The Delhi High Court has restrained Parle Products from using the name Fabio/Fab!o for its vanilla cream filled chocolate biscuits.
Accusations
It was hearing a case of trademark infringement moved by Intercontinental Great Brands for violation of its Oreo biscuit trademark.
Oreo said that Parle had introduced its own range of vanilla cream filled chocolate biscuits called Fab!o in January 2020.
It accused that the Indian company, prior to this time, was using the mark Fab/Fab! for its biscuits.
However, Fab!o was used only for vanilla cream filled chocolate biscuits while all other biscuits were sold under the Fab! name by Parle.
Parle defends
Meanwhile Parle defended that the Fab!o trademark is structurally, visually and phonetically dissimilar to the Oreo mark as there is only one common letter between the two marks – the letter O.
It was argued that though both the biscuit brands have embossing on the surface, the same is totally different.
A single judge bench of Justice C Hari Shankar observed that Parle advertised Fab!o while pronouncing it as fa-bee-yo which clearly rhymes with Oreo.
Similar sounding name
“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,” Justice Shankar held.
The two concluding syllables are the same, “ee-yo”, and hence the “names undoubtedly rhyme”.
Therefore the HC “prima facie” held that Parle had “consciously sought to approach as close to the Oreo mark as possible by adding a terminal O to its pre-existing FAB! Mark”.
Customers unable to distinguish
It further said that the average customer can easily confuse between the two, specially mistaking the Fab!o cookies as Oreos due to its deceptively similar blue package.
Hence the customer “may legitimately be expected to draw an association between the Fab!o and Oreo marks as both being used by the same manufacturer”.
Similar shade of packaging color
Also to consider is the fact that there is no other cookie in the market with a similar sounding name, so there is “every likelihood of the lay consumer, who remembers having had the Oreo biscuit earlier” to presume a connection between the new Fab!o biscuit and the earlier Oreo biscuit.
The HC said this was supplemented by the fact that Parle is also selling vanilla cream chocolate biscuits in a blue and white packaging, “using the shade of blue strikingly similar to the shade of blue used” in the Oreo’s packaging.
Verdict
The HC held, “I am of the opinion that the defendant has, prima facie, infringed the registered trademarks of the plaintiff, and has also, by adopting a trade dress (visual appearance) which is deceptively similar to that of the plaintiff‘s ‘Oreo‘ brand of cookies, sought to pass off its Fab!o brand of vanilla cream filled chocolate cookies as bearing an association with the plaintiff‘s Oreo cookies.”
It has barred Parle from manufacturing, packing or selling their vanilla cream filled chocolate biscuits in their packaging or using the said trade dress.
“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,” it said.
