India: First Impression Is The Last Impression: An Analysis Of The Tests That Must Be Used To Differentiate Between Trademarks

The author, through this article, draws a battery of tests that are and/or must be used while differentiating two different trademarks. This article lays down all the tests that the courts have used over the years while conducting the likelihood of confusion analysis. This would help in better understanding the Indian Trademark Law in practice.

I. Statutory Provisions


This section lays down the absolute grounds for refusal of registration of the trademark. The mark could be refused on the basis of the following:

  • RULE 1 [as laid down in Sub-section (1)] –

- The mark lacks distinctiveness.

- The mark is descriptive of the characteristics of the goods or services.

- The mark consists exclusively of marks or indications which have become customary or bonafide in the established practices of the trade.

EXCEPTION [as laid down in proviso to sub-section (1)] - There are scenarios where Rule 1 would not apply to the situation in hand:

i. When the mark has acquired distinctiveness over its course of business or trade. OR

ii. When the mark is a well-known mark.

" RULE 2 [as laid down in sub-section (2)] –

- The nature of the mark is such that it is likely to deceive the public.

- The nature of the mark is such that it is likely to hurt the religious sentiments.

- The mark consists of obscene or scandalous matter.

- The use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

  • RULE 3 [as laid down in sub-section (3)] – The shape of goods which results from the nature of the goods themselves; or

- The shape of goods which is necessary to obtain a technical result; or

- The shape which gives substantial value to the goods.


This section lays down the relative grounds for refusal of registration of the trademark. The mark could be refused on the basis of the following:

  • RULE 1 [as laid down in Sub-section (1)] –The mark is identical to an earlier trademark and the goods/services associated with the mark are similar to the earlier trademark. And there could be a likelihood of confusion w.r.t. to the source of goods.
  • RULE 2 [as laid down in sub-section (2)] –The mark is identical to an earlier trademark, and the earlier trademark is a well-known mark. Therefore, the use of such a mark would allow the applicant to gain unfair advantage over others or damage the reputation of the earlier trademark even in situations where the goods may not be similar.
  • RULE 3 [as laid down in sub-section (3)] – The use of the mark is prohibited in India by virtue of any law - say by virtue of the law of passing off and by virtue of law of copyright.


This Section allows the registration of "honest concurrent users". In order to avail this advantage, the applicant must be bonafide prior or concurrent user.

II. Case Laws


In this case, the courts did a likelihood of confusion analysis between two marks, namely, "AMRITDHARA" (Opponent's Mark) and "LAKSHMANDHARA" (Applicant's Mark). Both these marks were being used for a medicinal preparation, where "AMRITDHARA" was in use since 1901, much before the Applicant's mark i.e. "LAKSHMANDHARA" came into existence.

The courts, in this case set down rules/guidelines, the essence of which echoes till today. The courts laid down the test for determining if the two marks were similar.

Two Important Tests:

- Reasonable Man's Test: The differentiation of the two marks must be done from the point of view of a man with average intelligence and imperfect recollection.

- Overall Impression Test: According to this test, we must see the overall impression of the two marks. This includes the overall phonetic and visual similarity of the two marks.

The court, in this case, remarked that a man would have to be "unusually stupid" or must be a fool or an idiot to be deceived between the two marks. The overall impression of the two marks showed obvious differences.


This is another landmark case that is integral to Indian Trademark Law in practice. This case reiterates and then clarifies the law laid down in Amritdhara Case.

The Test:

- Totality Test: It is important that while comparing the two marks, one must compare the mark as a whole. The practice of taking a portion of the word and saying that it is different from the other mark is not a right practice. The marks must be compared in totality to ascertain if any deception or confusion exists.

This rule is an extension of the rule already laid down in the previous case


This case deals with the issue of Differentiation of Trademarks in the medical field. The court uses the same tests as laid down in the Amritdhara case , but demands a strict scrutiny in case of pharmaceutical products. Court remarks that the tablets "FALCITAB" and "FALCIGO" both are used in the treatment for 'cerebral malaria' commonly known as Malaria Falciparum. The court feels that even though one of the tablets is a prescription drug and is not easily available across the counter; the drugs have marked difference in the compositions with completely different side effects, therefore strict scrutiny is a must, as without it, there could be fatal consequences.

The court further goes on to state that when comparing the two marks, segregation of words to differentiate the two marks is a dangerous practice and must not be adopted. Thus affirming the rules as laid down in the previous cases.


This comes as a warning to all the trademark users, who earlier thought that they would not fall under the scrutiny; thus minimizing misuse of trademark name for unfair gains.


In this case, the Appellants, who are registered proprietors of the Trademark "ZODIAC" in respect of readymade garments and handkerchiefs, filed an opposition against the Respondents, who were using the similar

Trademark "ZODIAC" in respect of shirtings and suitings. The Courts in this case, talk about the test for establishing distinctiveness. The courts go on to say that since appellants had been using the mark prior to the respondent since the year 1960, continuously and extensively, for a period more than three decades, the mark had acquired distinctiveness. While, the respondents had been using the mark since 1983 for a short period of time and it did not acquire distinctiveness and therefore, did not qualify for registration.


This case also further elaborates and clarifies the "overall impression test".

A quote from the judgment has been cited below for better understanding.

"35. The test of comparison of the marks side by side is not a sound one since a purchaser will seldom have the two marks actually before him when he makes his purchase. The eye is not an accurate recorder of visual detail and marks are remembered by general impression or by some significant detail rather than by any photographic recollection of the whole. While judging the question as to whether the defendants have infringed the trade mark by colorable imitation of the mark or not, the Court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks."

This case is very important with respect to the issue of cross-border reputation. The court looked at various factors to establish if the mark "MAXTRAD" has cross-border reputation / spill-over reputation or not:

- Long & continuous use- In use since 1999; date of use in India: 2004

- Global presence- Registered in over 29 countries

- Advertisements/promotion/social media presence of the mark- Website-

- Revenue- Excess of 10 Billion USD in the year 2012


This case is a landmark since it lays down the rule for establishing cross-border reputation in India. The Court remarked that even if Toyota was a prior user of the mark "PRIUS" outside of India, which was highly advertised over the internet and news channels, the mark failed to show/prove its reputation in India during the time defendant started using the mark "PRIUS"

in India in the year 2001. The court also made a very important observation that IP rights are territorial and not global.


Use of a mark outside India or a trans-border reputation of a mark in India may not be enough to sustain a registration if it is attacked on grounds of non-use. Some use of the mark in India is required.


The author, through this article, has tried to establish the perpetual existence of the "overall impression test" which has been used by the courts to differentiate between two trademarks. The judgments over the years have only broadened the meaning of the term "overall impression" with regards to Trademark law, but the essence of the test remains the same. But it must also be noted that not every case is an easy case, and there might be situations where two marks have the exact same words, like it was in the case of Metropolitan Trading Company or there might be situations where the mark has reputation outside India, which spills over to India as well, like in the case of Royal Bank of Scotland Group. In these cases, the courts have looked into the test for distinctiveness and/or the concept of cross-border reputation, over and above the overall impression test. This all points to the progressive nature of the Indian Trademark law in practice.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
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