India: Deceptive Similarity – A Factor in Dilution of Trademark and Goodwill

Last Updated: 24 January 2006
Article by Manisha Singh Nair


A trademark is a visual symbol often created to distinguish ones own product in respect of visual appeal or efficacy from host of other identical and similar products to build up reputation and profits by skill, effort and enterprise in the course of time The whole concept of Trademark law is based upon business practice and competition. The Delhi High Court addressed this in ST. Ives Laboratories Inc. V. Indo Cosmesi Pvt. Ltd. 2005 (31) PTC 635 (Del) and Smithkline Beecham PLC & Another V. S.Venkataiah & Others 2005 (31) PTC 666 (Del).

ST. Ives Laboratories Inc., incorporated under the laws of the State of Delaware, United States of America is engaged in the business of manufacturing, distribution, sale and trade of cosmetic and toiletry products. To market and to give their products distinctiveness, the company conceived the trademark/word "ST.IVES" in the year 1978 and had been using it bonafidely, honestly, commercially, continuously and openly in course of the transaction of its goods. The Company is the owner of the trademark in the words per se and also owns the copyright in the artistic form of the depiction of the trademark. The said trademark was registered under the Indian Trade Mark Laws under Class3 in respect of cosmetics; hair care and skin care products in 1992. In 2003 the Company found out about the use of a similar mark and its use through the Trade Mark Journal No. 1301 (S) III dated 28th August 2003, wherein Indo Cosmesi Pvt. Ltd., had made an application for registration of the trademark "MT.IVES" in respect of goods similar to the goods transacted by ST. Ives.

ST Ives served a legal notice upon the defendants to desist from using the deceptively similar trademark, as it would create confusion in the minds of the consumers leading to believe that the goods bearing the infringing mark are coming from the same source and concurrently it also launched an inquiry into the market to ascertain about the use of the impugned trademark and trade name. It was found out that the use of the trademark was very insignificant and whatever transactions were carried out, was done in a very secretive manner to capture the market of ST. Ives and in the long run frustrate its rights. Seeing no settlement coming through ST. Ives, in order to secure its rights, filed a suit under Sections 134 and 135 of the Trade Marks Act, 1999 praying for permanent injunction against infringing party using the impugned mark and passing off their goods as goods of the plaintiff. They averred that the defendants are habitual pirator and the modus operandi and intention of the defendants had always been to take advantage of the consumer base and support which plaintiff had so painstakingly built. Giving instances, the plaintiff informed the court that the defendants have also started using the trade name INDO being in violation of the trade name of M/s. Indola Cosmetics B.V who were compelled to file a suit against them.

The main grievance of the plaintiff was that that they have spent huge amounts in advertising and marketing and due to their consistent efforts, net sales of their products are on an upward swing from the last five years and all this would go in vain in the present scenario of adoption of the term that includes ‘user’, if any, as well as its threatened and contemplated user an identical / deceptively similar trade mark MT IVES in relation to the similar goods, by the defendant.

ST. Ives placed on record the copyright registration, trademark registration and details of all the countries all over the world where the trademark is registered and business is carried out. The literature, photographs of the goods produced by the defendants with their trade names, trademark and copyright were also placed on record.

In view of the above facts a decree for permanent injunction was adjudicated upon in favour of ST. Ives restraining the defendant from dealing in the same or allied goods and business under the impugned trademark MT IVES or any other trademark or label bearing the same or identical with or deceptively similar to the plaintiff’s said trademark ST. IVES and trade name bearing the mark/word ST. IVES.

The other case is also an example of how a deceptively similar trademark creates a probability of confusion regarding the source of the product in the minds of the consumers.

SmithKline Beecham is a company organized and existing under the laws of U.K. It is a well-known manufacturer of pharmaceutical products and has proprietary rights in respect of manufacture and sale of ‘CROCIN’ and ‘CROCIN PAIN RELIEF’ in the distinctive blue and red strip packaging. It acquired the brand ‘CROCIN’ from Duphar-Interfran Ltd. in 1996, which in turn had invented the word in 1963 and used it as their brand name for their paracetamol tablets. In 2005, the SmithKline Beecham was alerted of the sale of paracetamol tablets under the mark ‘NELCIN PLUS’ bearing a packaging almost identical to their brand being manufactured by Anros Pharma, which is a hundred percent subsidiary company of SmithKline Beecham. It was submitted that Anros Pharma has copied the product packaging and also adopted the NELCIN mark, which is deceptively similar to the well-known product CROCIN to pass off their goods as originating from the established source. The confusion or deception is bound to result as the packaging and the name used is more or less similar. Taking view of the above facts and evidences produced before the court a permanent injunction was decreed in favour of SmithKline Beecham and damages were also awarded towards loss of reputation and goodwill.


When similarity between two trademarks is as such to cause confusion and imperfect recollection in the mind of the consumer, the deceptively similar rival trademark succeeds and encashes upon the reputation and goodwill of the trademark holder. The deceptive nature of a rival trademark can be perceived either through sound or look that is ‘visually or phonetically’ and this is the benchmark in deciding cases on the question of likelihood of confusion between the marks. The mark, which creates the same psychological reaction and mental association in the minds of the consumers so as to lead them to believe that the particular good is coming from the same source when they buy goods under normal circumstances and conditions of the trade, is a deceptively similar mark.

© Lex Orbis 2006

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.