Concept of Deceptive Similarity under Trademark Laws

In this post, the author has explained the meaning and the laws associated with the concept of Deceptive Similarity under the Trademark Laws in India.

Introduction

Trademark has been defined in Section 2(zb) of the Trade Marks Act, 1999 as: “A mark capable of being represented graphically and which is capable of distinguishing the goods/services of one person from those of others and may include the shape of goods, their packaging, and combination of colors”.

Trademarks are essential in developing a company’s brand name and goodwill. It not only aids in the creation of brand value but also aids in the generation of revenue. A trademark is vulnerable to being infringed and/or misused because it is so important. One such way of a trademark is making “deceptively similar” trademarks.

Interpretation and Scope of Deceptive Similarity

The concept of deceptive similarity has been discussed under Section 2(h) of the Trade Marks Act, 1999 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.”

In layman’s terms, deceptively similarity of marks can be defined as similarity between trademarks that can lead the general public of average intelligence to believe that the mark in question is somehow related to a registered or well-known trademark.

According to Section 11(1) of the Trademark Act, 1999, “a trademark cannot be registered if it is deceptively similar, or identical, with the existing trademark and goods and services, that is likely to create confusion in the mind of the public at large”.

Criteria for a court of law or tribunal for determining deceptive similarity

The criteria for the determination of the deceptive similarity of marks had been decided in the case of Cadilia Healthcare Limited v. Cadilia Pharmaceutical Limited, where the Hon’ble Supreme Court set out specific rules for deciding the nature of similar or misleading marks.

Following are the one:

1. The nature of the marks, whether the marks are words, labels, or composite marks.
2. The degree of resemblance between the marks, phonetic or visual, or similarity in the idea.
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 of the rival traders/service providers.
5. The class of purchasers/customers who are likely to buy the goods or avail 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 purchasing in the trading channels that the goods/services traverse in the course of business or placing an order for the good.

Intention to deceive is not necessary: The guiding principle

One of the guiding factors in determining whether a mark deceives or confuses does not depend on the intent to deceive. It makes no difference whether the person has the intent to deceive the general public or not. As a result, the intent to deceive does not need to be proven.

In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietory Ltd., it was held that the plaintiff was not required to prove the defendant’s fraudulent intent, and it was not required as such. Furthermore, once a defendant’s reputation has been established, plaintiffs do not need to prove fraudulent intent or misrepresentation on the part of the defendants.

Judicial Interpretations

The Hon’ble Supreme Court of India has stated some criteria for the determination of the deceptive similarity of trademarks. However, it depends on individual facts and facets of cases. Following are some of the recent judicial interpretations on Deceptive Similarity:

• Bigtree Entertainment v Brain Seed Sportainment: The Delhi High Court denied the Plaintiffs, proprietors, and owners of the website bookmyshow.com; an interim injunction against Defendant’s use of the domain bookmysports.com.
• The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark BOOKMYSHOW was descriptive and not an arbitrary coupling of words and the Plaintiff’s failure to prove that ‘BOOKMY’ has attained distinctiveness or secondary meaning, led to the dismissal of the application for interim injunction led by the Plaintiffs.
• SM Dyechem Ltd. V. Cadbury (India) Ltd.: In this case, the plaintiff established a chip and wafers business under the trademark “PIKNIK.” Later, the defendant established a chocolate business under the name “PICNIC.” Following that, a trademark infringement suit was filed. The Court determined that the trademarks did not fall into the category of deceptive similarity because they differ in appearance and word composition.”
• M/S Allied Blenders and Distillers Pvt. Ltd. V. Govind Yadav & Anr.: In this case, the plaintiff claimed that the defendant’s trademark “Fauji” is defectively similar to that of the plaintiff’s, i.e., “Officer’s Choice”. The claim was made based on similarity of concept in the creation of the trademarks, as “Fauji” is a Hindi translation of a military officer. “Furthermore, both parties are in the alcoholic beverage business. Furthermore, the packaging of both bottles is similar.

• 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.

• Parle Products (P) Ltd. v. J. P. & Co. Mysore: The Supreme Court stated that to conclude whether a mark is deceptively similar to another, the comprehensive and vital features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to avoid one design from being mistaken for the other. It would be enough if the questionable mark bears such an overall resemblance to the registered mark as would be likely to deceive a person usually dealing with one to accept the other if offered to him.
• M/S Mahashian Di Hatti Ltd. v. Mr. Raj Niwas: In this case, the plaintiff used the registered logo, MDH inside three hexagon devices on red color background, in its business activity of manufacturing and selling spices & condiments. The aforementioned logo has been in use since 1949 in respect of numerous products. The plaintiff contended that the logo used by the defendant, MHS within a hexagon device with a red color background was similar to its logo. The plaintiff, therefore, pursued an injunction restraining the defendant who was also involved in the same business activity from using the infringing logo MHS or any other trademark identical or deceptively similar to its MDH logo. The defendant inter alia tried to weaken these arguments by contending the phonetic dissimilarity between MDH and MHS.

The Court compared the logos of both the plaintiff and the defendant and inter alia determined the following similarities:

1. as in the logo used by the plaintiff, the defendant made use of three hexagons for structuring its logo;
2. the letters of both MDH and MHS were in white and
3. Similar to MDH, the background color in MHS was red.

In light of the above resemblances, the Court decided the presence of strong visual resemblance despite weak phonetic resemblance. Further, it was also noted that both the parties were involved in the same business activity of manufacturing and selling spices. Thus, the registered trademark of the plaintiff was held to be infringed by the defendant.

Conclusion

Deceptive Similarity as a ground for refusal of trademark registration is the most important feature of the Act, along with other supplementary provisions covered under the purview of Deceptive Similarity. As already discussed, proof of intention to show Deceptive Similarity is irrelevant.

To establish infringement of a registered trademark, it is necessary to establish that the infringing mark is identical or deceptively similar to the registered mark, and no additional proof is required. In a passing-off action, proving that the marks are identical or deceptively similar is not enough. The mark’s use should be likely to deceive or confuse. Furthermore, in a passing-off action, it is necessary to prove that the defendant’s use of the trademark is likely to cause injury or damage to the plaintiff’s goodwill, whereas, in an infringement suit, the defendant’s use of the mark does not need to cause any injury to the plaintiff.

As a result, it can be concluded that a proprietor cannot use another proprietor’s trademark, nor can he adapt/use a mark originating from another person with a well-established reputation and goodwill that causes or is likely to cause confusion or deception in the minds of the public.