March 4, 2021

ITC drags Godfrey Phillips to court docket over infringement of its mark ‘Flake’

The Bombay Excessive Courtroom has restrained Godfrey Phillips (India) from manufacturing, distributing or promoting its ‘Choose’ cigarette model with the ‘Flake’ trademark until additional orders, granting reduction to rival ITC which had claimed that it infringed upon its personal ‘Flake Refined Style’ model.

Earlier this 12 months, the Kolkata-based tobacco maker had approached the Bombay HC looking for to restrain the Modi Enterprises flagship from infringing its copyright and registered trademark ‘Flake’, which it mentioned had product sales of round Rs 6,603 crore throughout monetary 12 months 2018-19.

ITC mentioned the Mumbai-based firm had launched ‘deceptively comparable’ packaging in its ‘Choose’ model, to piggyback on the favored ‘Flake’ cigarette model.

Though Godfrey Phillips had been promoting cigarettes underneath the ‘Choose’ trademark utilizing a distinct packaging/label and commerce gown for years, it ‘intentionally adopted’ a considerable replica of ITC’s creative work in December 2019, it had argued earlier than the court docket.

On Tuesday, Justice BP Colabawalla granted interim reduction to ITC, observing that Godfrey Phillips had given no purpose for switching from its model identify in white towards a pink backdrop, to writing the model identify in pink towards a white backdrop – equivalent to the color scheme of ITC’s ‘Flake Refined Style’.

In his 44-page order restraining Godfrey Phillips from utilizing the mark in any method, Justice Colabawalla mentioned: “I agree with the authorized proposition…that in assessing copyright infringement, small/trivial variations launched should be ignored since each clever copyist will all the time introduce just a few modifications to arrange a defence towards infringement of copyright. The infringing copy doesn’t should be precise in each microscopic element.”

Earlier, ITC’s senior counsel Ravi Kadam had argued earlier than the court docket that the “use of the phrases ‘Flake Premium’ under the defendant’s model identify (Choose) is evocative of the mark ‘Flake’ of the plaintiff (ITC) and the impugned pack, as a commerce gown for the defendant’s (Godfrey Phillips) product, is thus plainly deceptively much like the ‘Flake Refined Style’ (of ITC).”

Countering the claims, Senior Counsel Veerendra Tulzapurkar, who appeared for Godfrey Phillips, mentioned folks within the business and commerce (together with the general public) know that the varied marks containing the phrase ‘Flake’ harmoniously co-exist and, due to this fact, the mentioned phrase can’t be monopolized.

“The plaintiff (ITC) can be conscious that the cigarette business in India is considerably managed by 5 gamers, viz. The Plaintiff, the Defendant (Godfrey Phillips), the Golden Tobacco Firm, VST and NTC, every of which have trademark registrations for marks containing ‘Flake’,” Tulzapurkar argued.

“Defendant’s registration software just isn’t for the phrase ‘Flake’ per se however is for ‘Choose Flake Premium’,” he mentioned.