CS (COMM) 64/2021
The High Court of Delhi at New Delhi
INTRODUCTION
The case was filed before the Hon’ble High Court of Delhi by the Plaintiff under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 for an order restraining the Defendant from using the impugned mark for manufacturing, packing, or selling their vanilla cream filled chocolate sandwich biscuits in the impugned pack or trade dress.
FACTS OF THE CASE
1. Cream-filled sandwich cookies were introduced in the worldwide market by National Biscuit Corporation in the year 1912, as stated, under the brand name OREO.
2. Today the Plaintiff owns ownership and proprietorship of the OREO brand of biscuits.
3. As alleged by Plaintiff, prior to 2020 the defendant was using the brand FAB and FAB! For its biscuits. In or after January 2020, it introduced its own range of vanilla cream-filled chocolate biscuits under the brand “FAB!O” which were identical to biscuits manufactured and sold by the plaintiff under the OREO trademark.
4. The trade dress of the package under which the defendant is manufacturing and selling its FAB!O biscuits is also deceptively similar to that of the Plaintiff.
ARGUMENTS OF THE PLAINTIFF
1. Plaintiff alleges that the impugned mark ‘FAB!O’ is phonetically similar to Plaintiff’s mark “OREO”. Even a small child is highly unlikely to slur the word “FAB!O” to “OREO”.
2. OREO being a purely invented word is entitled to enhanced protection under the Trade Marks Act, 1999.
3. Defendant’s cookie copies all the essential features like the (i) outer ridge, (ii) inside dashes just inside the circumference, and (iii) florets-shaped embossing. It was submitted that Plaintiff’s OREO cookie holds a subsisting trademark registration and the defendant has infringed it. Plus both are in the form of black circular biscuits with white vanilla cream in the middle.
4. The packaging of Defendant is deceptively similar to that of Plaintiff. Elements like the blue and white colour scheme, slanted placement of “OREO” and “FAB!O” that is written in white letters, similar size of the package, and the placement of the biscuit indicate so. Using the principle of “initial interest confusion”, shall lead to confusion between the competing marks.
5. Defendant has established their intent to imitate by using the said mark “FAB!O” only for their vanilla-filled chocolate sandwich cookies that are similar to Plaintiff’s OREO. Defendant uses the mark “FAB!O” only for these chocolate sandwich cookies and uses the ‘FAB!’ mark for the rest of their cookies.
ARGUMENTS OF THE DEFENDANT
1. Defendant’s mark is structurally, visually, and phonetically dissimilar to Plaintiff’s. In fact, the only common word between the words is the letter “O”.
2. Even though both the cookies have an embossing on the surface, there is no similarity between the two. Plus, the elements of design mentioned by Plaintiff are common to the trade. Furthermore, since neither of the biscuits is sold open or loose, as such, the similarity in design, even if it were to be assumed to exist, is inconsequential. A buyer never purchases the biscuits on the basis of the pattern on the surface of the biscuit.
3. The aspects regarding packaging raised by Plaintiff are all common to the trade, hence, there can be no deceptivity. Additionally, the manner in which Defendant promotes its product is very different and unique. Therefore, no case for confusion as claimed.
4. Defendant’s packing has the ‘PARLE’ logo prominently displayed, erasing any possibility of confusion in the mind of the purchaser as claimed. This establishes the bona fide intentions of Defendant.
5. The FAB!O mark is nothing but an amalgam of the FAB! And FABO marks of Defendant. Furthermore, as already mentioned, the PARLE logo eliminates any chance of deception or confusion.
OBSERVATION OF THE COURT
The Hon’ble Court observed that it is essential to decide on the Application filed under Order XXXIX Rule 1 and 2 of the CPC. It first deconstructed Section 29 of the Act and cleared the air on the concept of “confusion”. Furthermore, they made the following observations:
=> Infringement and passing off
1. It would be facile to suggest that a customer could be deceived into mistaking “FAB!O” for “OREO” and precedents in which the plaintiff’s and defendant’s marks were held to be phonetically similar do not apply here. However, even though the defendant has stylistically written its mark as ‘FAB!O’, based on their own Facebook page promotional advertisements and more, it can be established that the ‘!’ is merely an ‘I’ in disguise.
2.In reference to the principle of “first syllable dissimilarity” raised by the defendant which eliminates the chances of the two marks being phonetically similar because the syllable is different (“O” and “Fa”) the Court relied on Amritdhara Pharmacy v. Satya Deo Gupta (1963) 2 SCR 484 and Pankaj Goel v. Dabur India Ltd. (2008) 38 PTC 49. It was held that since the defendant has declared that the “FAB!O” mark is required to be pronounced as “fab-ee-yo”, it can hardly be contended that “FAB!O” and “OREO” are not phonetically similar.
3. Names that end in “O”, let alone “IO”, are not commonplace in biscuits. By adding an “O” to its earlier “FAB!” mark, the defendant has made identical intonation to the plaintiff’s mark. Additionally, the “eo” sound in “OREO” is conceivably one of the striking features of the plaintiff’s product. This when seen in conjunction with the fact that the FAB!O mark is used only in respect of cream-filled chocolate sandwich biscuits, and the blue package is only for the vanilla cream ones, makes it abundantly clear that the defendant has consciously sought to approach as close to “OREO” as possible. A customer of average intelligence and imperfect recollection, who is aware of Plaintiff’s OREO and its packaging may legitimately be expected to draw an association of FAB!O with OREO. Here, the point of “initial interest confusion” along with the establishment of confusion as identified in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd. (2015) 63 PTC 551 that relied on Mc Carthy on Trademarks and Unfair Competition was also recognized.
4. The intent to capitalize on the goodwill earned by the plaintiff in respect of similar biscuits by adding the terminal “O” is strengthened by the difference in the packs that the defendant is using. A blue and white packing using a strikingly similar shade of blue as used by the plaintiff for their vanilla cream-filled chocolate sandwich biscuits leaves no room for doubt. The difference in the design on the surface of the sandwich biscuits can hardly be made out by a glance at the packs.
5. In assessing infringement a comparison of the registered trademarks to assess whether they are so similar as to lead to confusion or deception, as envisaged by Section 29 has to be done. Infringement is a purely intellectual property right independent of the intent of the alleged infringer. The right to act against infringement is, therefore, protective in nature. Therefore, there is no distinction between deliberate and innocent infringement, though deliberate copying might, in a given case, justify the invocation of the Slazenger & Sons v. Fletham & Co. (1889) 6 RPC 531 principle.
6. The contention that the trade dress employed by the plaintiff for its OREO cookies is common to the trade remains inconclusive. It is not a defense against infringement statutorily.
7. The reliance on the Britannia Industries Ltd. v. ITC Ltd. (2021) 86 PTC 61 case by the defendant to contend mere intention to confuse could not make out a case of infringement would not apply here. The impugned mark or trade dress has to be examined vis-a-vis the asserted mark and the surrounding circumstances of the case. The prima facie intent of the defendant to confuse or deceive the plaintiff’s customers has to be established. Only if the distinctive character is found, the said defense shall prevail.
=> Infringement or passing off based on the similarity of cookie designs
1. Contrary to Plaintiff’s claims, the Court could not establish a prima facie infringement of the cookie design. Infringement could be alleged only if the design on the surface of FAB!O biscuits were identical or confusingly or deceptively similar to OREO but it was found to be almost totally dissimilar.
2. Infringement has to be assessed by comparing the marks feature for feature. The same was not convinced here.
CONCLUSION
The application was disposed of by the Court. They restrained the defendant from using the impugned FABIO or FAB!O marks for any purpose whatsoever. It also restrained the defendant from manufacturing, packing, or selling their vanilla cream-filled chocolate sandwich biscuits in the impugned pack.
