In an ongoing trademark infringement case, the Delhi High Court recently rendered a decision dismissing an application filed by Intercontinental Great Brands LLC against Parle Products Pvt. Ltd.’s mark “FABIO” under Class 30 for confectionary goods. The Court’s order, dated November 3, 2023, rejected the application under Section 124(1)(b) of the Trade Marks Act, 1999.
The Court based its decision on the requirement that, for an application under Section 124 of the Act, the defendant must first assert a defence under Section 30(2)(e) of the Act, and the plaintiff must prima facie challenge the validity of the defendant’s trademark in its pleadings.
The background of the case outlines Intercontinental Great Brands LLC, the plaintiff, as the registered proprietor of the “OREO” trademarks used for vanilla-filled chocolate cream cracker biscuits. Parle Products Pvt. Ltd., the defendant, manufactured and sold cream-filled cookies/biscuits under the marks “FABIO,” “FAB!O,” and variants, leading to a trademark dispute.
Despite securing an interim injunction against the defendant earlier, the plaintiff’s subsequent application for rectification proceedings against the defendant’s “FABIO” mark was dismissed by the Court. The Court emphasized the necessity for the plaintiff to explicitly challenge the validity of the defendant’s mark in its pleadings.
The Court’s decision clarified the interpretation of Section 124(1)(b) of the Act, stating that the plaintiff must contest the defendant’s trademark validity in its pleading for the application to be tenable. It distinguished its stance from a previous interpretation by another bench, emphasizing that the plaintiff can assert the invalidity plea in the replication or original plaint to satisfy the requirements under Section 124.
The ruling underscores the importance of clarity and specificity in legal pleadings regarding trademark validity challenges. It establishes a precedent for maintaining an even balance between parties and ensures fair implementation of trademark law.
This decision offers valuable insights into the procedural requirements for initiating rectification proceedings and provides clarity on the interpretation of ‘prima facie tenable’ under Section 124 of the Act.
Final Verdict CS (Comm)64/2021
The defendant, along with any other parties acting on their behalf, is prohibited from utilizing the contested FABIO or FAB!O trademark for any purpose whatsoever. Furthermore, the defendant is barred from producing, packaging, or selling their vanilla cream-filled chocolate sandwich biscuits in the disputed packaging or using the challenged trade dress. This restraining order extends to the stocks currently held by the defendant, which have not yet been cleared, but does not encompass stocks that have already been distributed in the market.