Delhi High Court: No Distinction between Deliberate and Innocent Infringement

Delhi High Court: No Distinction between Deliberate and Innocent Infringement

The Delhi High Court while finding Parle prima facie infringed Intercontinental Great Brands' registered trademark of 'OREO', observed, in assessing infringement, one compares the registered trademarks to assess whether they are so similar as to lead to confusion or deception, as envisaged by Section 29 of the Trade Marks Act. As against this, passing off is a common law tort, which stands saved by Section 27(2) of the Trade Marks Act as an independent right available to the user of a mark, registered or unregistered. The right to act against infringement is, therefore, protective in nature.

Intercontinental Great Brands, the owner and proprietor of the OREO brand of biscuits, 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.

Arguing 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.

Parle contended 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 at the outset, observed that it would be facile to suggest that any customer would be deceived into mistaking ―FAB!O for OREO. This is not, therefore, one of those cases in which the names of the plaintiff's and defendants' product sound so alike, to the ear, that one may mistake the latter for the former. There are a number of precedents in which the plaintiff's and defendant's marks sound the same and have, therefore, been held to be phonetically similar. They cannot, however, apply to the case on hand.

The single judge Justice C Hari Shankar stated that, 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!O' mark."

The judge opined that the term Passing off, is, classically, a tort of deceit. Passing off actions, unlike infringement actions, are both protective and punitive. They protect the goodwill and repute earned by a person, in his goods or services, over a period, against those who seek to unfairly capitalize on them, who stand punished in the bargain. Passing off, as a common law action is, therefore, intended to punish the man who passes off his goods or services as the goods or services of another, or resorts to imitative subterfuge to lead the public into believing an association between them.

"In actual practical application, one often sees that the dividing line between infringement and passing off, in a given case, is, despite the jurisprudential distinction between the two rights, thin. The reason is obvious. Both rights are predicated on confusion and/or deception (between which, too, the dividing line is, again, thin, and stands largely obliterated by the definition of ―deceptively similar in Section 2(h)42 of the Trade Marks Act, which merges the two concepts) and, in each case, the matter is to be assessed from the point of view of the customer of average intelligence and imperfect recollection. Where the viewer, and the point of view, both coalesce, some amount of overlap is bound to occur," stated the judge.

The Court asserted 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.

Lastly, 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.