HC restrains Godfrey Philips from infringing ITC’s Flake pack design

The Bombay high court (HC) on Monday restrained cigarette manufacturer Godfrey Philips (India) Limited from infringing the copyright of its rival ITC Limited’s ‘Flake’

The Bombay high court (HC) on Monday restrained cigarette manufacturer Godfrey Philips (India) Limited from infringing the copyright of its rival ITC Limited’s ‘Flake’ packs that are popular in West Bengal and north-east India. The court also restricted Godfrey Philips from manufacturing or selling cigarette packs featuring any colourable imitations of the artworks appearing on Flake packs.

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Justice BP Colabawalla issued the pro-tem order after noticing that Godfrey Philips had substantially copied the patterns and colour scheme appearing on the Flake Refined Taste cigarette pack of ITC for its own ‘Select’ pack being sold in the same market – West Bengal and north-east India.

ITC moved HC after Godfrey Phillips adopted a 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 cash in on the popularity of the Flake packs in the north-east market.

In support of its contention that the trademark had a considerable reputation in the market, ITC pointed out that since 1994, gross sales of cigarettes sold under the Flake mark was ₹50,475 crore. In 2018-19 this figure rose to ₹6,603.64 crore, including ₹3,675 crore from sales of only the Flake Refined Taste pack.

“Looking at the popularity of the Flake Refined Taste pack of the plaintiff in the market [north-east India and West Bengal], where the defendant has also launched the impugned pack, prima facie it appears that the defendant wants to boost its sales by coming as close as possible to the Flake Refined Taste pack of the plaintiff,” the judge added.

HC noted that Godfrey Philips’s Select pack used boomerang-shaped devices comprising of concentric arcs in gold and red colours, which appeared to be a substantial replication of the boomerang appearing on ITC’s 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.”

Further, the judge said that even the colour combination and the brand name is written in red, bold font against a white background, which follows the pattern on the Flake Refined Taste pack. He noted that the adoption of the five-spiked crest device by Godfrey Philips, prima facie, appeared to be a substantial copy of the five-spiked crest device used by ITC on its cigarette packs.