Oreo v Fab!o: A Ballad of Colours and Syllables [PART I]

[This two-part post has been co-authored by Kartik Sharma and Aditya Singh, analysing the Delhi High Court decision in Intercontinental Great Brands v. Parle Product Pvt. Ltd. In Part I of the post, the authors have analyzed the court’s consideration of intention in its assessment of passing off and trademark infringement. Kartik and Aditya are 2nd-year students at NLSIU, Bengaluru, and had earlier written for us herehere and here.]

The world of sweet cookies saw a rather bitter dispute unfolding in the Delhi High Court between Cadbury and Parle in February. In Intercontinental Great Brands versus Parle Product Private Limited, the DHC passed an interim order restricting Parle from using ‘Fab!o’ for its vanilla cream filled chocolate biscuits in light of Cadbury’s trademarked ‘Oreo’ biscuits.  In holding the claims for trademark infringement and passing off as valid, the court referred to the similarity in the packaging of the two cookies and the last two identical syllables “ee-yo” used in the competing marks.  A customer of average intelligence, the court held, “may legitimately be expected to draw an association between the Fab!o and Oreo marks as both being used by the same manufacturer.”

Notwithstanding the detailed exegesis of various theoretical concepts in the ruling, we argue that the decision is wrongly rendered owing to the misapplication of these concepts. To elucidate the same, we in Part I of the post will argue that: (i) the “intention of the defendant was to deceive” argument was unnecessarily invoked leading to a misdirected analysis; And carrying forward from there, in Part II of the post, we will be arguing that (ii) the focus in the syllable inquiry between the competing marks should have been on the first ones; and (iii) a distinctive link was not drawn between the Oreo brand and the blue trade dress. 

The Unwarranted Analysis of Intention

It is evident from the judgment that the court has placed emphasis and relied on the point that the defendants intended to imitate the senior. They have used the approaches of Munday v Carey and Slazenger v Feltham to place focus on the similarities and assume that Parle’s attempt to create confusion has been successful. For both these cases to apply and shape the analysis, there has to be an underlying assumption that the intention of the defendant is relevant to such an inquiry. This shaped both the statutory trademark infringement and passing off analysis of the court (para 45 onwards). We in turn submit that the court after making intention a relevant consideration had henceforth entered into a backward reasoning. This consideration is 1) Legally irrelevant per the text of s 29(2) of the Trademarks Act, 1999 and case laws that have evolved; 2) There are other normative issues with adopting such an approach. What adds to the concern is the fact that the court did not address the multiple precedents raised on the point. 

Coming to the first point of intention’s legal irrelevance, in section 29(2), the threshold is that of likelihood of confusion to the public as a result of similarity in different combinations. There is no textual requirement of an ‘intention analysis’ as opposed to provisions such as section 47 (1) (a) or section 46. Coupled with this, as a matter of logic (will also be argued later), the likelihood of confusion depends on uncontrollable market factors such as that of consumer awareness, perception, literacy, degree of due care exercised, etc. Hence, assessment is to be made by looking at the similarities and dissimilarities between the marks and products as opposed to inferring what the junior intended.

Even if we are to look at the second prong of the trinity test for passing off, for misrepresentation to occur intention is not a relevant criterion. This is also how misrepresentation has been defined in the Indian Contract Act i.e., the same can be innocent. This is also how an inquiry of misrepresentation differs from an inquiry of fraud. It has also been observed in Venkateshwaran on Trademarks collecting the seminal cases of Millington v Fox North and Cheshire and Manchester Brewery Co v Manchester Brewery that the defendant’s intention and awareness is immaterial and all that matters is the ends i.e., the similarity in the junior and seniors mark followed by the likelihood of confusion and damages arising out of it. As it was submitted by the defendant’s counsel, even sections 29(1) & (2) which are the relevant provisions make no mention of an ‘intention’ inquiry. 

Secondly, the normative issues that arise are 1) there is no empirical or rational basis to the principle invoked in Slazenger that those who intend to create a confusion in the minds of the public will succeed. The likelihood of the same is totally dependent on uncontrollable factors prevailing in the marketplace such as that of consumer awareness, perception, etc and obviously on the degree of similarity of the products. This is to say the final prong that is the likelihood of confusion analysis cannot be controlled by intention. 2) There is a connected point wherein commentators have noted that most marketing efforts end in failure and hence the inquiry shouldn’t revolve around intention. This is to say that an advertisement campaign’s success cannot be assumed. The proposition similar to that in Slazenger has been turned on its head to say that intent may actually make confusion less likely as the defendant will use pivotal points to differentiate their product while also retaining certain desirable similarities.

Picking from the second point of the above paragraph, it has been laid in cases such as Fisons Ltd. v. E.J. Godwin (Peat Industries) Ltd. (High Court of Justice, Chancery Division) and Britannia Industries Ltd vs Itc Limited that the brand name itself is a very pivotal factor and enough to warn the public of the brand they are picking their goods from. In the instant case Parle has branded its logo at every side of the packet. Adding to it, the DHC in its analysis undertaken in the Britannia case considered the reputation of the junior. In the instant case, the junior Parle is the market leader in the biscuits segment hence greatly reducing the probability of confusion as the consumers can easily distinguish the brands. Even the difference in pattern and colour of the dress coupled with the illustrations on it just adds to the difference. It has been held in cases such as Win-Medicare Pvt v Galpha Laborateries and Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd that “Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison”. This is because effects of similarities are to be accessed from a consumer’s point of view and they view the mark holistically. Hence, even on this point, the DHC’s approach of selectively focussing more on the similarities is contrary to the existing jurisprudence on method of comparison. On the basis of the abovementioned points, we submit that the court has wrongly focused more on the similarities when the dissimilarities are this material. 

In Part I of the post, we have outlined the legal and normative issues with the invocation of the intention consideration in infringement and passing off analysis by the court. Going further, Part II delves into firstly, critiquing the court’s analysis of phonetic similarity between Fabio and Oreo by arguing that first syllable is also of the essence. Secondly, we critique the court’s approach of construing the blue trade dress as that of the senior and placing the burden of proving the contrary on the junior.

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