How to File a Trademark Infringement Lawsuit: Procedure, Remedies & ITC vs Britannia Case Explained
Introduction
A trademark lawsuit occurs when the owner of a registered trademark has a reason to believe that another party is using an identical or confusingly similar mark in a way that is likely to cause confusion among consumers and harm the trademark owner's business.
- Infringement
- Direct Infringement: Using the same or similar mark on identical or similar goods or services.
- Contributory Infringement: Providing the means to someone else to infringe a trademark.
- Dilution: Weakening the distinctiveness of a famous trademark by using a similar mark on unrelated goods or services.
- Elements of a Claim
- Valid Trademark: The plaintiff must have a valid trademark registration or common law trademark rights. Here, the plaintiff is the individual claiming the infringement of the original trademark.
- Confusingly Similar Mark: The defendant's mark must be similar enough to the plaintiff's mark to cause consumer confusion. Here, the defendant is the individual alleged to have infringed the trademark.
- Likelihood of Confusion: There is a likelihood that consumers may be confused into thinking the defendant's goods or services are those of the plaintiff.
- Harm: The plaintiff is likely to suffer harm from the defendant's use of the mark, such as lost sales or damage to reputation.
- Pre-Litigation:
- Cease-and-Desist Notice: The plaintiff may send a cease-and-desist letter demanding that the defendant stop using the infringing mark.
- Litigation:
- Civil: If the defendant disagrees and refuses to comply with the demand letter, the plaintiff can file a suit under Order VII of the Code of Civil Procedure, 1908, along with an application for a temporary injunction under Order XXXIX, Rule 1 and 2. According to civil jurisdiction, i.e., pecuniary, territorial, and over the subject matter, a civil suit may be filed before the competent district or commercial court seeking temporary relief, such as a stay, and final relief, such as compensation and preventing the use of a trademark. The court may order the defendant to cease using the infringing mark through injunctions and claim damages, such as awarding monetary compensation for the harm suffered by the plaintiff, as well as order the defendant to pay the plaintiff's legal costs.
- Criminal: The Trademarks Act, 1999, criminalizes acts of infringement, and penalties are defined under sections 103 and 104 of the Act. Hence, criminal proceedings may also be initiated. A complaint or an FIR can be lodged with the concerned authority to initiate a criminal proceeding. A criminal trial will commence after the filing of the chargesheet in the matter of an FIR or after taking cognizance and framing of charges in the matter of a complaint case.
- Factors Influencing Litigation
- Strength: A strong, distinctive trademark is more likely to be protected than a weak, descriptive mark.
- Similarity: The more similar the marks are, the more likely the consumers will be confused.
- Goods or Services: Confusion is more likely when the marks are used on similar or related goods or services.
- Intent: Did the defendant intentionally copy the mark, or was it an innocent mistake?
- Harm: Has the plaintiff suffered a harm or damage as a result of the defendant's use of the mark?
ITC Limited vs Britannia Industries Ltd.
- Brief Facts
- Britannia Industries Ltd. launched Good Day Butter Cookies in 1997, consistently using a blue-and-yellow packaging with a butter cookie image at the centre. Over time, this became highly recognizable and associated with Britannia in the biscuit market.
- ITC Limited, under its Sunfeast brand, launched Mom’s Magic Butter Cookies. Initially, ITC used red packaging. In 2023, ITC shifted to blue packaging with yellow elements, resembling Britannia’s Good Day Butter Cookies packaging.
- Britannia filed a suit claiming that ITC's blue wrapper for Sunfeast Mom’s Magic Butter Cookies was deceptively similar to Britannia’s iconic blue-and-yellow packaging for Good Day Butter Cookies, which has been in use since 1997.
- Madras High Court
- The Madras High Court issued a restraining order against ITC, prohibiting the sale of its 'Sunfeast Mom’s Magic Butter Biscuits, packaged in blue wrappers. The court, comprising Chief Justice SV Gangapurwala and Justice D Bharatha Chakravarthy, affirmed a prior decision by Justice PT Asha, who had earlier enjoined ITC from marketing the biscuits in blue packaging. The order, dated November 8, 2023, followed a trademark infringement suit initiated by Britannia Industries, asserting deceptive similarity between ITC's blue wrapper and Britannia's 'Good Day Butter Cookies' packaging, which has combined blue and yellow colors since 1997.
- ITC, in its appeals against Justice Asha's decision, argued that prevalent packaging norms for dairy products in the region prompted the shift to blue wrappers in southern states. ITC's counsels claimed six distinct differences between the two companies' packaging, emphasizing variations in butter depiction, biscuit and cookie images, and font usage, among other factors. However, the division bench found this explanation insufficient to justify the abrupt switch from red to blue packaging by ITC.
- The court opined that even upon scrutiny, the packaging of Sunfeast and Good Day appeared remarkably similar. While acknowledging differences in brand names, trademarks, and biscuit imagery, the bench noted a meticulous design combining various elements in a way that closely resembled Britannia's established color scheme and overall presentation. The court dismissed ITC's argument that these similarities were coincidental, highlighting the resemblance of the 'Mom's Magic' mark on both ends of the wrapper to Britannia's 'GOOD DAY' mark.
- Consequently, the division bench upheld the single judge's order, restraining ITC from selling 'Sunfeast Mom’s Magic Butter Biscuits' in their current blue packaging. However, the court permitted the sale of existing stock packed in the contested blue color, subject to ITC providing written information about the quantity (23.7 metric tons), movement, and sale of the current stock. This exemption applied solely to the specified existing stock, and no further sales were permitted beyond this quantity.
Conclusion
It is essential to register a trademark to secure your brand with a unique mark that shapes and defines your business's identity. Moreover, a registered trademark ensures your claim in a lawsuit in case of infringement. A legally created document for the protection of your trademark is essential to maintaining your uniqueness in the competitive world. The ITC vs Britannia case is a clear note that a legally secured trademark will protect your brand and discourage your competitors from copying your uniqueness or harming it. Although the process of filing a lawsuit can be typical in cases of trademark infringement, a seasoned lawyer can help you. To know more, contact us..
