HC restrains Godfrey Philips from infringing ITC’s FLAKE trademark

Mumbai. The Bombay high court (HC) on Monday restrained Godfrey Philips (India) Limited from infringing copyright of ITC Limited in the rival cigarette manufacturers’ FLAKE packs and also from using any imitations of the artworks appearing on the latter’s best-selling tobacco products’ pack in West Bengal and north-east India.

Justice BP Colabawalla issued the pro-tem order after coming to the prima facie conclusion that Godfrey Philips had substantially copied the patterns and colour scheme appearing on FLAKE REFINED TASTE pack of ITC on its (Godfrey’s) SELECT pack being sold in the same market — West Bengal and north-east India.

ITC moved HC after Godfrey Phillips adopted new design on its SELECT pack in December 2019. It alleged that the rival had infringed its trademark and sought an injunction, contending that Godfrey Philips had tried to encash the goodwill enjoyed by its FLAKE brand in West Bengal and north-eastern parts of the country.

ITC argued that the trademark enjoyed a considerable reputation in these markets and pointed out that it had garnered Rs 50,475 crore in gross sales of the FLAKE brand since 1994.

In 2018-19, the FLAEK’s gross sales stood at Rs 6,603.64 crore, including Rs. 3,675 crore earned from the sales of the FLAKE REFINED TASTE brand.

Justice Colabawalla accepted the submissions made on behalf of ITC that the trademark adopted by Godfrey Philips on its SELECT pack was a substantial copy of the complainant’s FLAKE brand.

“Prima facie, it appears that launch of the defendant’s (Godfrey Philips’) impugned (SELECT) pack in the same market with a strikingly similar artistic label is itself indicative of the defendant’s ill-intent,” said the judge.

“Looking at the popularity of the FLAKE REFINED TASTE pack of the plaintiff in these markets (West Bengal and north-east India), where the defendant has also launched the impugned pack, prima facie, it appears that it wants to boost its sales by coming as close as possible to the FLAKE REFINED TASTE brand of the plaintiff,” he added.

HC noted that the pack of the Godfrey Philips used boomerang-shaped devices comprising of concentric arcs in gold and red colour scheme on its SELECT pack, which, prima facie, appeared to be a substantial replication of the boomerang that appears on FLAKE REFINED TASTE pack.

“It has the same white gold and red colour scheme as that of the plaintiff’s FLAKE REFINED TASTE pack,” said the judge.

“It cannot be a matter of coincidence that the stylised “S” adopted (by Godfrey Philips) in the present case is a substantial copy of the boomerang appearing on the plaintiff’s (ITC’s) pack.”

The judge also said that the colour combination and the brand name is written in red bold font against a white background, which follows the pattern on FLAKE REFINED TASTE pack, and even the adoption of the five-spiked crest device by Godfrey Philips, prima facie, appears to be a substantial copy of the five-spiked crest device used by ITC on its packs.

“Looking at all this material, prima facie, I am of the opinion that the plaintiff is entitled to an injunction in terms of prayer for restraining the defendant from infringing the plaintiff’s copyright in its FLAKE REFINED TASTE pack,” the judge added.

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