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Copyright Infringement and Passing off: Bombay High Court’s ruling in ITC v. Godfrey Philips

Our Associate, Amay Jain discusses “Copyright Infringement and Passing off: Bombay High Court’s ruling in ITC v. Godfrey Philips”

Recently, in ITC Limited v. Godfrey Philips (India) Limited[1], the Hon’ble Bombay High Court granted an interim injunction in favor of ITC Limited (“the Plaintiff”) in a suit for trade mark and copyright infringement, and passing-off.

The Plaintiff claimed statutory and common law rights in its trademarks, including the mark FLAKE and other marks used on and in relation to its goods, namely cigarettes. The Plaintiff also claimed copyright in the original artistic work featured on the packaging of its cigarettes, consisting of a unique boomerang design with arcs of gold and red color. Aggrieved by Godfrey Philips (India) Limited’s (“the Defendant”) adoption of a similar packaging for its cigarettes, the Plaintiff filed the suit.

The Defendant, on the other hand, contended that use of the word FLAKE in relation to tobacco and tobacco products is descriptive. As per the Defendant, FLAKE is a term that denotes the kind and quality of tobacco used in different tobacco products. The Defendant also stated that the Plaintiff had not been able to secure a single word mark registration for the word mark FLAKE.

The Plaintiff argued that the mark FLAKE is not descriptive in relation to cigarettes. Further, the Plaintiff brought to the Court’s notice that the Defendant, despite opposing the Plaintiff’s trademark application for the FLAKE REFINED TASTE PACK label, had not disputed the Plaintiff’s proprietary rights in the boomerang design. Thus, the Plaintiff submitted that the Defendant was aware of the Plaintiff’s adoption and use of the FLAKE REFINED TASTE Pack and the boomerang device. The Plaintiff also argued that the Defendant’s departure from its earlier mark and packaging for its goods, which had been peacefully coexisting with the Plaintiff’s packaging, and adoption of the new packaging, deceptively similar to the Plaintiff’s packaging, was inexplicable. Furthermore, it was contended that since the Defendant had obtained trademark registrations for the mark SUN FLAKE it was estopped from alleging that the word(s) FLAKE and/or FLAKE PREMIUM are descriptive.

The Defendant countered that the Plaintiff, itself, had used the word FLAKE in a descriptive manner in relation to tobacco related products describing some of its other products as flake tobacco. Further, to counter the Plaintiff as regards alleged approbate-reprobate action by Defendant with respect to descriptiveness of the mark FLAKE, the Defendant submitted that it had not applied for trademark registration of the mark FLAKE per se but for FLAKE-formative marks.

As regards infringement of copyright, the Defendant submitted that the general get-up, placement of material and the material itself are totally different.


The Court held that the test to be applied for copyright infringement is that of substantial copying, i.e. the degree of similarity which would lead one to say that the alleged infringing copy is a reproduction of the original having adopted its essential features and substance. Further, it held that, in assessing copyright infringement, small/trivial differences introduced ought to be ignored since every intelligent copyist will always introduce a few changes to set up a defense against infringement of copyright. The infringing copy does not have to be exact in every microscopic detail. In view of the above, and considering various similarities in the above-shown rival packaging, it was held that various elements of the Defendant’s packaging appeared to be a substantial copy of those of the Plaintiff’s packaging. Given the above, it was held that the Plaintiff was entitled to an injunction with respect to infringement of copyright.

Further, it was held that, given the enormous goodwill and reputation of the Plaintiff’s FLAKE range of cigarettes and deceptive similarity of the impugned packaging, the Court found that the Plaintiff had also made out a prima facie case for an injunction against passing-off the products of the Defendant as that of the Plaintiff.

Considering that the suit was at the interim stage and the Plaintiff had already made out a case for its rights to be adequately protected, the Court held that it would not consider whether or not the word FLAKE is descriptive. Therefore, an ad interim injunction was granted in favor of the Plaintiff with respect to copyright infringement and passing off.

[1] COMM IP Suit No. 106 of 2020, Bombay HC, Order dt. July 27, 2020

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