Oreo V. FAB! O: A Saga of Phonetically Similar Marks
Trademark infringement refers to the unauthorised use of a mark, which is identical or deceptively similar to a trademark that is already registered. The term “deceptive similarity” as defined under Section 2 (h) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) means any kind of similarity, which deceives the general public and relates in one way or other to the well-known trademark. It has to be sufficiently similar so that the consumer might be confused and might mix up the two products thinking of them to be the same. The test in such a case is not that of absolute confusion but even the likelihood of confusion is sufficient. Hence, the product’s get-up layout, and also, the colour combination of the packaging plays a significant role at the point of purchase.[1]
Phonetically Similar Marks
Phonetic similarity as one of the fundamental tests of comparison was laid down in the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[2] where the Supreme Court observed that it was not correct in law to hold that the principle of phonetic similarity cannot be used when the manner in which the conflicting words are written is different.
An important application of this principle in this regard can be seen in Consitex SA v. Kamini Jain and Ors.[3] where the Delhi High Court was tasked with the decision on two similar sounding marks ‘Zegna’, an Italian luxury fashion brand, (pronounced Zen-Yah) and ‘Jenya’. The court here leaned in favour of the plaintiff to hold that Jenya was a deceptively similar trademark. The importance of the pronunciation here is such that had Zegna not adduced documents in support of the pronunciation of Zegna as ‘Zen-Yah’, the Court may not have decided in their favour as the two marks otherwise differ significantly.
Quite recently in the case of Intercontinental Great Brands v. Parle Product Private Limited[4], also known as Oreo v. Fab!o case, the Hon’ble Delhi High Court decided in favour of the plaintiff. The defendants were restrained from using the marks FABIO or FAB!O and were also restrained from manufacturing, or selling their vanilla cream-filled chocolate biscuits using the deceptively similar trade dress. It is discussed in detail below-
Breif Facts of the Case
Observation of the Court
1. Deceptive Similarity
The Court agreed with the view taken by the plaintiffs that the deceptive similarity is to be viewed from the point of view of initial interest confusion. In the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd.[5], where in initial interest confusion is defined along with other types of confusion, as “the confusion that may be caused initially, i.e., prior to purchase, but at the time of purchase of the alleged infringer/tort feaser’s product or using its service, the consumer is not confused.” Thus, when the defendants enter the market with the identical vanilla cream-filled chocolate sandwich cookie, named FAB!O concluding with the ‘IO’ sound, there is a possibility that a consumer who had the plaintiff’s biscuit earlier might end up associating FAB!O with OREO biscuits. This satisfies the test of initial interest confusion.
2. Phonetic Similarity
- The Court while rejecting the contention of the defendants as to predicated dissimilarity between the first syllable of FAB!O and OREO, relied on, Amritdhara Pharmacy v. Satya Deo Gupta[6]and Pankaj Goel v. Dabur India Ltd.[7]and held that the marks HAJMOLA and RASMOLA to be similar. ‘Haj’ and ‘Ras’ are no less dissimilar from each other than ‘Fab’ and ‘Or’.
- The existence of phonetic similarity was affirmed by the Court, as the sound ‘EO’ in the OREO is a unique feature associated with the plaintiff’s product. It distinguished the biscuits in the mind of the average consumer of imperfect recollection. Further, in the biscuit industry, there is no other biscuit with a similar sounding name, concluding with the ‘EO’ sound. The addition of ‘O’ in the pre-existing FAB! mark to be pronounced as ‘fab-ee-yo’ of the defendant renders the concluding letters of the defendant’s mark ‘IO’ phonetically identical to the concluding letters ‘EO’ of the plaintiff’s mark OREO which leads to creating confusion in the mind of the consumer.
- The Court further opined that the addition of ‘O’ solely for the packs in which cream-filled chocolate sandwich biscuits were packed and sold is indicative of the fact that the defendant wanted to capitalize on the goodwill earned by the plaintiff and the same was prima facie deliberate act.
Trade Dress
Design
Analysis of the Case
In previous cases, ITC filed suit against Britannia in 2016 alleging trademark infringement. ITC contended that the packaging of Britannia’s NutriChoice Digestive Zero biscuits was identical to that of ITC’s Sunfeast Farmlite Digestive All Good biscuit. The Court decided in favour of ITC and asked Britannia to curb the sale of its NutriChoice Zero biscuits.[8] In Oreo v. Twins[9], the plaintiff ‘Twins’ from Spain presented their case in front of the European Court of Justice (CJEU) for registration of their mark. Oreo filed their opposition to this and claimed their popularity and earlier trade mark which was similar to the Twins. The request of the plaintiff was refused by EUIPO citing the likelihood of confusion as a reason with the earlier and better-established Oreo brand.
Conslusion
[1] Mondelez India Foods Pvt. Ltd. v. Neeraj Food Products, 2022 SCC OnLine Del 2199.
[2] 2001 (2) PTC 541 SC.
[3] 2011 (47) PTC 337 (Del).
[4] Intercontinental Great Brands v. Parle Product Private Limited, 2023 SCC OnLine Del 728.
[5] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd., (2015) 63 PTC 551.
[6] Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484.
[7] Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49.
[8] ITC Ltd v. Britannia Industries LtdCS (COMM) 1128/2016.
[9] Galletas Gullón, SA v. European Union Intellectual Property Office (EUIPO), T‑677/18.
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Oreo V. FAB! O: A Saga of Phonetically Similar Marks
Trademark infringement refers to the unauthorised use of a mark, which is identical or deceptively similar to a trademark that is already registered. The term “deceptive similarity” as defined under Section 2 (h) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) means any kind of similarity, which deceives the general public and relates in one way or other to the well-known trademark. It has to be sufficiently similar so that the consumer might be confused and might mix up the two products thinking of them to be the same. The test in such a case is not that of absolute confusion but even the likelihood of confusion is sufficient. Hence, the product’s get-up layout, and also, the colour combination of the packaging plays a significant role at the point of purchase.[1]
Phonetically Similar Marks
Phonetic similarity as one of the fundamental tests of comparison was laid down in the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[2] where the Supreme Court observed that it was not correct in law to hold that the principle of phonetic similarity cannot be used when the manner in which the conflicting words are written is different.
An important application of this principle in this regard can be seen in Consitex SA v. Kamini Jain and Ors.[3] where the Delhi High Court was tasked with the decision on two similar sounding marks ‘Zegna’, an Italian luxury fashion brand, (pronounced Zen-Yah) and ‘Jenya’. The court here leaned in favour of the plaintiff to hold that Jenya was a deceptively similar trademark. The importance of the pronunciation here is such that had Zegna not adduced documents in support of the pronunciation of Zegna as ‘Zen-Yah’, the Court may not have decided in their favour as the two marks otherwise differ significantly.
Quite recently in the case of Intercontinental Great Brands v. Parle Product Private Limited[4], also known as Oreo v. Fab!o case, the Hon’ble Delhi High Court decided in favour of the plaintiff. The defendants were restrained from using the marks FABIO or FAB!O and were also restrained from manufacturing, or selling their vanilla cream-filled chocolate biscuits using the deceptively similar trade dress. It is discussed in detail below-
Breif Facts of the Case
Observation of the Court
1. Deceptive Similarity
The Court agreed with the view taken by the plaintiffs that the deceptive similarity is to be viewed from the point of view of initial interest confusion. In the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd.[5], where in initial interest confusion is defined along with other types of confusion, as “the confusion that may be caused initially, i.e., prior to purchase, but at the time of purchase of the alleged infringer/tort feaser’s product or using its service, the consumer is not confused.” Thus, when the defendants enter the market with the identical vanilla cream-filled chocolate sandwich cookie, named FAB!O concluding with the ‘IO’ sound, there is a possibility that a consumer who had the plaintiff’s biscuit earlier might end up associating FAB!O with OREO biscuits. This satisfies the test of initial interest confusion.
2. Phonetic Similarity
- The Court while rejecting the contention of the defendants as to predicated dissimilarity between the first syllable of FAB!O and OREO, relied on, Amritdhara Pharmacy v. Satya Deo Gupta[6]and Pankaj Goel v. Dabur India Ltd.[7]and held that the marks HAJMOLA and RASMOLA to be similar. ‘Haj’ and ‘Ras’ are no less dissimilar from each other than ‘Fab’ and ‘Or’.
- The existence of phonetic similarity was affirmed by the Court, as the sound ‘EO’ in the OREO is a unique feature associated with the plaintiff’s product. It distinguished the biscuits in the mind of the average consumer of imperfect recollection. Further, in the biscuit industry, there is no other biscuit with a similar sounding name, concluding with the ‘EO’ sound. The addition of ‘O’ in the pre-existing FAB! mark to be pronounced as ‘fab-ee-yo’ of the defendant renders the concluding letters of the defendant’s mark ‘IO’ phonetically identical to the concluding letters ‘EO’ of the plaintiff’s mark OREO which leads to creating confusion in the mind of the consumer.
- The Court further opined that the addition of ‘O’ solely for the packs in which cream-filled chocolate sandwich biscuits were packed and sold is indicative of the fact that the defendant wanted to capitalize on the goodwill earned by the plaintiff and the same was prima facie deliberate act.
Trade Dress
Design
Analysis of the Case
In previous cases, ITC filed suit against Britannia in 2016 alleging trademark infringement. ITC contended that the packaging of Britannia’s NutriChoice Digestive Zero biscuits was identical to that of ITC’s Sunfeast Farmlite Digestive All Good biscuit. The Court decided in favour of ITC and asked Britannia to curb the sale of its NutriChoice Zero biscuits.[8] In Oreo v. Twins[9], the plaintiff ‘Twins’ from Spain presented their case in front of the European Court of Justice (CJEU) for registration of their mark. Oreo filed their opposition to this and claimed their popularity and earlier trade mark which was similar to the Twins. The request of the plaintiff was refused by EUIPO citing the likelihood of confusion as a reason with the earlier and better-established Oreo brand.
Conslusion
[1] Mondelez India Foods Pvt. Ltd. v. Neeraj Food Products, 2022 SCC OnLine Del 2199.
[2] 2001 (2) PTC 541 SC.
[3] 2011 (47) PTC 337 (Del).
[4] Intercontinental Great Brands v. Parle Product Private Limited, 2023 SCC OnLine Del 728.
[5] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd., (2015) 63 PTC 551.
[6] Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484.
[7] Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49.
[8] ITC Ltd v. Britannia Industries LtdCS (COMM) 1128/2016.
[9] Galletas Gullón, SA v. European Union Intellectual Property Office (EUIPO), T‑677/18.
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Oreo V. FAB! O: A Saga of Phonetically Similar Marks
Trademark infringement refers to the unauthorised use of a mark, which is identical or deceptively similar to a trademark that is already registered. The term “deceptive similarity” as defined under Section 2 (h) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) means any kind of similarity, which deceives the general public and relates in one way or other to the well-known trademark. It has to be sufficiently similar so that the consumer might be confused and might mix up the two products thinking of them to be the same. The test in such a case is not that of absolute confusion but even the likelihood of confusion is sufficient. Hence, the product’s get-up layout, and also, the colour combination of the packaging plays a significant role at the point of purchase.[1]
Phonetically Similar Marks
Phonetic similarity as one of the fundamental tests of comparison was laid down in the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[2] where the Supreme Court observed that it was not correct in law to hold that the principle of phonetic similarity cannot be used when the manner in which the conflicting words are written is different.
An important application of this principle in this regard can be seen in Consitex SA v. Kamini Jain and Ors.[3] where the Delhi High Court was tasked with the decision on two similar sounding marks ‘Zegna’, an Italian luxury fashion brand, (pronounced Zen-Yah) and ‘Jenya’. The court here leaned in favour of the plaintiff to hold that Jenya was a deceptively similar trademark. The importance of the pronunciation here is such that had Zegna not adduced documents in support of the pronunciation of Zegna as ‘Zen-Yah’, the Court may not have decided in their favour as the two marks otherwise differ significantly.
Quite recently in the case of Intercontinental Great Brands v. Parle Product Private Limited[4], also known as Oreo v. Fab!o case, the Hon’ble Delhi High Court decided in favour of the plaintiff. The defendants were restrained from using the marks FABIO or FAB!O and were also restrained from manufacturing, or selling their vanilla cream-filled chocolate biscuits using the deceptively similar trade dress. It is discussed in detail below-
Breif Facts of the Case
Observation of the Court
1. Deceptive Similarity
The Court agreed with the view taken by the plaintiffs that the deceptive similarity is to be viewed from the point of view of initial interest confusion. In the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd.[5], where in initial interest confusion is defined along with other types of confusion, as “the confusion that may be caused initially, i.e., prior to purchase, but at the time of purchase of the alleged infringer/tort feaser’s product or using its service, the consumer is not confused.” Thus, when the defendants enter the market with the identical vanilla cream-filled chocolate sandwich cookie, named FAB!O concluding with the ‘IO’ sound, there is a possibility that a consumer who had the plaintiff’s biscuit earlier might end up associating FAB!O with OREO biscuits. This satisfies the test of initial interest confusion.
2. Phonetic Similarity
- The Court while rejecting the contention of the defendants as to predicated dissimilarity between the first syllable of FAB!O and OREO, relied on, Amritdhara Pharmacy v. Satya Deo Gupta[6]and Pankaj Goel v. Dabur India Ltd.[7]and held that the marks HAJMOLA and RASMOLA to be similar. ‘Haj’ and ‘Ras’ are no less dissimilar from each other than ‘Fab’ and ‘Or’.
- The existence of phonetic similarity was affirmed by the Court, as the sound ‘EO’ in the OREO is a unique feature associated with the plaintiff’s product. It distinguished the biscuits in the mind of the average consumer of imperfect recollection. Further, in the biscuit industry, there is no other biscuit with a similar sounding name, concluding with the ‘EO’ sound. The addition of ‘O’ in the pre-existing FAB! mark to be pronounced as ‘fab-ee-yo’ of the defendant renders the concluding letters of the defendant’s mark ‘IO’ phonetically identical to the concluding letters ‘EO’ of the plaintiff’s mark OREO which leads to creating confusion in the mind of the consumer.
- The Court further opined that the addition of ‘O’ solely for the packs in which cream-filled chocolate sandwich biscuits were packed and sold is indicative of the fact that the defendant wanted to capitalize on the goodwill earned by the plaintiff and the same was prima facie deliberate act.
Trade Dress
Design
Analysis of the Case
In previous cases, ITC filed suit against Britannia in 2016 alleging trademark infringement. ITC contended that the packaging of Britannia’s NutriChoice Digestive Zero biscuits was identical to that of ITC’s Sunfeast Farmlite Digestive All Good biscuit. The Court decided in favour of ITC and asked Britannia to curb the sale of its NutriChoice Zero biscuits.[8] In Oreo v. Twins[9], the plaintiff ‘Twins’ from Spain presented their case in front of the European Court of Justice (CJEU) for registration of their mark. Oreo filed their opposition to this and claimed their popularity and earlier trade mark which was similar to the Twins. The request of the plaintiff was refused by EUIPO citing the likelihood of confusion as a reason with the earlier and better-established Oreo brand.
Conslusion
[1] Mondelez India Foods Pvt. Ltd. v. Neeraj Food Products, 2022 SCC OnLine Del 2199.
[2] 2001 (2) PTC 541 SC.
[3] 2011 (47) PTC 337 (Del).
[4] Intercontinental Great Brands v. Parle Product Private Limited, 2023 SCC OnLine Del 728.
[5] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd., (2015) 63 PTC 551.
[6] Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484.
[7] Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49.
[8] ITC Ltd v. Britannia Industries LtdCS (COMM) 1128/2016.
[9] Galletas Gullón, SA v. European Union Intellectual Property Office (EUIPO), T‑677/18.
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Civil and Criminal Remedies – Trademark Infringement & Passing Off
Procedure to Register a Trademark in India
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