The Concept of Deceptive Similarity Under Trademark Law
Contributor: Soumya Sharma
The Indian legal system has widely recognized the concept of deceptive similarity as a ground for trademark infringement. However, while the Trade Marks Act, 1999 acknowledges the term ‘deceptive similarity’ as under Section 2(h), it does not lay down any rigid criteria that would narrow the ambit or scope of adjudication by the judiciary. Hence, courts have given meaning to this phrase through judicial decisions, granting relief to parties when their marks have been infringed by another party which uses to gain from the reputation of the mark by causing confusion amongst the public by utilizing a mark that may be deceptively similar.
Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” 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”. It means that if an identifier of a business is so similar to an already established trademark that it will result in the consumers getting confused between the two brands, then it will be termed deceptively similar. For instance, in the case of M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, the logos of both the spice producing companies were the same with the only difference being that the plaintiff’s logo said “MDH” and that of the respondent said “MHS”. Delhi High Court, while passing an infringement order against the defendant’s use of the logo, said that both the logos were deceptively similar. Despite the similarity in the name or logo, what is an important criterion for holding something deceptively similar is the industry or the consumer base in which both the businesses function. The trademarks are assessed on the basis of whether the similarity is such that the consumers can get confused between the two.
The idea of Trademark infringement essentially grows from a likelihood of confusion in terms of its origin that is the original trader’s mark and the need to protect its distinctiveness and goodwill amongst its customers and the public at large. It is important to note however that the Trademark Act does not provide for a rigid criterion for the ambit and scope of deceptive similarity, making it imperative that the judicial decisions fill this vacuum. Consequently, the last few decades have laid out numerous case laws concerning trademark infringement that give considerable clarity about the legitimate interpretation of this concept.
The extensive trail of landmark judgments has laid down the path for the formation of principles to assist legal enforcement, which include
- visual and phonetic similarity
- rule of entirety
- rule of disintersection
- test of likelihood and confusion
- goodwill and recognizable reputation
These principles present a clear understanding of the concept and therefore, assist in adjudication of such disputes.
Criteria of determining Deceptive Similarity
In Cadila Health Care Ltd .v. Cadila Pharmaceutical Ltd, Supreme Court provided the grounds for testing “Deceptive Similarity”.
The factors which are to be taken into consideration for determining deceptive similarity are as follows:-
- Nature of mark (word, label or composite mark) The degree of resemblance between the marks
- The nature of goods (services for which the Trade mark is used)
- The level of care and intelligence exercised by the purchaser while purchasing goods or services
- The mode used by the purchaser to purchase or place the order
- The similarity in the nature, performance and character of goods of the rival traders
Corn Products Refining Co. v. Shangri-La Food Products Ltd. The Apex Court in this case took into consideration a test to determine the similarity between two marks.
The test was based on 3 main aspects –
- The Mark as a whole.
- Average Intelligence of the general public.
- Imperfect Recollection.
SM Dyechem Ltd. V. Cadbury (India) Ltd. In this case the Supreme Court followed certain principles to decide the case. Here, the Court focused on the aspect of “Dissimilarity”, rather than the aspect of “Similarity” as a test.
The Apex Court laid down the following principles –
- Whether there was any special aspect of the common feature which had been copied.
- Mode in which the parts were put together differently, i.e. whether dissimilarity of the part or parts was enough to make the product dissimilar.
- Whether, when there were common elements, should not pay more regard to parts which were not common while at the same time not disregarding the common parts?
Satyam Infoway Ltd V. Sifynet Solutions Pvt. Ltd
The Apex court in this case explored an aspect of Trademark and Intellectual Property that was left undiscovered till now.
The court acts as precedent with regard to trademarks of Internet sources. It held that all internet users have access to domain names, hence, the mark of such are very important. Deception of such marks would not only confuse the users and the general public, but also lead to confusion with regard to unsought service receipts. In this case, the judiciary interpreted the domain name to be treated as a legitimate trademark. It also accepts that deception of such marks without permission of the creator would be treated as infringement under the Trade Marks Act, 1999.
Parle Products (P) Ltd. V. JP & Co. Mysore
This is one of the most important cases with regard to Deceptive Similarity.
The Supreme court in this case observed that to test if two marks are similar, the essential features of the marks are to be taken into consideration.
The court held that similarity as a whole is to be considered, so that it would mislead the customers or general public.
In this case, all features of the marks are similar, i.e., same colour, same size, same colour combination, resemblance in mark designs, such that it would cause confusion.
The court held that the mark was deceptively similar in this case, because if the customer or general public did not take into notice the minute differences, they might easily get confused with both the marks.
The court said that each case would have to be viewed and interpreted separately based on the features.
Trademark plays a vital role in giving business an identity and goodwill. Thus, it is very important for a business to get its trademark registered. Deceptive similarity is a major threat in the world of trademark because it can lead the general public of average intelligence to believe that the mark in question is somehow related to a well- known name.
Judiciary has shown strictness to save the rights of the genuine trademark holder and has given deceptive similarity a wide scope. Courts have used the Doctrine of deceptive similarity for protection against trademark infringement.
