NOTION OF DECEPTIVE SIMILARITY IN TRADEMARK

NOTION OF DECEPTIVE SIMILARITY IN TRADEMARK

This Article is written by Archana Upadhyay from Galgotias University.

“A Trade Mark is a company’s persona and identity in the marketplace”

-Dr. Kalyan C. Kankanala

A consumer purchases the products from market only when he knows about the brand value, reputation, and quality of the company. In this context, what plays an imperative role is the mark or the label of representation on the company’s product, legally known as the trademark. Trademark depicts the originality and assures the consumer about the goodwill of the company that denotes the company’s reputation. A company is recognized by its reputation in the market which connotes as the Company’s Goodwill. If one shows the ill will towards the goodwill of the company then the owner of the company can hold the judicial proceedings against him. One of the prominent approaches is creating the trademark which is similar to that of the pre-existing trademark to confuse the consumer resulting inaffecting the goodwill of the company along with the economic loss to the company. A mark being deceptively similar leads to infringement of trademark. This article focuses on describing the concept of the deceptive similarity along with various case laws which further interpreted the meaning of the “Deceptive Similarity”.

Registration of a Trademark

Intellectual Property Rights enable the owner to enjoy the rights over his/her intellectual creations. Trademark is one of the aspects of intellectual property rights. According to WIPO (World Intellectual Property Organization) trademark has been defined as “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.” Whereas, Section 2 (zb) of the Trademark Act 1999 defines “a trademark as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours”.Wherein trademark, the “‘Mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, the shape of goods, packaging or combination of colours, the numeral shape of goods, packaging or combination of colours or any combination thereof”(Defined under Section 2 (1)(m) the Trademark Act 1999).

Trademark is a qualitative tool that guarantees the continuous flow of quality. Therefore, to protect them, it should be registered under the Trademark Act, 1999. The eligibility of a mark to be registered are:

 

  • The mark should be distinctive and unique.
  • The mark should not contain any words which are commonly been used.
  • The mark should not indicate the quality of the goods.
  • The mark should not be similar to that of a registered Trademark.
  • The mark should not be similar to a well-known Trademark.
  • The mark should not create deception in the mind of the consumers regarding the source of origin.
  • The mark should not include any symbol or word that is prohibited under the Emblem and Names(Prevention of Improper Use) Act of 1950.
  • The mark should not contain the shape of goods or shape of such nature that is necessary to obtain a technical result or adds substantial value to goods.

Once you fulfill the requisite of the Trademark, you get trademark registered under Section 23 of the Trademark Act, 1999.

Deceptive Similarity and its Rationale

The protection of  consumers has always been a utmost matter of concern for the Government. Thus, in the light of this, the provision for “Deceptive Similarity” came into existence, Section 2 (1) (h) of the Trademark Act, 1999 states the concept of deceptive similarity 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”. Henceforth, one cannot use the Trademark which is deceptively similar to that of the other as it creates confusion, resulting in the delusion of the value of the earlier Trademark. Adding to this, the House of Lords held in Orr Ewing and Co.’s case, that no trader had a right to use a Trademark resembling that of another trader as to be calculated to mislead incautious purchasers.

There is always a confusion regarding the deceptive similarity, in light of this, the Delhi High Court in case of M/s Biofarma V. Sanjay Medical Stores provided the factors for determining the deceptive similarity:

  1. The nature of the marks, whether the words, labels, or composite marks.
  2. The degree of resemblance between the marks.
  3. The nature of goods or services in respect of which they are used as trademarks.
  4. The similarity in the nature, character, and performance of the goods/services towards the other trader.
  5. The class of consumers who are likely to avail of the services, on their education and intelligence, and a degree of care they are likely to exercise in purchasing and/or using the goods.
  6. The mode of the business carried in placing the order for the goods.
  7. Any other surrounding circumstances.

Deception as to trade, deception as to trade origin, and deception as to trade connections are the three different ways concerning deception. In addition to this, various judicial precedents have marked the essence of deceptive similarity.

Judicial Approach Towards Deceptive Similarity With Regards To The Cadila Case 

Pre-Cadila Case Judicial View

In Amritdhara Pharmacy v. Satyadeo Gupta, the Apex Court observed that when an ordinary purchaser buys a medicine, he will look for the overall structure, the nature of medicine, and more or less the phonetic similarity of medicine, he has purchased earlier. The Court in the above case applied the test of Average Intelligence and Imperfect Recollection to judge the “Deceptive Similarity” between “Laxmandhara” and “Amritdhara”.

In Hiralal Prabhudas v. Ganesh Trading Corporation, the Court has put down various factors that emerged as a test while investigating the “Deceptive Similarity” in this case. which are:-

  • The main idea behind the Trademark or any significant feature.
  • The marks are recognized by the general impression or any relevant detail of it except the photographic collection of the whole.
  • Overall Similarity is the paradigm.
  • The first impression or the first glance of the mark by a person of an average intelligence and imperfect recollection must be taken into consideration.
  • Both visual and phonetic similarity of the idea are relevant as well as the test must be applied to judge the overall structure of the mark.
  • The purchaser must not be amazed by the mark.
  • Instead of microscopic examination, the mark must be evaluated as a whole.
  • The marks not to be put alongside to detect the differences in design resulting in pointing out the broad and salient features but,
  • Overall Similarity is considered sufficient

In addition to these, the nature of the goods, the class of purchasers, the mode of purchase, and other immediate circumstances are to be taken into consideration.

Further, the Court in the case of S M Dyechem Ltd. V. Cadbury (India) Ltd., laid down certain principles while emphasizing the dissimilar aspect as a test, and then following the similar aspect, test applied in the cases before.

Principles laid down by the Court were:

  • Does the common feature of the product hold any distinct aspect?
  • Does the dissimilarity between the two is enough to make it look unlike?
  • Whether in case of common parts, consumer should not pay much regard to the dissimilar parts, while, at the same instance not disregarding the common parts?

The High Court of Madras in the Wockhardt Ltd. v. Aristo Pharmaceuticals Ltd.,appreciated the probability of the mispronunciation of the letters “P” and “F”. It was also observed that an ordinary person of an average intelligence and imperfect recollection would not attempt to check the visual and phonetic dissimilarity between the two marks.

 

Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.

It was a landmark case of the Supreme Court wherein it has overruled the judgment of the Cadbury case and provided the grounds for conducting the test to decide  “Deceptive Similarity”.

Principles to decide “Deceptive Similarity”:

  • Nature of the mark viz. word mark, label mark or the composite mark (includes both word and label)
  • What degree of resemblance does the mark hold viz. phonetically similar or in the idea?
  • The Trademark is used for what nature of goods?
  • The education intelligence and the degree of care that is likely to be exercised by the class of purchaser while purchasing or using the goods need to be construed.
  • The mode of purchase or the platform used to place the orders
  • The other immediate conditions relevant to detect the dissimilarity from the rival mark should be considered.

Post-Cadila Case Judicial View

In Glaxo Group Ltd. &Anr. V.  Paun&Paun Chemicals, it was held that the overall structural similarity between the competing marks may confound the ordinary person of an average intelligence and imperfect recollection.

Likewise, it was held in Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr., that while considering the visual or phonetic similarity between the competing marks, the word is to be taken in its entirety. Therefore, an alteration of a few letters in the trademark by the defendant would not enable him to have the reputation which the plaintiff has earned over the years.

In the case of Sun Pharmaceutical Industries Ltd. V. Wyeth Holdings Corporation and Ors., the Court observed that the respondent’s Trademark PACITANE was deceptively similar to appellant’s Trademark PARKITANE even though the prefix is different but the prefixes “Pace”, “Par” and “Paki” and suffixes “Tan,” “Tane”, “Ten” and “Teen” are common to the trade.

The Apex Court in Encore Electronics Ltd. v. Anchor Electronics & Electricals Pvt. Ltd. held that to identify the “Deceptive Similarity” of the Trademark, the phonetic and visual similarities are regarded as the important index.

In the case of N.R. Dongre V. Whirlpool Corporation, the Court held that without the existence of goods if the advertisement is communicated then it is said to be the use of the Trademark. The knowledge of the Trademark may reach across the countries.

In the recent case of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors, it was held that Sardarbuksh Company falls under the case of “Deceptive Similarity”, phonetically to the name and visually to the logo. Hence, the Delhi High Court ordered Sardarbuksh to change its name to “SARDAR-JI- BAKHSH or SARDAR-JI-BAKHSH COFFEE & CO” and subsequently ordered to change the logo. Moreover, the Court ordered Sardarbuksh to withdraw the application of registration of the Trademark and to give the new application with the new name. Furthermore, the Court added that if any party uses BAKHSH as a mark then in such a case, Sardarbuksh can file suit against the violator.

 

Concluding Remarks

One cannot steal proprietary rights over the tangible or intangible property. There are laws for tangible as well as intangible property. For intangible, we have Intellectual Property Rights categorized into Copyrights, Trademark, Patent, etc. Trademark is of paramount importance to carry business as it depicts the brand value. It can be depicted by the label, symbol, name, or anything by which a person can recognize a company, a trademark is regarded as a recognized symbol of a company. The Trademark Act’s foremost objective is to protect consumer rights and also to protect the traders and thus the concept of deceptive similarity was introduced.The doctrine of deceptive similarity has been used in the Courts for trademark infringement and passing off. Pertaining to the objective of the deceptive similarity, the judicial body has always taken a keen interest in these matters and gone beyond the literal meaning of the provision. Henceforth, the deceptive similarity is looked in its broader sense which does not leave any loophole unturned.

 

References

  1. Registration of Trademarks in India. (n.d.). [online] Available at https://www.lawsenate.com/publications/articles/registration-of-trademark-india.pdf.
  2. ‌ NipunPaleja (2017). Deceptive similarity under trademark. [online] Slideshare.net. Available at:https://www.slideshare.net/NipunPaleja/deceptive-similarity-under-trademark
  3. ‌Trademark-india.com. (2012). Trademarks India. [online] Available at: http://www.trademark-india.com/about-trademarks.html#:~:text=Section%202(1)(zb,packaging%20and%20combination%20of%20colours.
  4. (2020). India: Delhi High Court Orders Sardarbuksh to Stop Infringing Starbucks trademarks and copyrights – SSRANA. [online] Available at https://www.ssrana.in/articles/india-delhi-high-court-orders-sardarbuksh-to-stop-infringing-starbucks-trademarks-and-copyrights/
  5. Orr Ewing and Co.’s (1882)7 AC 219.
  6. M/s Biofarma V. Sanjay Medical Stores (1997 PTC (17)355).
  7. Amritdhara V. SatyaDeo AIR1963 SC 449.
  8. HiralalPrabhudas v. Ganesh Trading Corporation AIR 1984 Bom 218.
  9. S M Dyechem Ltd. V. Cadbury (India) Ltd (2000) 5 SCC 573.
  10. Wockhardt Ltd. v. Aristo Pharmaceuticals Ltd.(1999) 2 MLJ 467.
  11. Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. (2001) 5 SCC 73.
  12. Glaxo Group Ltd. &Anr. V. Paun&Paun Chemicals 106 (2003) DLT 176.
  13. Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr. 2004 (74) DRJ 407.
  14. Sun Pharmaceutical Industries Ltd. V. Wyeth Holdings Corporation and Ors. 2005 (30) PTC 14 Bom.
  15. Encore Electronics Ltd. v. Anchor Electronics & Electricals Pvt. Ltd. 2007 (5) BomCR 262.
  16. R. Dongre V. Whirlpool Corporation (1996) 5 SCC 714.
  17. Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors,CS (COMM) 1007/2018.