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Author: Rahul Matharu, III year of LL.B from Law Centre-2 Faculty of Law Delhi University.


The Delhi High Court Division Bench in case of Britannia Industries Ltd v ITC Ltd shed light on the enforcement of colour marks in the trade dress passing-off case

CITATION: FAO (OS) (COMM) No. 77 of 2016




FACT: Respondent/ Plaintiff IT Ltd filed the suit seeking an injunction restraining the appellant/defendant Britannia Industries Ltd from violating its purported right in the packaging/trade dress of its product “Sunfeast Farmlite Digestive” biscuit by alleging that Britannia using a deceptively and consuming similar trade for its “Nutri Choice Digestive Zero Biscuit”

An interim injunction accordingly issued restraining Britannia from using impugned Packing for its wrapper for its Nutri Choice Digestive Choice Zero Biscuit. However, Britannia were allowed to adopt the packaging it uses for product internationally or while retaining the yellow colour, substitute the blue colour in the packing with any other distinctive colour other than variant of blue. The appellant/defendant Britannia filed appeal against the order of learned judge of the High Court


Division bench of high court held that the entire controversy in the present appeal centres around the use of blue and/ or its variant in the packaging. Whether the packaging of Britannia is deceptively similar to IT Ltd product.

Observation and Decision of Division Bench of High Court

The division bench decided the case on the basis of Passing off Action (i.e., existence of goodwill) and did not examine the other element misrepresentation and likelihood of damage. The court allowed the appeal and set aside the order passed by the single judge.

Court Observe that Passing off is a common law tort and each case of passing off depends on its own fact.

Court observe Kerley’s Law of Trade Marks and trade names (12th edition) Paragraph. 567 that in any passing off case, a claimant relying upon get up must prove his reputation: Claimant must prove, that the get-up concerned indicate his good and no one else’s. In particular, he must show that distinctiveness lies in the get-up and not in his name or trademarks. Court observes that Respondent/ Plaintiff ITC Ltd in order to succeed must establish that whenever a possible customer sees a packing for digestive biscuit using the combination of Yellow and Blue it immediately recognised as source from the ITC ltd.

Court Commented that appropriation of and exclusivity claimed vis-à-vis a get-up and particularly a colour combination stands on a different footing from a trade mark or a trade name because colours and colour combinations are not inherently distinctive. It should, therefore, not be easy for a person to claim exclusivity over a colour combination particularly when the same has been in use only for a short while. It is only when it is established, may be even prima facie, that the colour combination has become distinctive of a person’s product that an order may be made in his favour.

Court further held that Britannia has been a market leader in biscuit market. Britannia Digestive biscuit are sold under three different variant. One variant is the “Nutri Choice Hi Fibre Digestive” biscuit the other variant “Nutri Choice

Digestive 5 Grain” biscuit and “Nutri Choice Digestive Zero” biscuit. The three variant of Britannia biscuit had same genre of packing and design and Britannia had used yellow as colour as the primary colour with combination with red green and blue. Thus, the court held that Britannia had no intention to ride on ITC’S goodwill, hence ITC was not entitled to an interim injection.


The judgment suggested that if in advertisements, the Claimant mainly relies on its business name or other word and figurative elements, it would be hard to establish its claim based on general get-up. However, the judgment did not make clear that what kind of evidence that could be produced to demonstrate that a particular colour or a combination of colours has become a badge of origin and has come to be exclusively associated with the claimant. The court emphasised the observation in Reckitt & Colman Products v. Borden 1990 RPC 341 as that in case of passing off as under: -

Firstly, there should existence of plaintiff’s goodwill in the market,

Secondly, Plaintiff must demonstrate that misrepresentation by the defendant (whether or not intentional) which likely to lead the public to believe that goods or service offered by defendant are the goods of service of the plaintiff.

Thirdly, Plaintiff must demonstrate that he likely to suffer damages as a result of misrepresentation by the defendant.

Further in this case Division bench didn’t agree with single judge observation that Appellant Britannia was 6 month late after ITC introduced its product and Division Bench held that the ultimate test is whether the combination of yellow and blue had attained distinction among public. But the Respondent/ Plaintiff ITC has failed to establish the prima facie of distinctiveness of package, therefore passing off action wasn’t allowed. The Judgement had made clear that in order to claim exclusive claim over a colour combination, the claimant has to establish prima facie that the colour combination has become distinctive of a person’s product.


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