Delhi High Court Dismisses Trademark Infringement Application for Lack of Specific Challenge Against Registered Mark FABIO

07 May 2024 8:19 AM

By: Admin

In a significant ruling on trademark infringement, the Delhi High Court, led by Hon’ble Mr. Justice C. Hari Shankar, dismissed an application under Section 124 of the Trade Marks Act, concerning the plaintiff’s claim of infringement by the defendant’s use of the mark FAB!O against its OREO products. The plaintiff’s attempt to question the validity of the defendant’s FABIO registration was not entertained due to the absence of a specific challenge and tenable grounds in the initial pleadings.

Justice Shankar emphasized the necessity for clear and arguable grounds when challenging a trademark’s validity, stating, “No higher standard is required to be satisfied.” However, the court found that the plaintiff’s application could not stand as “there is no averment, anywhere in the plaint, that the defendant’s FABIO mark is invalid.”

The judgment, pronounced on November 3, 2023, highlighted the court’s role in interpreting statutory provisions, even if poorly structured, to harmonize with the intended purpose of the legislation. In this instance, the plaintiff’s reservation of rights to challenge the defendant’s mark was deemed insufficient. “The reservation, by the plaintiff, of its rights to challenge the validity of the mark FABIO can obviously not suffice as a plea that the defendant’s FABIO mark is invalid,” Justice Shankar clarified.

The case also underscored the importance of maintaining a consistent legal stance. The plaintiff’s conflicting arguments regarding the phonetic equivalence of FAB!O and FABIO were highlighted as a detrimental factor in their case.

This decision has set a precedent for future trademark infringement proceedings, where the specificity of challenges and the grounding of claims in pleadings will be crucial for the acceptance of applications under Section 124.

Representing the plaintiff, Mr. Chander M. Lall, Sr. Advocate, argued the case alongside his team. The defendant’s position was presented by Mr. J. Sai Deepak and his legal team. The court’s ruling directs attention to the detailed procedural requirements that must be met for such legal challenges to be considered.

Date of Decision: 03 November 2023

INTERCONTINENTAL GREAT BRANDS LLC VS PARLE PRODUCT PRIVATE LIMITED