Deceptive Similarity and Judicial View

Trademarks play a vital role in creating a brand name and goodwill of any business. Not only does it helps in creating a brand value but also, aids in revenue generation. Being of such vital importance, trademark is vulnerable to getting infringed and/or misused. One such way of trademark is making “deceptively similar” trademarks.

“Deceptively similar” trademarks can be understood as a trademark created, almost similar or a look-alike of an already existing trademark in order to deceive and confuse the consumers. This concept of deceptive similarity has 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 concept of deceptive similarity has been widely recognised as a ground for trademark infringement under various trademark regimes. Under the Indian legal system as well, deceptive similarity is consider as a ground for not granting the registration of the trademark to an applicant by the Registrar of Trademarks.

However, the Act does not ascertain any criteria that can decide the ambit and scope of the phrase “deceptive similarity,” hence, there is a vacuum. In order to remove the vacuum, it is essential to note the judicial stand on various cases regarding the said matter. Indian Courts have dealt with several cases providing with landmark principles and guidelines in matters of deceptive similarity. In order to adjudicate cases of intellectual properties and deceptive similarity, principles of phonetic and visual similarity, goodwill, reputation, test of likelihood, etc. have been recognised as some criteria to test deceptive similarity, by the Courts.

Some important cases concerning the judicial view of the Courts in the matter of Deceptive Similarity

  • M/S Lakme Ltd. v. M/S Subhash Trading1

    In this case, the plaintiff was selling cosmetic products under the trademark name “Lakme” and the defendant was also selling similar products under the name “LikeMe”. A case of trademark infringement was thus filed by the plaintiff. The High Court held that the names were not deceptively similar and are two separate marks with difference in their spelling and appearance.

  • SM Dyechem Ltd. v. Cadbury (India) Ltd.2

    In this case, plaintiff started a business of chips and wafers under the trademark “PIKNIK”. Later, defendant started business of chocolates under the name “PICNIC”. A suit alleging trademark infringement was filed thereafter. The Court held the marks not to be deceptively similar as they are different in appearance and composition of words.

  • Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.3

    In this case Supreme Court laid down certain guidelines for adjudication of matters concerning deceptive similarity of trademarks. In this particular case, the parties to the case were the successors of the Cadila group. The dispute arose on the issue of selling of a medicine by the defendant under the name “Falcitab” which was similar to the name of a medicine which was being manufactured by the plaintiff under the name “Falcigo”. Both the drugs were used to cure the same disease and hence, the contention was that the defendant’s brand name is creating confusion between the consumers. Injunction was demanded by the plaintiff. As a defence, the defendant claimed that the prefix “Falci” has been derived from the name of the disease, i.e., Falcipharam malaria.

    The court observed that because of the diversified population of the country and varying infrastructure of the medical profession due to language, urban-rural divides, etc. and with the probabilities of medical negligence, it is important that confusion of marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby, held that being medical products more precaution and care must be taken and the names of the brand, therefore, being phonetically similar shall amount to being deceptively similar.

  • M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.4

    In this case, plaintiff claimed that the defendant’s trademark “Fauji” is defectively similar with that of the plaintiff’s, that is, “Officer’s Choice”. The claim was made on the ground of similarity of idea in making of the trademarks as the word “Fauji” is a hindi translation of a military officer. Adding to it, both the parties are in the business of alcoholic beverages. Further, packaging of both the bottles are also alike.

    Though, trade dress plays a significant role in deciding the cases of trademark infringement, in this case, the court held that there is no deceptive similarity between the trademarks “Officer’s Choice” and “Fauji” and hence, dismissed the trademark infringement suit.

Conclusion

The doctrine of deceptive similarity is widely used in the Courts in matters of trademark infringement. Trademark being of vital importance in business and its goodwill it is of high need to protect it from misuse and infringement. Judiciary has taken a keen interest in matters of Intellectual Properties and several principles and guidelines have been provided through various judicial decisions in order to make adjudication of cases of trademark infringement much smooth. The court has also looked after the problems which may arise if a strict criteria is made for determination of deceptive similarities. It is evident from the cases above that the courts are going beyond the literal meanings of the legislations to provide justice and safeguarding the rights of the traders and protecting the interests of the consumers.

Author: Ms. Sonal Sodhani, Student, New Law College, BVDU, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1]1996 (64) DLT 251

[2](2000) 5 SCC 573

[3](2001) 5 SCC 73

[4]CS (COMM) 819/2018; Borkar, S. & Jain, A. Case Comment, K&K ADVOCATES AND IP ATTORNEYS, (Feb. 20, 2019, 04:24 PM), https://www.khuranaandkhurana.com/2019/02/09/case-comment-on-delhi-high-court-holding-no-deceptive-similarity-in-the-marks-officerss-choice-fauji/.

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