The last couple of months have been quite exciting for SpicyIP. From patent disputes (Novartis & Bajaj – TVS) to copyright disputes (Sholay) to trademark disputes (Sholay again) we’ve experienced the ‘holy trinity’ of intellectual property laws. This however seems to be only the beginning of an IP conscious
Before going into the dispute it is necessary to first explain the status of the relationship between Britannia – a company held almost equally by the Wadia Group and Danone – a French Food giant. Danone is currently trying to enter the Indian market on its own and was on the verge of parting ways with Britannia. Under the current agreement with Britannia, Danone cannot market any new products in the Indian market without the prior permission of Britannia.There have been persistent new reports that the Wadia-Danone marriage has been on the rocks for some time and the current suit may just be the final blow.
Coming to the facts, first launched in 1997, Britannia’s ‘Tiger’ biscuits are undoubtedly one of the most popular biscuit brands across India especially amongst drowsy, sleep deprived students attending those boring morning classes in law school. Nothing else in the market (except for Parle-G perhaps) pumps your body with so much glucose, for just
Rs.4! Given the thumping success of the ‘Tiger’ brand Britannia obviously sought to tap the export market as well. So when Britannia decided to export ‘Tiger’ biscuits the first thing they did, as any proud owner of a reputable trademark would do, was to register their trademark in the foreign markets. Imagine their shock when they found out that their business partners – Danone – had usurped their ‘Tiger’ trademark in 40 countries as reported by BS!
If what Britannia is saying is true, that is, Danone indeed used the ‘Tiger’ trademark without first entering into a licensing agreement with Britannia, then Britannia would have quite a strong case against Danone only if it can prove that the ‘Tiger’ trademark has some market or reputation in those countries where it is claiming infringement. Danone is yet to comment on the issue and I’m sure there must be some finer nuances to the dispute which have not been yet been reported in the mainstream media. However there were news reports in April suggesting that Danone was going to return the trademark to Britannia. Considering the matter has reached litigation, with Britannia announcing the suit against Danone at their AGM, the point to be examined is the chances of Britannia winning the case.
Prima facie, as of the facts reported to date, it seems that Britannia is going to win this case hands down in the
. Overseas trademark reputations are recognized by most jurisdictions. For example n India it was the 1996 case of N.R. Dongre v. Whirlpool where the Supreme Court held that trans-border reputation could be the basis for claiming ownership over a trademark. In that case Whirlpool was able to prove that its trademark was popular in India, although it was not registered or sold, because of the fact that it was advertised in several international magazines which had a circulation in the target consumer group in India.
In the current case apart from the trademark issue there is also a copyright issue. The ET quoted the MD of Britannia as saying
Danone’s actions amount to a breach of trust. The brand’s IPR include recipe, package design, pnuemonics, colour schemes and brand positioning. The copyright resides in the IPR and that has been violated.
What remains to be seen is whether the Wadia Group is using this as a hard-nosed negotiating tactic to ensure that its business partner – Danone – sells its stake in Britannia to the Wadia Group at a favourable price or whether it is doing so to actually recover its trademark.