In passing off cases, the general test followed by the Courts in deciding whether the get-up of one product is a copy of another is not by placing the two products side by side and counting the similarities or the differences but rather to remember the Plaintiff's product and then view the Defendant's. In a recent case ITC Limited v. Crescendo Tobacco Agency and Anr. the Kolkata High Court reiterated this principle in finding Crescendo's products not capable of creating confusion in relation to ITC's products.
The issue in this case arose between ITC Limited and Crescendo Tobacco Agency and Anr, when ITC felt that Crescendo had altered the get-up and packaging of its "SPECIAL" brand of cigarettes in order to imitate the metallic red and flaming gold packet of its "GOLD FLAKE" brand and in doing so had acted dishonestly and had tried to appropriate its goodwill. Although, accepting that there were some dissimilarities between the two packets, ITC insisted that there was every likelihood that a would-be customer of "GOLD FLAKE" being confused at the sight of the "SPECIAL" packet would be deceived into settling for that instead of the "GOLD FLAKE" packet. It was contended by ITC that the Court should use the test not from the eyes of the educated urban consumer but from the point of view of an unsuspecting rustic who may be deceived into purchasing Crescendo's products while actually intending to purchase that of ITC's.
Crescendo, in reply, suggested that ITC's case should be discredited since ITC marketed its "GOLDFLAKE" brand in packets of other hues and that ITC in its pleadings had made no distinction between the sales figures of its "GOLD FLAKE" brand marketed in red and gold packets and those sold in other packets and as such were seeking to give the impression that their "GOLD FLAKE" brand was sold only in red and gold packets as a result of which these packets had come to be exclusively associated with the brand.
The Court opined that the test to be applied is the "test of the eye", whereby if the eye reminds a person of the Plaintiff's products upon looking at the Defendant's products, not only because of a similar colour combination but also on the impression of the other distinctive features, then an injunction should follow. The test will be met if a passing glance at the Defendant's products brings to mind the Plaintiff's products. However, in cases where the eye does not recall the Plaintiff's product upon looking at the Defendant's product, then the injunction should be refused.
Applying this test to the present case, the Court observed that ITC's cigarette packet did not exhibit a significant distinctiveness in pattern. Further, an unusual colour combination with exceptional features may by itself give an attractive and lasting impression of the product, however the combination of bland metallic red and flashy gold, would hardly be able to bring about the same idea. The Court thus held that Crescendo's cigarette packet was not capable of causing confusion with ITC's "GOLD FLAKE" and as such ITC's interlocutory application was dismissed.
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