added the Court. 

The High Court therefore, concluded that in passing off actions based on get up cases, the plaintiff must show that deception is likely to notwithstanding the absence of his own brand name on the defendant’s goods and the likely presence there of the defendant’s brand name and perhaps other distinguishing matter. 

Hence, the High Court affirmed the order of trial Judge dismissing the applications filed by the plaintiff for grant of temporary injunction.