Determination of the distinctiveness of marks, despite the standard set by the Trade Marks Act, 1999 under provisions such as Section 9 and Section 11, is a difficult task and often requires judicial insight. As a matter of principle, the examiner/court will have look at the mark in its totality. In recent years, a comparison of phonetic similarities has seen an upward trend in comparison of marks.
The provision dealing with infringement of a registered mark as a result phonetic similarity is incorporated under Section 29(9) of the Trade Marks Act, 1999 which states that a mark may be infringed by the spoken use as well as visual representation of words. The Supreme Court has on several occasions affirmed that comparison of trademarks must be done with reference to both ear as well as the eye.
Phonetic similarity as one of the fundamental tests of comparison was cemented in the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. where the Supreme Court observed that it was not correct in law to hold that the principle of phonetic similarity cannot be used when the manner in which the conflicting words are written is different. An important application of this principle in this regard can be seen in Consitex SA v. Kamini Jain and Ors. where the Delhi High Court was tasked with the decision on two similar sounding marks 'Zegna', an Italian luxury fashion brand, (pronounced Zen-Yah) and 'Jenya'. The court here leaned in favour of the plaintiff to hold that Jenya was a deceptively similar trademark. The importance of the pronunciation here is such that had Zegna not adduced documents in support of the pronunciation of Zegna as 'Zen-Yah', the Court may not have decided in their favour as the two marks otherwise differ significantly.
The decision in Consitex SA was then referred to in the case of Imagine Marketing Pvt. Ltd. v. Exotic Mile. The court, inter alia, held the mark Boult to be phonetically similar to Boat due to similar opening and closing syllables of the words.
In case of composite marks, it may sometimes happen that some part or word of that mark has more popularity than the others. This was argued at length in the case of General Mills Marketing (GMM) v. South India Beverages (SIB). Here, the plaintiff had brought an action against the defendant's mark 'D'DAAZS' for being phonetically similar to plaintiff's mark 'Haagen-Dazs'. The defendant argued that the word 'Haagen' alone forms the dominant or essential part of the plaintiff's mark due to which defendant's mark cannot be similar. However, as SIB did not adduce any documents proving Haagen to be the dominant word, 'D'DAAZS' was held to be phonetically similar to 'Dazs'.
Usually, dissection of marks into dominant and non-dominant parts as can be seen in cases involving composite marks may be conflicting with the general principle of considering marks in their totality. However, there may be cases where this may be used when two composite marks with certain common elements are in question. For example, the Draft Manual of Trade Marks Practice and Procedure in Para 11.2 (Concept) illustrates CROCIN PLUS and CROCIN FORTE may be conflicting for medicines due to the dominant element 'CROCIN'. An application of this can be seen in the Bombay High Court judgement Pidilite Industries Limited vs. Poma-Ex Products where the court, while ruling in favour of the plaintiff, held there to be a high degree of phonetic similarity between the 'FEVIKWIK' and 'KWIKHEAL' due to the dominant word 'KWIK' in FEVIKWIK. As dissection of marks refuses protection to the mark as a whole, it should only be done on a case-to-case basis.
While the test of phonetic similarity has gained widespread recognition and application in the Indian trademark landscape, courts have often been wary of applying it as an exclusive test of comparison. This is because mere phonetic dissimilarity may not be enough to preclude likelihood of confusion. Along the same lines, the Bombay High Court in Franco Indian Pharmaceutical v. Corona Remedies, was tasked with comparing phonetic similarities in 'STIMULIV' and 'STIMU-LET'. The court observed that "in a country where pronunciation in English is seldom optimal and frequently much less than that, I do not think this is a sufficient phonetic distinction or distinctiveness to tell one from the other." Therefore, the test of phonetic similarity must not be used as an exclusive test and a trademark's distinctiveness can only be established by considering it in totality.
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