Concept of Deceptively Similar under Trademark Law

Author – Bharat Sharma , Pallavi Paul

INTRODUCTION

Trademarks assume a crucial part in the making of a brand name and the generosity of any business leading to revenue generation. Reproduction of already registered trademarks leads to infringement which in turn are termed as “deceptively similar” marks.

“Deceptively similar” brand names can be perceived as a trade mark, practically comparable or a carbon copy of a generally existing brand to create consumer confusion. The concept of “deceptively similar” marks have been discussed in the Trade Marks Act, 1999 under Section 2(h) as:

A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion

The idea of deceptive similarity, has been generally perceived as a ground for trademark infringement under different trade systems. Under the Indian Trademark laws, deceptive similar marks are considered as a ground for objection in the course of registration of the mark by the Trademark Registry.

It is important to take note of the ratio decidendi of different cases with respect to the concept of deceptively similar to understand the ambit and extent of the expression.  Indian Courts have even managed to furnish few cases with milestone standards and rules with respect to deceptive similarity of marks. These judicial pronouncements have set out ways for the development and set standards to incorporate visual and phonetic similarity of marks.

Criteria(s) for determination of deceptively similarity of marks:

The criteria for determination of deceptive similarity of marks had been decided in the

case of Cadilia Healthcare Limited v. Cadilia Pharmaceutical Limited where the Supreme Court set out specific rules for deciding the nature of similar or misleading marks:

  • The nature of the concerned marks i.e., whether the mark is a word mark, label mark, or composite mark.
  • The nature of goods of the concerned marks.
  • The degree of similarity between the concerned marks.
  • The similarity of the traders of the concerned marks.
  • The mode of purchase and class of purchasers for the goods and services of the marks in question.

Important cases in relation to deceptive similarity:

  • Corn Products v. Shangrila Food Products Ltd.

The apex court held that it is a well-recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole. The comparison between the two marks has to be made from the point of view of a man of average intelligence and of imperfect recollection. The marks are similar only in the event the overall structural and phonetic similarity and the similarity of the idea in two marks are likely to cause confusion between them to such an individual.

  • Parle Products (P) ltd. Vs. J.P. & Co.

The Hon’ble Supreme Court held that in order to ascertain whether one mark is deceptively similar to another, the broad and essential features of the two marks have to be considered. It would be enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

  • SM Dyechem Ltd. v. Cadbury (India) Ltd.

The Supreme Court held that mark is to be considered as a whole and so considered the test should be whether the totality of the impression given both orally and visually is such that it is likely to cause confusion or deception. The Apex Court further said that where common marks are included in the rival trademarks, more regard is to be paid to the parts not common and the proper course is to look at the mark as a whole.

  • Amritadhara Pharmacy v. Satyadeo Gupta

The Hon’ble Supreme Court in this case held that a reasonable man’s test and the overall impression test needs to be conducted to decide the similarity of the marks. The two marks has to be viewed from the perspective of a man with average intelligence and uto industries Ltd. overall impression of the mark needs to be considered.

  • F.Hoffmann- La Roche & Co. Ltd v. Geoffrey Manner & Co. Pvt. Ltd

The Supreme Court held that marks must be compared as a whole, the true test being the totality of the proposed mark is such that it is likely to cause deception/confusion or mistake in the minds of person accustomed to the existing trademark.

Analysis of the case laws

Courts have decided that there cannot be a practical restraint that can be applied to all cases uniformly for understanding the concept of deceptively similar trademarks. Each case has to be judged on the basis of merits and factual circumstances of the case. The grounds on which the judgement of the cases is pronounced depending on the visual, phonetical, structural similarity of the marks in question.

About the author

Bharat Sharma
Pallavi Paul

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