The recent legal precedent concerning the dispute over the trade dress of "Good Day Butter Cookies" and "Sunfeast" underscores the significance of trade dress in trademark litigation. This case serves as a stark reminder that, even when brand names and trademarks appear dissimilar, the overall trade dress can be a decisive factor in determining the likelihood of confusion and infringement. This article provides a detailed analysis of the legal implications of the decision, emphasizing the importance of prior use and the judiciary's commitment to upholding the rights of businesses in the competitive marketplace.

Background:
The recent legal case in question revolves around the issue of trade dress in the context of trademark violation. The Plaintiff, claiming prior use of the trade dress associated with "Good Day Butter Cookies," since 1997 filed a suit against the Defendant, alleging that their product, marketed under the trademark "Sunfeast," employed a strikingly similar trade dress since 2020. The crux of the matter lies in the meticulous design and combination of elements on the packaging, creating a deceptive similarity between the two products.

Interim Injunction and Challenge:
The Hon'ble Single Judge, after due consideration, granted an interim injunction in favor of the Plaintiff, restraining the Defendant from using the allegedly violating trade dress. The Defendant, dissatisfied with this decision, appealed the injunction before the Hon'ble Division Bench.

Concurring Findings of the Division Bench:
The Hon'ble Division Bench, upon careful scrutiny, concurred with the Single Judge's findings. Despite apparent differences in brand name, trademark, and the visual elements of the biscuit, the Bench noted a meticulous design on the part of the Defendant. This design, when combined in the wrapper, resulted in a striking similarity to the Plaintiff's trade dress. The Bench acknowledged the Plaintiff's prior use of the color scheme, getup, and combination of biscuit and butter imagery, further strengthening the case for trade dress infringement.

Trade Dress as a Decisive Factor:
Traditionally, trademark disputes have often focused on the similarities or differences in brand names and logos. However, this case highlights a paradigm shift in the legal landscape, signaling that the overall trade dress of a product can be a decisive factor in determining infringement. The court's recognition of the meticulous design and combination of elements in the Defendant's product, despite differences in individual components, emphasizes the holistic approach taken by the judiciary in assessing the potential for consumer confusion.

Deceptive Similarity and Market Confusion:
The Division Bench, crucially, emphasized that a casual glance at the products revealed a high degree of similarity. The Bench expressed concerns about potential confusion in the market, particularly given the nature of the product—cookies. In a retail environment where products are often displayed on shelves in close proximity, the ordinary consumer could be easily deceived. The Bench concluded that the Defendant's product was deceptively similar to that of the Plaintiff, leading to a likelihood of confusion among consumers.

Prior Use and Logical Attribution:
The Division Bench unequivocally stated that the Plaintiff, being the prior user of the trade dress, had a legitimate claim to protection. Moreover, the Bench attributed the alleged similarity not to mere coincidence but to a logical act of copying and dishonest adoption on the part of the Defendant. This attribution played a pivotal role in dismissing the appeal, reinforcing the principle that a defendant cannot evade an injunction merely by asserting differences in trademarks when the trade dress is found to be substantially similar.

The Concluding Note:
The recent legal precedent in the "Good Day Butter Cookies" and "Sunfeast" case marks a significant development in trademark law, highlighting the growing importance of trade dress . The decision highlights that even when brand names and trademarks appear dissimilar, the overall trade dress can be a decisive factor. In cases where prior use is established, and a likelihood of confusion exists, courts are likely to grant injunctions to prevent the deceptive similarity of products in the market.

The Case Law Discussed:
Case Title: ITC Ltd. Vs Britania Industries Ltd-DB
Date of Judgement/Order:08/11/2023
Case No. O.S.A.(CAD).Nos.134 to 138 of 2023
Neutral Citation No: N.A.
Name of Hon'ble Court: Madras High Court
Name of Hon'ble Judge: Sanjay V.Gangapurwala and B.Bharatha Chakravarthy, HJ

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539