This article has been written by Tannu Gogia, pursuing a Diploma in International Business Law from LawSikho and edited by Shashwat Kaushik.

It has been published by Rachit Garg.

Introduction

“A   trademark   is   a   company’s   persona   and   identity   in   the   marketplace” 

-Dr. Kalyan C. Kankanala

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The Trade Marks Act, 1999, was enforced keeping in mind the various objectives. I find two objectives very relevant to the deceptive similarity, one, providing effective protection to trademarks, and the second, preventing the fraudulent use of marks. One of the best examples of fraudulent use of marks is making a deceptively similar trademark with the purpose of attracting one’s customers towards himself for economic benefits. In the recent case of Hamdard National Foundation (India) vs. Sadar Laboratories Pvt. Ltd. (2022), or to relate this case to every household, we can call this as ‘Rooh Afza vs. Dil Afza’, in this case, it was alleged that the plaintiff’s mark ‘Sharbat Rooh Afza’ had been infringed by the defendant’s deceptively similar Mark ‘Sharbat Dil Afza’ but in January 2022, the single-judge bench of the Delhi High Court had refused to grant an interim injunction, but in January 2023, the division bench has set aside the judge of the single-judge while holding that the mark ‘Rooh Afza’ has been functioning as the identifier of the appellant’s products since 1907, resulting this mark holds a high degree of importance and granted an injunction to the plaintiff/appellant by stating that the defendant would gain an undue advantage if allowed to continue using the ‘Sharbat Dil Afza’ mark.

This article will discuss in detail the different aspects related to the deceptive similarity found in trade marks, a) meaning and scope; b) provisions in the Trade Mark Act and other legislation or treaties; c) what will be the consequences of making a deceptively similar trademark; d) are there any circumstances where a trade mark still being a deceptively similar mark can be registered; e) remedies; f) how to avoid a trademark from being deceptively similar; and some recent and important cases.

Meaning and scope 

Section 2(zb) of the Trade Mark Act, 1999, defines the term trade mark as  a mark that is capable of distinguishing the goods and services provided by one person from those of another. In other words, a trade mark works as an identifier, which means, for example, that when you look at a product, you will be able to trace its origin or the person/company who manufactures such products, so one is able to identify the person responsible for such a product or service. In general, the purpose of having a trade mark is to easily recognise the product or service or to stand out from the groups of other manufacturers or service providers.

But managing a trademark and its protection proves to be  very strenuous The more a product or service or its related trademark is prominent and well known, the greater the chances or risks of it being copied, so a trademark is vulnerable to being misused by other individuals. One such misuse is making deceptively similar trade marks and thus exploiting the name and goodwill of the well-known trade marks for economic gain. 

Section 2(h) of the Trade Mark Act, 1999, defines deceptively similar and in simple terms, it means that a mark need not be identical to be called deceptively similar to that of another, but if it so nearly resembles the other mark, there is a high chance that it will deceive the general public or cause confusion in their minds. 

Nature of deception in trademarks

  • Deception concerning the goods: When a deceptively similar mark is applied to the goods which don’t belong to the registered trademark owner, a person may purchase such goods thinking that it belong to the brand which he had in mind while purchasing the goods;
  • Deception about the trade origin: Under this, a person may purchase the goods after recognising the mark, thinking that they have the same source as some other goods bearing a similar mark, with which he is familiar;
  • Deception concerning the trade connection: Under this, the goods bearing the marks may not be identical, but they share the same similarity with the mark bearing different goods. Here,  a person purchasing the goods may not think that the goods belong to the same brand that he had in mind, but due to the similarity between the marks, he may believe that both marks are connected in some way or that they have some kind of association with each other.

Different types of similarity found in the marks

  • Visual similarity: The first similarity which is considered for comparison between the marks is the visual similarity and under this, all visual aspects like any common syllables, suffixes, prefixes, shapes, length, etc. of the mark are compared with the other mark;  
  • Phonetic similarity: To determine whether there is any kind of similarity between the two trademarks, the phonetic similarity in sound is one of the relevant factors to consider, as phonetic similar trademarks can create confusion in the minds of the public. To understand phonetic similarity, let’s consider a few examples: Zegna (an Italian brand pronounced as Zen-Yah) and Zenya; Fevikwik and Kwikheal; Xceed and Xseed;
  • Conceptual similarity: In this, the similarity is judged based on the message a mark is trying to convey, and this type of similarity comes under both phonetic and visual similarity, as it refers to the eyes as well as the top of the ears, for example, Gluvita and Glucovita or Lakme and Likeme. 

Historical aspects of Trademark Law

The first trademark law in India was the Trade Mark Act of 1940. Before this legislation, there was no law related to trademarks in India and to fill the legal vacuum related to the actions of infringement of registered and unregistered trademarks, assistance was taken from Section 54 of the Specific Relief Act, 1877 and for registration related aspects were resolved through the Registration Act of 1908. So, after a hard struggle to get assistance from other legislation for such important matters, the Trade Mark Act of 1940 was enforced. After passing the Act of 1940, as trade and commerce grew, this demand for trade mark protection also increased. After the independence of India, the Trade and Merchandise Act of 1958 was passed, which replaced the Trade Mark Act of 1940.

The extension of trade, commerce and interaction with the world economy led to the advent of globalization and with globalisation intellectual property attained world-level recognition, which gave rise to the need for uniform standard laws, policies, and rules that are accepted globally for the protection and enforcement of trademarks. All this set the path for TRIPS agreements. This 1958 legislation came to an end and the Trade Mark Act of 1999 was enforced, which was in line with the TRIPS Agreement obligations.   

Also, there is no need to go through the concept of deceptive similarity in the Trade Mark Act of 1940 and 1958, as they follow the requirements laid down in TRIPS; hence, the 1999 Act stuck to the same definition of deceptive similarity. 

The Trade Marks Rules of 2017 also came into effect, which repealed the earlier Trade Marks Rules of 2002. Therefore, the Trade Marks Act of 1999 and the Trade Marks Rules of 2017 are currently in effect and regulate trademark legislation in India.

  • TRIPS Agreement: Article 16.1, this article doesn’t specify what rights an owner of a registered trademark enjoys regarding the trademark itself but mentions how he will be able to protect it instead. It confers an exclusive right on the owner that third parties, who don’t have the consent of the owner, won’t be able to use the identical or similar signs on the identical or similar goods or services in respect of those trademarks that are registered if such use results in the likelihood of confusion.

Let’s understand it more clearly, if signs and products are identical, then there is a presumption of the existence of the likelihood of confusion, but if signs and products are similar, then the likelihood of confusion will be decided on a case-by-case basis and on the basis of individual market situations.

  • Trade Marks Act, 1999: Sections 2(h) and 2(zb), which define deceptive similarity and trademarks, have been referred to above in the meaning and scope section. Now let’s try to understand two provisions where deceptive similarity is one of the grounds for refusal to register trademarks.

Section 11 of the Trademark Act specifies some relative grounds for refusal of registration and according to Section 11(1)(a) and (b) of the Trade Marks Act 1999 – a trade mark shall not be registered if, because of its identity or similarity with earlier trademark(s) and because of the identity or similarity of goods or services covered by such trademarks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. 

The similarity of marks: The term similarity of trademarks is to be interpreted as “deceptively similar,” and this expression has been defined in Section 2(h) of the Trademark Act as “so nearly resembling the other mark as to be likely to deceive or cause confusion.”

Likelihood of confusion: For the likelihood of confusion to exist, it must be probable; it is not necessary that actual confusion has arisen or should arise in the mind of the public.

  • Trademark Rules, 2017: Rule 33 – This rule mentions that the registrar shall be liable to examine the application for registration of a trademark, and for this purpose, the registrar shall search the earlier trademarks, whether registered or applied for registration; both will be considered for examination. The purpose of conducting such thorough examination is to ascertain whether there is on record any trademark that is identical or deceptively similar to the trademark applied for in respect of the same or similar goods or services. But one must not lose sight of the fact that this rule is silent about what kind or type of searches or what a registry should keep in mind while examining the application of a trademark, and this vacuum or omission, whether intended or not, might create problems for the trademark applicant.
  • Trademark Manual: Let’s take a look at the trademark manual, as it contains a very important point that helps to avoid registration of any mark that is deceptively similar to the earlier trademarks. Though the Trademark Act and Rule do not specify the exact nature of the searches that the Registry should undertake for examination purposes, these searches are important to determine whether there is any Trademark deceptively similar to the earlier well-known trademark, but the Trademark Manual does mention it under Chapter II, point 11.1 “The search for the same/similar trademarks is performed through the Trade Marks System. With the help of this system, the examiner will be able to make searches with three modes-word mark search, phonetic search and device mark search”. But the stumbling block is that though the trademark manual aligns with the trademark laws, it doesn’t hold the same legal standing. To put it briefly, the need to establish a trademark manual is not legally binding, but it is highly recommended to follow it to avoid any confusion and unnecessary infringement suits.

When can a trademark be considered deceptively similar

Criminal litigation

The factors to determine the deceptive similarity between the two marks have been given in many cases, but all these factors are based on the English case of Justice Parker in the Pianotist case. One such case where such factors are provided is Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) and some of the important points are given below:

  • Nature and kind of the marks;
  • The degree of likeness, similarity or resemblance, for example, phonetic, visual or conceptual similarity between the marks;    
  • The kind or class of goods for which the trade mark has been used; 
  • Different class or types of purchasers who are likely to buy the goods, their educational qualification, use of intellectual property, or care in buying goods or services;   
  • The mode of purchasing or acquiring the products or services;  
  • The similarity in the nature, performance and character of goods of the rivals.

This case also laid down the Rule of Anti, which emphasises the need to judge a mark as a composite whole rather than breaking it into parts for comparison. The rationale of this rule is based on the presumption that the average consumer would judge the mark in its totality and not in parts.

In the case of Corn Products Refining Company vs. Shangrila Food Products Limited (1959), the Supreme Court of India, taking into account the facts of the case and all things considered, came up with a test to ascertain the similarity between the two marks: i) to judge a mark as a whole instead of breaking it apart and comparing each part with the other mark; ii) to take into account the ordinary intelligence of the general public; iii) imperfect recollection from past incidents instead of comparing the two marks by placing them side by side.

All the given above points are broad and considered essential features for determining the similarity between the marks to summarise this, it is not necessary to compare the marks by placing them side by side and deciding whether a person can tell the differences and similarities between the two. This test is not sound and proper because a person may not have the product to compare it with the product bearing a similar mark. The prudent thing to do is to determine whether, from his past recollection, a person can confuse a deceptively similar trade mark with the earlier genuine trade mark.

Deceptive similarity and intention

Intention to deceive is not a deciding or guiding factor to know if a mark can confuse or deceive the general publication, be it deception related to goods, origin or trade connection. What matters is that the mark is such that it can confuse. It is irrelevant whether a person wants to mislead or not; to prove that he had no intention to deceive will not work in the favour of the defendant, so it needn’t be proved.

In the case of Kirloskar Diesel Recon Pvt. Ltd. vs. Kirloskar Proprietary Ltd. And… (1995), the Bombay High Court held that to have the plaintiff prove the defendant’s deceitful purposes is a bootless errand, once the reputation and goodwill of the plaintiff are established, the intention loses its purpose. In the case of Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd. (2001), the Supreme Court has repeatedly highlighted the need to prove likely deception before this test intention seems insignificant. So, strictly speaking, it is enough to establish likely deception and not divulge the intention.

In K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras and Anr. (1970), it was held by the Supreme Court that to find out that the trade mark may be found deceptively similar to another, it does not need to be intended to deceive or to cause confusion. It is the probable effect on the ordinary kind of customer that one has to prove.

Why should a trademark not be deceptively similar

The trademark Act is consumer friendly as it takes into account the interests of the public and also focuses on protecting the interests of the registered trademark owner. In other words, one of the substantial purposes of the Trademark Act is to protect the general public from confusion and deception caused by making a deceptively similar trademark, because the inherent nature of the trademark is to work as an identifier, that is, to tell the public through their mark that, among the plethora of products, this particular product belonged to the trademark owner. But if the practise of making a deceptively similar trade mark is not stopped, the trademark will lose its nature and another purpose is to safeguard the trademark owner’s trade and his goodwill from being stolen away that is attached to the trademark. 

In the case of Cadbury India Limited and Ors. vs. Neeraj Food Products (2007), the Delhi High Court held that the true meaning and intention of the trademark is to shield the consumer and trader from the wrong and deceitful activity of adopting the identical or making a deceptively similar trade mark with the intention of cashing in the reputation and goodwill of the trade mark familiar to the public.

Consequences of provisions of the Trademark Act

  • As per Section 29(2), a registered mark shall be deemed infringed if any person/entity without the consent of the registered trademark owner, uses, in the course of trade, a mark identical or similar to or goods and services under such mark that are identical or similar to those covered by the registered trademark, and the result is that it is likely to confuse the minds of the public or people who wrongly associate such mark or goods or services with the owner of the registered trademark.
  • Section 28(1) gives the registered owner of the trademark an exclusive right to use the trademark concerning goods and services and  he can obtain remedy in respect of infringement of such exclusive right.
  • According to Section 102(1)(a) and (b), a person shall be deemed to falsify a trademark if he makes any addition, alteration or otherwise to any genuine trademark or if he makes a trademark that is identical or deceptively similar without the consent of the trademark owner, and if such person applies such a trade mark (identical or deceptively similar) to goods or services or any package containing goods, he shall be deemed to be liable for falsely applying any trade mark to goods or services.
  • According to Section 103, any person who falsifies any trademark or falsely applies to goods or services any trademark or any other act that confuses the eyes of the public shall be punished with imprisonment for a term not less than 6 months but which may extend to 3 years and with fine not less than Rs. 50,000 but which may extend to Rs. 2,00,000. 

Remedies

Section 134 of the Trademark Act authorises a person, in case of infringement of the registered mark or if there is any dispute regarding a right in the registered mark or dispute in respect of an unregistered mark that is passing off, to institute a suit in a court not below the district court.

Section 135 of the Trademark Act talks about the reliefs or remedies a court can grant in a suit for infringement and in an action for passing off, like i) an injunction, ii) damages or an account for profit (profits gained by selling/providing goods or services using a deceptively similar mark), iii) an order for the destruction of goods, and iv) the court can also order the defendant to cover the cost of the proceeding.

Exception to having a deceptively similar mark

Section 11 of the Trademark Act gives us the relative grounds for a refusal to register a trademark that is identical or similar to the registered trademark or whose goods or services are covered by the earlier registered trademark. Sometimes provisions are provided in their expressed form and sometimes, when there is a need to combat a legal situation, we have to look closely into the other provisions of a statute to find the solution One such example is section 11, even though this provision provides the grounds on which the registration can be refused,  but if we analyse section 11(1), “its identity or similarity with an earlier trade mark and identity or similarity of goods or services covered by the trade mark”,  we find that it contains 2 parts that are connected with the conjunction ‘and’, so both the conditions needed to be fulfilled. The marks, one already registered and the other having been applied, need to be similar or identical and both marks should cover the same goods or services. But if one condition is not fulfilled, let’s say both marks cover different goods or different services or one mark covers goods or the other covers services, then it can be registered as per the conditions, if any, imposed by the registrar.

We can understand the above exception with the help of an example, there is an earlier registered trademark ‘PUMA’ for sports goods, and now assume there is another mark ‘TUMA’ that also deals in sports goods; then it will be termed a ‘deceptively similar’ mark. But if ‘TUMA’ deals with any other class of goods, let’s say tuna fish restaurant services, then it may not be considered a deceptively similar mark to ‘PUMA’.

How to avoid a trademark from being deceptively similar

While creating a trademark, a person should keep in mind the grounds for refusal of registration mentioned in Section 9 and Section 11 of the Trade Mark Act and avoid all those things that can create hurdles in the registration of the mark.

Business owners, individuals or entities should do market research about what kinds of trademarks are considered well known and why, how they are perceived by the general public, whether people can differentiate a particular mark from the other marks available in the market, what they think about confusing or deceptively similar marks, how strong their ability to recollect the previously available trademarks is, and whether their intelligence or educational qualifications play any role in recognising and differentiating a mark from other marks.

While designing a trade mark, a person should be aware of their rivals’ or competitors’ marks and the kind or class of goods or services covered by their marks. They should do a thorough examination of all the registered or unregistered trademarks and identify any phonetic, visual or conceptual similarity between their marks and the earlier registered or well-known trademarks.

By considering these above-mentioned activities or doing preliminary research, one can save time, energy and resources by escaping the grounds for refusal of registration, infringement suits or actions for passing off.

Conclusion

The object of the Trademark Act is to protect trademark owners and consumers from deception and confusion, but deceptively similar marks in the market defeat these purposes, so people should refrain from doing such activities as they have dire consequences like confusion among the general public, infringement of trademarks, economic or financial loss to traders, undue advantage to the infringers, and risk to market integrity. To put an end to this practise, one should research the market thoroughly, study the well-known trademarks, understand how the general public distinguishes one mark from the other, analyse the marks of your rivals and last but not least, stay true to your corporate ethics.  

While reading this article, you can realise that even though the Trademark Act and the Trademark Rules are binding, they only mention the duty of the registrar to examine the marks, but they are silent about the types of searches a registrar needs to carry out, except the Trademark Manual, which mentions the different types of searches a registrar can undertake, yet it is non-binding, which means the registrar is not obliged to follow them. The result is that the registry sometimes only considers work mark search or visual search but not phonetic search, which leads to the registration of marks that are deceptively similar to the earlier registered/ unregistered trademarks and later infringement suits, which only burdens the judiciary. So, the legislature should make amendments to the respective provisions, as there are abundant precedents like the Cadila Healthcare Ltd. case, which emphasises the phonetic similarity while comparing two similar marks. As Primo Angeli said “A great trademark is appropriate, dynamic, distinctive, memorable and unique”, so one should endeavour for better protection of the trademark and to prevent fraudulent use of the mark.

References

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