India: Deceptive Similarity And Judicial View

Last Updated: 27 February 2019
Article by Sonal Sodhani

Trademarks play a vital role in creating a brand name and goodwill of any business. Not only does it helps in creating a brand value but also, aids in revenue generation. Being of such vital importance, trademark is vulnerable to getting infringed and/or misused. One such way of trademark is making "deceptively similar" trademarks.

"Deceptively similar" trademarks can be understood as a trademark created, almost similar or a look-alike of an already existing trademark in order to deceive and confuse the consumers. This concept of deceptive similarity has been discussed in The Trade Marks Act, 1999 under Section 2(h) 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."

The concept of deceptive similarity has been widely recognised as a ground for trademark infringement under various trademark regimes. Under the Indian legal system as well, deceptive similarity is consider as a ground for not granting the registration of the trademark to an applicant by the Registrar of Trademarks.

However, the Act does not ascertain any criteria that can decide the ambit and scope of the phrase "deceptive similarity," hence, there is a vacuum. In order to remove the vacuum, it is essential to note the judicial stand on various cases regarding the said matter. Indian Courts have dealt with several cases providing with landmark principles and guidelines in matters of deceptive similarity. In order to adjudicate cases of intellectual properties and deceptive similarity, principles of phonetic and visual similarity, goodwill, reputation, test of likelihood, etc. have been recognised as some criteria to test deceptive similarity, by the Courts.

Some important cases concerning the judicial view of the Courts in the matter of Deceptive Similarity

  • M/S Lakme Ltd. v. M/S Subhash Trading1

    In this case, the plaintiff was selling cosmetic products under the trademark name "Lakme" and the defendant was also selling similar products under the name "LikeMe". A case of trademark infringement was thus filed by the plaintiff. The High Court held that the names were not deceptively similar and are two separate marks with difference in their spelling and appearance.
  • SM Dyechem Ltd. v. Cadbury (India) Ltd.2

    In this case, plaintiff started a business of chips and wafers under the trademark "PIKNIK". Later, defendant started business of chocolates under the name "PICNIC". A suit alleging trademark infringement was filed thereafter. The Court held the marks not to be deceptively similar as they are different in appearance and composition of words.
  • Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.3

    In this case Supreme Court laid down certain guidelines for adjudication of matters concerning deceptive similarity of trademarks. In this particular case, the parties to the case were the successors of the Cadila group. The dispute arose on the issue of selling of a medicine by the defendant under the name "Falcitab" which was similar to the name of a medicine which was being manufactured by the plaintiff under the name "Falcigo". Both the drugs were used to cure the same disease and hence, the contention was that the defendant's brand name is creating confusion between the consumers. Injunction was demanded by the plaintiff. As a defence, the defendant claimed that the prefix "Falci" has been derived from the name of the disease, i.e., Falcipharam malaria.

    The court observed that because of the diversified population of the country and varying infrastructure of the medical profession due to language, urban-rural divides, etc. and with the probabilities of medical negligence, it is important that confusion of marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby, held that being medical products more precaution and care must be taken and the names of the brand, therefore, being phonetically similar shall amount to being deceptively similar.
  • M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.4

    In this case, plaintiff claimed that the defendant's trademark "Fauji" is defectively similar with that of the plaintiff's, that is, "Officer's Choice". The claim was made on the ground of similarity of idea in making of the trademarks as the word "Fauji" is a hindi translation of a military officer. Adding to it, both the parties are in the business of alcoholic beverages. Further, packaging of both the bottles are also alike.

    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.

Conclusion

The doctrine of deceptive similarity is widely used in the Courts in matters of trademark infringement. Trademark being of vital importance in business and its goodwill it is of high need to protect it from misuse and infringement. Judiciary has taken a keen interest in matters of Intellectual Properties and several principles and guidelines have been provided through various judicial decisions in order to make adjudication of cases of trademark infringement much smooth. The court has also looked after the problems which may arise if a strict criteria is made for determination of deceptive similarities. It is evident from the cases above that the courts are going beyond the literal meanings of the legislations to provide justice and safeguarding the rights of the traders and protecting the interests of the consumers.

Footnotes

[1] 1996 (64) DLT 251

[2] (2000) 5 SCC 573

[3] (2001) 5 SCC 73

[4] CS (COMM) 819/2018; Borkar, S. & Jain, A. Case Comment, K&K ADVOCATES AND IP ATTORNEYS, (Feb. 20, 2019, 04:24 PM), https://www.khuranaandkhurana.com/2019/02/09/case-comment-on-delhi-high-court-holding-no-deceptive-similarity-in-the-marks-officerss-choice-fauji/.

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 Mondaq.com.

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

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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