Everyone knows the America’s best loved cookie which lately emerged into the markets of India and China. That is OREO. It was first developed and produced by the National Biscuit Company in the year 1912 in New York, US. Initially, Oreo focused on the markets of US and successfully covered maximum portion of the market for their product. Lately, the company felt limited growth opportunities in the US market so they decided to emerge into India’s and China’s markets. Mondelez International, launched Oreo in India as CADBURY OREO in March 2011.
Any company uses their creative ability to develop the product that is different from others and have not been created earlier. But what if someone ends up copying the original design and end up deviating a huge mass of their customer base. It is then taken to the court to decide and arbitrate on such matters depending on the provided law and its provisions. One such suit is being filed by Cadbury Oreo.
PARTIES CONCERENED IN THE CASE:
INTERNATIONAL GREAT BRANDS vs. PARLE PRODUCT PRIVATE LIMITED
PLAINTIFF– INTERCONTINENTAL GREAT BRAND – CADBURY OREO
DEFENDANT– PARLE PRODUCT PRIVATE LIMITED – PARLE FABIO
PRONOUNCED ON– 10th FEBRUARY 2023
CORAM– HON’BLE MR. JUSTICE C. HARI SHANKAR
I.A.1803/2021 (under Order XXXIX Rules 1 and 2)
BRIEF FACTS OF THE CASE:
As we know, Oreo is an international brand and have emerged in India in 2011 while Parle is a household brand in India. Comparatively, Oreo has a growth in its popularity over the last few years for creamed biscuits in India. Cadbury Oreo had filed a suit against Parle’s biscuit, Fabio, by saying that Parle had infringed the already registered Trademark of Oreo by selling its biscuit naming Fabio which is similar with the original vanilla-cream-filled cookies.
In 2020, OREO filed a suit which alleged that chocolate-vanilla cream biscuits are being sold by Parle in the name of FABIO or FAB! O is similar to OREO in many ways including the mark under which it is being sold.
CONTENTIONS BY THE PLAINTIFF:
The plaintiff claims that the defendant Parle Products Pvt. Ltd., has introduced its own range of chocolate-vanilla biscuits under the brand FAB!O in or after January 2020.The plaintiff alleges that, prior to 2020, the defendant was using the brands FAB and FAB! For its biscuits. After 2020, the defendant introduced vanilla cream filled chocolate sandwich biscuits under the mark ―FAB! O or FABIO.
The plaintiff points out that the FAB! O mark is 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. The plaintiff alleges that the mark on the defendant‘s biscuit, though written as FAB! O is bound to be pronounced FABIO. Therefore, according to the plaintiff, the defendant’s mark is deceptively similar to that of plaintiff’s mark.
The plaintiff also submits that the design of the defendant‘s cookie copies all the essential features of the design of the plaintiff‘s cookie, in which the plaintiff holds trademark registrations. The Plaintiff contended that the defendant‘s FAB!O range of vanilla cream filled chocolate sandwich biscuits was sold in a package, the trade dress of which was nearly identical or, at the very least, deceptively similar, to the trade dress of the plaintiff‘s OREO biscuit packages.
CONTENTIONS BY THE DEFENDANT:
The defendant submits that there is no phonetic similarity between ―OREO and ―FAB! O. The only common letter, between these two words, he points out is ―O. submits that, where the first syllable of the two marks is different, it cannot be said that they are phonetically similar. Also, the defendant submits that the mark FAB! O, as used by the defendant on its biscuit packs is structurally, visually and phonetically dissimilar to the OREO mark of the plaintiff.
Defendant also submits that the aspects emphasised by the plaintiff as being common to the packaging in which the plaintiff sells its OREO biscuits and the defendant sells its FAB!O biscuits are all common to the trade. In fact, the defendant submits that the plaintiff is claiming exclusivity on the basis of the overall appearance of its packing which, again, is common to the trade.
The concept of Trade Dress has been recognised and started by the Indian Court before the year 2003. Section 2 of the Trade Marks Act, 1999 was added in the Act through an amendment. In the present case, trade dress refers to everything ranging from the blue and white packaging of the biscuits to the design imprinted on them and to their structural representation. According to Section 2 of the Act, the overall appearance and graphical representation of a product is what establishes it to be different from other goods and services. It is this shape, unique packaging and the combination of colours that distinguish a product.
This section of the Act defines the terms “Package” and “Mark”.
Section 9(3) provides that, for a mark to be registered it should be distinctive and easily recognisable i.e. it should add a substantial amount of value to the product. Also, the shape of the good should not be one that comes from nature.
JUDGEMENT FROM THE COURT:
The Court orders, for the aforesaid reasons, the defendant as well others acting on behalf of the defendant are restrained from using the impugned FABIO or FAB! O mark for any purpose whatsoever. The defendant is also restrained from manufacturing, packing or selling their vanilla cream filled chocolate sandwich biscuits in the impugned pack or using the impugned trade dress. This injunction shall also apply to stocks presently in the defendant‘s possession and as yet unclear, though it would not apply to stocks which have already been released in the market.
1. Contentions and Judgment:
2. Legal Aspect: