Delhi High Court Grants Interim Protection To OREO, Restrains Parle From Using 'FAB!O'

While granting interim protection to 'OREO' in a suit filed by its owner Intercontinental Great Brands, the Delhi High Court has said that the brand names for biscuits and cookies, ending in 'IO' or 'EO' are rare in market and a customer of average intelligence is likely to presume an association between OREO cookies and Parle's 'FAB!O' biscuits.Justice C Hari Shankar said names ending in 'O' or 'IO' are not common on biscuits and Parle has made concluding 'io' intonation in its 'Fab!O' mark identical to the concluding 'eo' intonation in 'Oreo' mark, by adding 'O' to its earlier 'Fab!' mark."Seen in conjunction with the fact that the 'FAB!O' mark is used by the defendant only in respect of cream filled chocolate sandwich biscuits, and that, in fact, the blue package is used only for vanilla cream filled chocolate sandwich biscuits, the Court is inclined, prima facie, to hold that the defendant has consciously sought to approach as close to the plaintiff‘s 'OREO' mark as possible by adding a terminal 'O' to its pre-existing 'FAB!' mark. A customer of average intelligence and imperfect recollection, who is aware of the plaintiff‘s vanilla cream filled chocolate OREO cookies and the package in which it is sold and later comes across the defendant‘s vanilla cream filled chocolate FAB!O cookies, in a deceptively similar blue package, may legitimately be expected to draw an association between the FAB!O and OREO marks as both being used by the same manufacturer. The possibility of an association between the impugned mark of the defendant and the plaintiff‘s mark being drawn cannot be gainsaid." Intercontinental Great Brands, the owner and proprietor of the OREO brand of biscuits, has filed a trade mark infringement suit against Parle Products Pvt. Ltd., alleging that Parle is selling its range of vanilla cream filled chocolate biscuits under the brand name 'FAB!O', which is deceptively similar to OREO mark. The plaintiff has also alleged that Parle is manufacturing and selling the 'Fab!O' biscuits in the package with deceptively similar trade dress.According to Intercontinental Great Brands, Parle is using FAB!O mark only for cream filled chocolate sandwich biscuits which are identical to the biscuits manufactured and sold by the plaintiff under the OREO trademark. "For all other biscuits, Parle continues to use the FAB! mark, it averred," it said in the suit.The court said the terminal 'eo' sound in 'OREO' is one of the striking features of the plaintiff’s product, which distinguishes the biscuits in the mind of the average consumer of imperfect recollection."There is no other biscuit with a similar sounding name, with a concluding “eo” sound. When, therefore, another identical vanilla cream filled chocolate sandwich cookie enters the market, named “FAB!O” with a concluding “io” sound, there is every likelihood of the lay consumer, who remembers having had the “OREO” biscuit earlier, presuming a connection between the new “FAB!O” biscuit and the earlier “OREO” biscuit,” the court said. Contending that Parle was attempting to pass off its FAB!O range of vanilla cream filled chocolate biscuits as the plaintiff’s, Intercontinental Great Brands sought interim injunction, restraining Parle from using the deceptively similar trade mark and trade dress. Arguing that there is no phonetic similarity between the two brands, the Parle submitted before the High Court that where the first syllable of the two marks is different, it cannot be said that they are phonetically similar. The Court took note that the advertisements that appear on the Parle's Facebook page and said: "The manner in which the defendant has, in its advertisements, declared that its “FAB!O” mark is required to be pronounced as “fabee-yo” amounts to a candid acknowledgement that “FAB!O” is required to be pronounced like “OREO”, which would be pronounced “or-ee-yo”. Having so represented to the public, it can hardly lie in the mouth of the defendant to contend that “FAB!O” and “OREO” are not phonetically similar." Observing that there exist binding judicial precedents which have held marks to be phonetically similar and, therefore, likely to confuse or deceive, even when their first syllables are different, the court said the argument predicated on the dissimilarity between the first syllables of “FABIO” and “OREO” cannot be accepted. "FAB!, with or without the '!' exclamation mark, has a laudatory meaning and connotation, which may appropriately be applied to biscuits as extolling their taste. FAB!O, on the other hand, is meaningless," said the court, while questioning why Parle chose to add 'O' solely for cream filled chocolate sandwich biscuits when it is using "laudatory" 'Fab!' mark for other biscuits. It added: “The defendant has provided no explanation for its decision to add an ‘O’ to its existing FAB! mark, specifically for cream filled chocolate sandwich biscuits. The Court is, in the...

Delhi High Court Grants Interim Protection To OREO, Restrains Parle From Using 'FAB!O'

Parina Katyal

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