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

Last Updated: 24 January 2006
Article by Manisha Singh


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
Related Topics
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions