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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Intercontinental Great Brands – Appellant
Versus
Parle Product Private Limited – Respondent
CS(COMM) 64 of 2021
Decided On : 10-02-2023
In a trademark infringement and passing off action, the Delhi High Court held that the defendant's FAB!O mark and trade dress for its vanilla cream-filled chocolate sandwich biscuits were deceptively similar to the plaintiff's OREO mark and trade dress, respectively. The court found that the defendant's use of the FAB!O mark, which was phonetically similar to OREO, and the blue and white color scheme and overall appearance of its packaging, was likely to cause confusion among consumers. The court also found that the defendant's intent to imitate the plaintiff's mark and trade dress was apparent from the fact that it had only used the FAB!O mark for its vanilla cream-filled chocolate sandwich biscuits, while using the FAB! mark for all other biscuits.
Fact of the Case:
Plaintiff, the owner of the OREO trademark for cream-filled sandwich cookies, sued the defendant for trademark infringement and passing off. The defendant used the FAB!O mark and a similar trade dress for its vanilla cream-filled chocolate sandwich biscuits.
Finding of the Court:
The court found that the defendant's FAB!O mark and trade dress were deceptively similar to the plaintiff's OREO mark and trade dress, respectively. The court also found that the defendant's intent to imitate the plaintiff's mark and trade dress was apparent from the fact that it had only used the FAB!O mark for its vanilla cream-filled chocolate sandwich biscuits, while using the FAB! mark for all other biscuits.
Issues: Whether the defendant's FAB!O mark and trade dress were deceptively similar to the plaintiff's OREO mark and trade dress, respectively.
Ratio Decidendi: The court applied the following principles in reaching its decision: * The test for infringement is whether the defendant's mark is identical with or deceptively similar to the plaintiff's mark, and whether the use of the defendant's mark is likely to cause confusion or deception. * The test for passing off is whether the defendant's use of a mark or trade dress is likely to cause consumers to believe that the defendant's goods or services are those of the plaintiff. * In assessing similarity, the court must consider the marks or trade dresses as a whole, including their appearance, sound, and meaning. * The court must also consider the intent of the defendant in adopting the mark or trade dress.
Final Decision: The court granted the plaintiff's motion for a preliminary injunction, enjoining the defendant from using the FAB!O mark or trade dress for its vanilla cream-filled chocolate sandwich biscuits.
JUDGMENT
I.A.1803/2021 (under Order XXXIX Rules 1 and 2)
1. In the year 1912, so states the plaintiff, cream-filled sandwich cookies were introduced in the worldwide market by National Biscuit Corporation under the brand name OREO. The plaintiff claims, today, to be the owner and proprietor of the OREO brand of biscuits.
Registrations held by parties
2. The plaintiff and defendant hold the following registrations under the Trade Marks Act (to the extent they are relevant to the controversy in issue):
Plaintiff`s registrations
| Trade Mark | Goods | Date | Class | Status |
| [IMG] | Biscuits, cookies and crackers | 1st March 2012 Proposed to be used | 30 | Registered |
| [IMG] | Biscuits, cookies and crackers | 30th April 2010 Proposed to be used | 30 | Registered |
| [IMG] | Bakery goods, biscuits, cookies, brownies, cheese cakes, cookie crumbs, frozen confections, ice-cream, ice-cream cones, puddings, pies, pie crusts and hot chocolate | 3rd November 2015 Proposed to be used | 30 | Protection granted |
| [IMG] | Biscuits, cookies and crackers | 3rd May 2010 Proposed to be used | 30 | Registered |
| [IMG] | Biscuits, crackers cookies and crackers. | 30th June 2010 Proposed to be used | 30 | Registered |
| OREO (Word) | Biscuits, cookies and crackers. | 17th May 1991 Proposed to be used | 30 | Registered |
| OREO (Word) | Biscuits, cookies, crackers, ice-cream, frozen and chilled confectionery | 8th December 2014 User claimed since 1st March 2011 | 30 | Registered |
| OREO O`S (Word) | Breakfast cereal | 10th April 2006 User claimed since 1st March 2003 | 30 | Registered |
| [IMG] | Coffee, tea, cocoa, sugar, rice tapioca, sago, artificial coffee, flour and preparations made from cereals, bread pastry, biscuits, cookies, crackers and confectionery, teas, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices ice | 24th June 2003 Proposed to be used | 30 | Registered |
| [IMG] | Biscuits, cookies and crackers | 12th September 2011 User claimed since 31st March 2011 | 30 | Registered |
| [IMG] | Biscuits, cookies and crackers | 3rd May 2010 Proposed to be used | 30 | Registered |
Defendant`s registrations
| Trade Mark | Goods | Date | Class | Status |
| FABO | 22nd November 2010 | Registered | ||
| FABIO | 2nd July 2018 | Registered |
3. The plaintiff alleges that the defendant Parle Products Pvt. Ltd., has, in or after January 2020, introduced its own range of vanilla cream filled chocolate biscuits under the brand "FAB!O". The plaintiff alleges that, prior to 2020, the defendant was using the brands FAB and FAB! for its biscuits. After 2020, the defendant introduced cream filled chocolate sandwich biscuits under the mark "FAB!O". The plaintiff points out that the FAB!O mark is being used only for cream filled chocolate sandwich biscuits which were identical to the biscuits manufactured and sold by the plaintiff under the OREO trademark. For all other biscuits, the defendant continues to use the FAB! mark. The allegation of the plaintiff is that the mark on the defendant`s biscuit, though written FAB!O is bound to be pronounced FABIO. The mark is, therefore, according to the plaintiff, deceptively similar to the plaintiff`s OREO mark.
4. The trade dress of the package under which the defendant is manufacturing and selling its FAB!O biscuits is also, it is submitted, deceptively similar to the trade dress of the plaintiff`s package. Here, again, the plaintiff seeks to point out that though the defendant, under the impugned FAB!O mark, manufactures and sells vanilla as well as chocolate cream filled sandwich biscuits, the dress of the package in which the defendant sells its vanilla cream filled biscuits is deceptively similar to the trade dress of the plaintiff`s OREO package, whereas the package in which the defendant sells its chocolate cream filled biscuits is of a different colour. As such, the plaintiff submits that the defendant has used a trade dress which approximates and is nearly identical to the trade dress of the plaintiff`s OREO package only for its vanilla cream filled sandwich biscuits. The intent to imitate the plaintiff`s OREO brand is, therefore, submits the plaintiff, painfully apparent.
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