Introduction
Phonetic similarity, which is the degree to which two or more sounds are similar to each other, is fundamental to trademark protection. Distinct from spelling or appearance, phonetic similarity is also a factor that is considered by trademark offices when examining applications.
In his authoritative treatise on trademarks, Prof. McCarthy noted that "Marks may sound the same to the ear, even though they may be readily distinguishable to the eye." For instance, we all recognize that homophones in the English language, such as, "sea" v. "see", or "ate" v. "eight," in the context of brand identification, are likely to create confusion among common consumers.
In India, phonetic similarity is covered under Section 29(9) of the Trade Marks Act, which provides that a trademark may be infringed by the spoken use of words as well as by their visual representation. There is a rich jurisprudence in India around this concept, with courts having upheld or rejected phonetic similarity on various grounds. This note discusses some of these cases to better understand the legal position here.
- Upholding phonetic similarity
- 1. INDI vs INDEED
A recent case where phonetic similarity came up for consideration was FMI Limited v. Midas Touch Metalloys Pvt. Ltd. CS (COMM) 721/2024, (para 49). Here, the Delhi High Court held that the marks "INDI" (the plaintiff's mark) and "INDEED" (the defendant's mark) were phonetically, visually, and structurally similar in relation to identical goods having overlapping trade channels and that it was likely to cause confusion and deception among consumers with average intelligence and imperfect recollection.
The court observed that there was phonetic similarity between the trademarks, as the "EE" in "INDEED" generated a sound analogous to the letter "I" in the mark "INDI." According to the court, there was no discernible difference simply by the addition of the letter "D."
The court also took into account the prior adoption and use of the mark "INDI" since 2015, as against the launch of products under the mark "INDEED" only in July 2024, and the fact that it was applied for registration only in November 2023 on a 'proposed to be used' basis. The court also rejected the defendant's contention that the mark "INDI" is short for India, based on results solely generated through AI.
- 2. INSEAD v. INSAID
In another case, Institut Europeen D Administration Des Affaires, Insead, Association v. Fullstack Education Private Limited & Anr., C.O. (COMM.IPD-TM) 1/2021, the Delhi High Court held the marks "INSEAD" and "INSAID" as phonetically similar, noting also that they were in connection with similar services, i.e., educational services. The court highlighted the importance of conducting a proper word and phonetic search at the preliminary stage itself, after the application is submitted, so that possible marks that are phonetically similar would come up in the suggested results. (para 44)
The court made pertinent reference to the classical test for phonetic similarity postulated in Pianotist Co. Application (1906) 23 RPC 774 by Parker, J. (the Pianotist Test) which states:
"You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they were to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider what was likely to happen if each of those trademarks was used in a normal way as a trademark for the goods of the respective owners of the marks."
- Rejecting phonetic similarity
Courts have considered cases alleging phonetic similarity with care, and an analysis of cases where it has been rejected reveals that several factors contribute to this determination. Some of the cases discussed below shed more light on this.
- 1. Variations in Syllables
Indian courts have considered seemingly minor factors, such as variations in syllables or the number of syllables, when comparing trademarks. For instance, the Delhi High Court, by applying the Pianotist test, held that the marks "ELEMENTIN" and "ELEMENTAL" were not phonetically similar in Elyon Pharmaceuticals Pvt. Ltd. v. Registrar of Trademarks C.A.(COMM. IPD-TM) 153/2021 (paras 7 and 8), as the rival marks looked different. Specifically, the court noted that "ELEMENTAL" was an adjective of 'element,' a common English word that is also synonymous with 'fundamental,' whereas "ELEMENTIN" was a coined word devoid of any etymological significance. The court also said that "ELEMENTIN" contained three syllables, but "ELEMENTAL" had four; and the marks also had distinct concluding syllables.
- 2. Differences in prefix and/or suffix
Prefixes and suffixes can also play a significant factor in the phonetic comparison of marks. In Abbott Gmbh v. Registrar of Trademarks and Another C.A. (COMM.IPD-TM) 9/2023, the Delhi High Court held that there was no structural or phonetic similarity between the marks "IBUFEN" and "MEBUFEN". The court observed that the rival marks have very different prefixes, i.e., 'IBU' and 'MEBU,' whereas the common suffix 'FEN' in both is derived from the chemical element "IBUPROFEN," which is used in both medicines. It helped that the Respondent provided evidence of various medicinal products that used 'FEN' as a part of their names.
- 3. Pronunciation
Pronunciation is a critical aspect of phonetic similarity, as it determines how similar two marks sound when spoken out loud. In International Student Identity Card Association and Anr. v. Abhishek Tiwari and Ors. CS (COMM) 113/2016 (para 53), the Delhi High Court held that there is no phonetic similarity between the acronyms "I-SEC" and "ISID," wherein the latter is pronounced by the letters individually as I, S, I, and D. Besides phonetic similarity, the court also analysed visual similarity, etymology, and various other common and distinct features while comparing the rival marks.
It is useful to note, however, that a 'correct' pronunciation of a trademark may not always align with its written form. But what happens if an incorrect pronunciation becomes the norm among consumers? McCarthy, in his treatise, says that in the determination of likelihood of confusion, although similarity in sound plays a vital role, 'correct pronunciation' cannot be relied upon in itself and would largely depend on the manner in which pronunciation is used by ordinary purchasers at large. Hence, along with pronunciation, courts tend to compare other factors and the overall impression that rival marks give.
In this context, the Delhi High Court in Consitex S.A. v. Ms. Kamini Jain & Ors. CS (OS) No. 629/2011, (para 34) held that "JENYA" was deceptively similar to the Plaintiff's registered mark "ZEGNA" which was pronounced as "ZEN-YAH" and was applied for the same products and in the same trade channels. The Plaintiff was also able to adduce certain documents and sound clips that proved the pronunciation of the registered mark as "ZEN-YAH" in India. Additionally, the Hindi word ""also stood registered in the Plaintiff's name, further strengthening their case.
Conclusion
Clearly, trademarks are a composite of various factors, including visual, phonetic, and structural elements. In cases where trademarks are challenged, courts must consider all of these elements, as a composite whole, and not extracted and examined in isolation.
Nevertheless, the phonetics of a mark are a key feature, and a trademark owner would only ignore this at their peril. Phonetic searches, therefore, become as imperative as word or image searches, as part of due diligence when applying for registration of a mark, or even as a defensive strategy to protect an existing portfolio.
Local contexts also matter, as the phonetics of a word may vary, depending on prevailing pronunciation conventions. Trademark owners and users would do well to maintain proper records of these matters, and remain vigilant on how customary use has developed around certain marks, as that may significantly impact judicial considerations as well.
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.
