Published on :
New Delhi: The Delhi High Court on Friday restrained food processing company Parle from selling its vanilla cream filled chocolate sandwich biscuits in the packaging with the mark ‘FABIO’ or ‘FAB!O’ because of its resemblance and deceptive similarity to ‘OREO’ biscuit [Intercontinental Great Brands v Parle Product Private Limited].
Justice C Hari Shankar said that Parle cannot use the marks ‘FABIO’ or ‘FAB!O’ for any purpose whatsoever.
“This injunction shall also apply to stocks presently in the defendant‘s possession and as yet uncleared, though it would not apply to stocks which have already been released in the market,” the Court ordered.
The order was passed on a suit filed by Intercontinental Great Brands – owner and proprietor of the OREO brand of biscuits – alleging that Parle’s FABIO and FAB!O infringed its trademark.
The Court was told that Parle introduced its own range of vanilla cream filled chocolate biscuits under the brand ―FAB!O in January 2020 and that to this date they were using the brands FAB and FAB! for its biscuits.
It was argued that the FAB!O mark was 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 was that even though Parle biscuits are written ‘FAB!O’, it is bound to be pronounced ‘FABIO’.
After considering the arguments as well as the packaging and the biscuits contained therein, the Court said that the ’!‘ in ‘FAB!O’ is merely an ‘I‘ in disguise and that the two marks are phoentically similar.
Justice Hari Shankar said that the manner in which the defendant has, in its advertisements, declared that its ‘FAB!O’ mark is required to be pronounced as ‘fab-ee-yo’ amounts to a candid acknowledgement that ‘FAB!O’ is required to be pronounced like ‘OREO’, which would be pronounced ‘or-ee-yo’.
He said that by adding an ‘O’ to its earlier ‘FAB!’ mark, the defendant has made the concluding ‘io’ intonation in its ‘FAB!O’ mark identical to the concluding ‘eo’ intonation in the plaintiff‘s ‘OREO’ mark.
The Court noted that there is no other biscuit with a similar sounding name with concluding ‘eo’ sound and therefore, when another identical product enters the market with the same concluding sound and similar packaging, there is likelihood of a customer who had the ‘OREO’ biscuit earlier, presuming its connection with ‘FAB!O’.
It said that the defendant has provided no explanation for its decision to add an ‘O’ to its existing ‘FAB!’ mark and inthese circumstances the Court would be inclined to view that the addition was inspired by the OREO brand.
“Given all the similar features between the two packs in which the two cookies are sold, to which I have already alluded hereinabove, the likelihood of such a customer presuming an association between the ―FAB!O and OREO brand on the basis of the said similarities, in my opinion, looms large,” the Court said.
It, therefore, concluded that Parle has prima facie infringed the registered trademarks of the plaintiff and sought to pass off its FAB!O brand of cookies as OREO.
However, Justice Hari Shankar rejected the argument that the design of the two cookies are also similar.
The court passed an interim order injuncting Parle from using the mark FABIO or FAB!O till the disposal of the suit.
Senior Advocate CM Lall along with advocates Nancy Roy, Abhishek Kotnala and Jyotideep Kaur appeared for the plaintiff.
Defendant was represented through Senior Advocate Sandeep Sethi and advocates NK Bhardwaj, Bikash Gorai, Nabhanya Sharma and Abhiraj Jayant.
