The question whether two marks are deceptively similar is an important question which arises for consideration in connection with registration of trademarks. A trademark is said to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion [Section 2 (i) (h) of Trademarks Act, 1999]. In the determination of the question of likelihood of confusion, the tribunal has necessarily to assess the psychological reaction and mental association the mark will generate in the mind of the average customer when he buys the goods under normal circumstances and conditions of the trade. The instant dispute between Stadmed Private Ltd. vs. Abbot Laboratories 2006 (32) PTC 229(Reg.) is a case in point.
Stadmed Private Ltd. sought for registration the word "ZYTRIN" in respect of pharmaceutical and medicinal preparations. Against this an opposition was lodged by Abbot Laboratories objecting to the registration of the impugned mark. It was averred by the Abbot Labs that they are the proprietors of several well-known trademarks and "HYTRIN" which is being used since the year 1983 and is also registered, is one of them. Further the registration of the impugned mark "ZYTRIN", which is deceptively similar to "HYTRIN", is likely to cause confusion or deception during the course of the trade and the very adoption of the impugned mark by the Stadmed Private Ltd is with a view to trade upon and benefit from the goodwill and reputation already enjoyed by the Abbot Labs in their registered trademark.
Stadmed Ltd retorted back saying that there are many marks on the Register consisting of similar suffix ‘TRIN’ which is common to the trade and that the prefixes in the rival marks are not same and similar.
The Tribunal refused registration to the impugned mark conscious of the fact that stricter standards have to be applied in deciding the question of deceptive similarity between the rival marks in case of medicine so that there should be no possibility of confusion which could result in disastrous consequences. The tribunal found the impugned mark phonetically, visually and structurally deceptively similar.
Each case has its own peculiar facts and circumstances but it is important to follow the principles that are laid down while comparing the rival word marks. The comparison of the two marks has to be done as a whole. They should be judged both by their look and by their sound. There should be consideration of the goods to which they have to be applied and the nature and kind of customer who would be likely to buy those goods.
Lord Parker’s reported famous dictum conveys that, in essence, there should be a consideration of all the surroundings circumstances in finding out what is likely to happen if each of the rival trademarks is used in a normal way as a trademark for the goods of the respective owners. If in consideration of all those circumstances, a conclusion is reached that there will be confusion, not necessarily in the form of illicit benefit for one and injury for another, but confusion in the mind of the public which will lead to confusion in the goods then refusal of registration is a must in those cases.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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