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

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 circumstances, inclined to the view that the addition of the ‘O’ was inspired by the plaintiff’s successful ‘OREO’ brand.”

Concluding that the addition of ‘O’ by the defendant, Parle, is prima facie deliberate, the bench said, “… it is solely in respect of the vanilla cream filled chocolate sandwich biscuits, in packs which are strikingly similar to those in which the plaintiff packs and sells its vanilla cream filled chocolate sandwich biscuits, that the defendant is using the “FAB!O” mark.”

On similar trade dresses, the court that said that the distinguishing features between the two packings are not enough to convince the customer of average intelligence and imperfect recollection, that the biscuits are manufactured by two different entities.

The defendant, Parle, pleaded that the trade dress employed by the plaintiff, Intercontinental Great Brands, for its OREO cookies is common to the trade. Parle relied on the photographs of biscuits manufactured and sold by other manufacturers, in packages of similar colour and similar features.

Rejecting the contentions raised by Parle, the bench said, “Commonality to the trade, statutorily, is not a defence against infringement, though it curtails the right of the plaintiff. Section 17(2)(b) of the Trade Marks Act stipulates that no exclusivity can be claimed in respect of any part of a trade mark which is common to the trade.”

“The emergence, in the market, of similar cookies in packages bearing a similar trade dress after a trade dress of the plaintiff’s OREO cookies has become known to the public, cannot render the plaintiff’s trade dress as common to the trade,” the court added.

The court concluded that the Parle, has, prima facie, infringed Intercontinental Great Brands' registered trademark of 'OREO'. It further said that by adopting a trade dress deceptively similar to that of the ‘OREO’ brand of cookies, Parle has sought to pass of its FAB!O brand of cookies as bearing an association with the OREO cookies.

The court restrained Parle from using the FABIO or FAB!O mark, and barred it from manufacturing, packing or selling its vanilla cream filled chocolate sandwich biscuits in the offending trade dress/pack.

Counsel for the Petitioner: Mr. C.M. Lall, Sr. Adv. with Ms. Nancy Roy, Mr. Abhishek Kotnala and Ms. Jyotideep Kaur, Advs

Counsel for the Respondent: Mr. Sandeep Sethi, Sr. Adv. with Mr. N.K. Bhardwaj, Mr. Bikash Gorai, Ms. Nabhanya Sharma, Mr. Abhiraj Jayant, Advs.

Case Title: Intercontinental Great Brands versus Parle Product Private Limited

Citation: 2023 LiveLaw (Del) 141

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