OREO Vs FAB!O

The court, last week, enjoined #Parle from using Fabio/Fab!o for its vanilla cream filled chocolate biscuits in a suit of trademark infringement. The high court of #Delhi opined that a customer of average intelligence and imperfect recollection, who is aware of #Oreo cookies and its packaging and who subsequently encounters the Fab!o biscuits in a deceptively similar blue packaging, may indeed form an association between the Fab!o and Oreo marks as both are utilized by the same manufacturer.

The HC has "prima facie" held that Parle deliberately endeavored to approach as near to the Oreo mark as feasible by adding a terminal O to its pre-existing FAB! mark. The HC opined that a client of average intelligence and imperfect recollection, who is aware of Oreo cookies and its packaging and who later comes across the Fab!o cookies in a deceptively similar blue package, may rightfully form an association between the Fab!o and Oreo marks as both are employed by the same manufacturer.

?This battle was a tale of legal wit and wisdom, a judgement to be treasured for ages to come. The concepts of IP Trademark #Law, are once again brought to light by the courts in all their clarity, casting a beam of illumination on the perils of neglecting legal risk assessments in the realm of marketing campaigns.

As we look upon the court's judgement, we are struck by the profound implications that it holds. The Plaintiff, with their rights to protect, and the grounds of defence, with their shield against infringement, stand in eternal conflict. A conflict that, if not heeded with vigilance and care, can lead to #financial losses for those who venture into the #market with their wares.

This lesson, learned at great cost, reminds of the importance of #duediligence and prudent foresight. For, in the world of marketing, the stakes are high and the risks even higher. It is only through a thorough understanding of the legal concepts that govern our business practices that we can hope to thrive and prosper in the market.

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IP professionals do design their Legal Risk Assessment around the following factors given the channels of trade the Brands are positioned into.

·???????Confusion

·???????Phonetic Similarity

·???????Design

·???????Infringement

·???????Trade commonality

·???????Passing Off

·???????Confusion :

Section 29(1) of the #trademarks Act applies where the impugned mark is - identical with, or deceptively similar to the asserted mark. Section 29(2) envisages two situations. Clause (a) applies where the impugned mark is identical to the asserted mark, but the goods and services of the defendant are only similar to those of the plaintiff. Clause (b) applies where the impugned mark is only similar to the asserted mark, and covers cases where the goods and services of the defendant are either identical or similar to the goods and services of the plaintiff. Clause (c) applies where the marks, as well as the goods and services, of plaintiff and defendant are identical. Identity would also be subsumed within - similarity, so that, in the eventuate, clause (a) applies where the marks are identical, whereas clause (b) applies where they are similar. In each case, the goods or services of the defendant have to be at least similar to those of the plaintiff. Clause (c), of course, applies where marks and goods/services are identical. In each case, however, the similarity/identity of the marks and goods/services must be likely to either (i) confuse the public, or (ii) have an association with the impugned mark.

·???????Phonetic Similarity:

Phonetic similarity plays a crucial role in determining trademark infringement under Indian laws. Section 2(1)(zb) of the Trade Marks Act, 1999 defines a ‘similar mark’ as a mark in which, when compared to the earlier trademark, there is a resemblance that is likely to cause confusion or deception among the consumers.

The courts in India have interpreted the term ‘similar mark’ quite widely and have held that phonetic similarity is one of the several factors that can be taken into account while assessing the likelihood of confusion. The courts have also held that even a slight phonetic similarity can be sufficient to establish trademark infringement, especially in cases where the trademarks are used in relation to identical or similar goods or services.

In the case of Parle Products Pvt. Ltd. v. J.P. & Co., the Bombay High Court held that “if the two marks, visually or phonetically, are similar to a degree that may cause confusion, then that would constitute infringement of the earlier mark.” Similarly, in the case of Havells India Ltd. v. Amritanshu Khaitan, the Delhi High Court held that “the test is not whether the marks can be distinguished when put side by side or not, but whether the use of the mark by the defendant is likely to cause confusion in the minds of the consumers.”

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·??????Special attention to?the types of IP

Design ???????????

#Design is another important route to protect the #intellectualproperty. In this case, the surface design of the defendant‘s FAB!O biscuit did not infringe the design of Plaintiff’s.

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·???????Infringement :

?Section 29 of the Trademerk Act and other precedents provide the sine qua non of trademark #infringement. Infringement is an unauthorized use of a trademark by another person or entity in relation to goods or services that are identical or similar to those for which the trademark is registered. To establish trademark infringement, the following elements must be proved:

1.????Existence of a registered trademark: The trademark owner must prove that they have a valid and registered trademark in India.

2.????Use of identical or similar trademark: The trademark owner must show that the infringing party has used an identical or similar trademark in relation to goods or services that are the same or similar to those for which the trademark is registered.

3.????Likelihood of confusion: The trademark owner must demonstrate that the use of the infringing trademark is likely to cause confusion among consumers, leading them to believe that the goods or services associated with the infringing trademark are those of the trademark owner.

4.????#Commercial use: The use of the infringing trademark must be in the course of trade or commerce, meaning it is used for commercial purposes.

Once the trademark owner can prove these elements, they can take #legal action against the infringing party, which may include seeking damages, an injunction to prevent further use of the trademark, or even criminal charges in certain circumstances.

·???????Passing Off:

The court dismissed the plea of Passing off in the said matter. The Court made observations:

There is a difference, jurisprudentially, in the standard and test to be applied while gauging infringement, as compared to passing off. Infringement, as a statutory tort confined to Section 29 of the Trade Marks Act, necessarily predicates the existence of a registered trade mark. There can be no infringement of an unregistered trade mark. In assessing infringement, therefore, one compares the registered trade marks to assess whether they are so similar as to lead to confusion or deception, as envisaged by Section 29. 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. Infringement, therefore, is intended to protect the intellect that has been expended in conceptualizing and creating the allegedly infringed mark. It is a pure intellectual property right, and is independent of the intent of the alleged infringer. There is, therefore, no distinction between deliberate and innocent infringement, though deliberate copying might, in a given case, justify invocation of the Slazenger principle, discussed elsewhere in this judgement. The right to act against #infringement is, therefore, protective in nature. It protects intellectual property.

Passing off, on the other hand, is, classically, a - #tort of deceit. Passing off actions, unlike infringement actions, are both protective and punitive. They protect the goodwill and reputation earned by a person, in his goods or services, over a period of time, against those who seek to unfairly capitalize on them, who stand punished in the bargain.

#Entrepreneurs , #Startups & #Business Houses & #mnc those who embark upon the path of product development and marketing campaigns shall undertake a diligent and prudent evaluation of the legal risks associated with their intellectual property. Forsooth, such endeavors are fraught with danger and uncertainty, and it is only through careful analysis and scrutiny that one may hope to navigate these choppy waters with success. Indeed, the hazards of neglecting this important aspect of business planning are manifold, and can result in a veritable quagmire of legal complications and disputes. As the sage once said, "Knowledge is power," and in the realm of intellectual property law, this adage rings especially true. It is only through a rigorous and systematic evaluation of the legal landscape that one can hope to avoid the pitfalls and pratfalls that lie in wait for the unwary. Therefore, let it be known that a comprehensive and thorough assessment of the legal risks inherent in one's intellectual property is an essential prerequisite for any successful business venture, and woe betide those who neglect this crucial step in their journey towards commercial success.

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