A Trademark is a visual symbol, a distinctive sign or indicator in the form of text or pictorial representation that sets a product apart from other products.
It helps customers identify products which are manufactured or services that are provied by a certain person or business.
The main function of a Trademark is to exclusively identify the source of products and services. Trademarks play an important role in building a company’s Brand name and Goodwill.
It protects consumers from the aspects of confusion, deception and fraud.
Trademarks also guarantee the maintenance of the quality of the product or service.
They symbolize the quality of products, which gains the attention of the consumers.
Hence, trademarks need to be protected to ensure that the quality of products is not hampered and also the welfare of the society is not disturbed.
Though it is very essential and of great importance, it is also very vulnerable to being misused or infringed for one’s own personal gain.
This is done by making “Deceptive similar” Trademarks.
What is a “Deceptively similar” Trademark?
Deceptive similar Trademarks are those trademarks which are very similar to an already existing Trademark, so as to deceive or cause confusion among the customers.
Section 2(h) of The Trade Marks Act, 1999 defines the concept of deceptive similarity Trademark 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.
An important factor while considering a mark to be “deceptive” is if the public with an average intelligence gets confused regarding the source of the good or service.
The term of deceptive similarity has been explained with different terms in different section, they all mean the same.
The concept has also evolved due to the Judicial interpretation and discussions.
The concept of deceptive similarity is a ground for Infringement of Trademark in India and also for rejection of registering the “deceptively similar” trademark by the Registrar of Trademarks.
Registration of any mark which is similar, identical, an imitation or a mere reproduction of another Trademark is not allowed by Law.
Types of Similarity / The 3 Factors –
There are 3 main factors that are considered while assessing the similarity of marks.
The first factor or component to be considered is the Visual similarity of the marks.
This would include all visual aspects of the mark, like any common syllables, designs, suffixes, prefixes, shapes, length, etc.
The aural similarity of marks is another component that is considered.
Marks are said to be aurally similar when the pronunciation of the marks are identical.
That may be based on pronunciation of the marks, enunciation or number of syllables or even on the length of the marks.
Certain marks may not be visually or aurally similar, rather might be similar with respect to its concept.
In that case, the overall message of the mark is to be considered to judge the similarity of the marks.
There is another type of similarity, which comes under both Visual and Aural similarity. This is the Phonetic and Visual similarity.
This refers to the ear as well as the eye. Something which looks similar visually as well as something that sounds similar as well.
Some examples of such similarity are Wipro And Epro, Gluvita And Glucovita, Lakme And Likeme.
Deceptive Similarity: Ground for refusal of Registration
A new Trademark would not be registered if there exists an identical or similar registered mark and if it may cause confusion to the general public.
A Trademark would not be registered if the already registered trademark is well – known in India and is similar to such a mark.
This is so because new marks may take unfair advantage of the distinctive feature or reputation of the already established trademark, and build its own Goodwill and Brand name at the cost of the established one.
Creators of registered Trademarks are vested with the exclusive legal right to make use of their trademark and also get statutory protection of their mark.
Any similar marks which are created later can be restrained by Courts under the action of “Passing off”. They cannot be registered in the name of different proprietors as well.
Dilution of Trademark
Dilution of Trademark occurs when a famous mark is used by someone else which reduces, tarnishes or blurs the mark or the perspective of the customers regarding the mark.
In basic terms, it means the diminishing value of a famous mark with respect to its uniqueness, effectiveness and distinctiveness.
In this case, Caterpillar Inc. v. Mehtab Ahmed, the court found that with respect to similar marks, there was Dilution of the mark.
The court also observed that such dilution could cause confusion amongst the general public and consumers.
Such dilution supplements the confusion as to source, affiliation or connection. Unauthorized use of the mark on the goods in question which are competing goods itself results in dilution. Potential purchasers are bound to be confused as to source, sponsorship, connection or license.
In the case of ITC Limited v. Philip Morris Products Sa., the court opined that only a global perspective of the mark should be taken into consideration, rather than the common features or elements, if a new mark dilutes and infringes an existing famous mark.
The concept of dilution by tarnishment was given in the case of Tata Sons Limited v. Gina Kilindo.
In this case the court held that if a distinctive feature or element of a mark is used of a famous mark, it would be dilution by tarnishment.
The applicants of this case were not allowed in activities which would tarnish the perspective of the well-established mark.
When a third party uses or replicates a well-established mark and tries to take benefit of the goodwill of such a mark, it is called as Unfair Competition.
Trademarks of well-established marks are protected under the concept of Dilution of Trademarks, in Unfair Competition Prevention laws.
This is so because when a well-known mark is used by a third party, the goodwill of the mark is also being taken benefit of, along with the mark.
Judicial interpretation of the concept Deceptive Similarity
The Trademarks Act, 1999 does not explain deceptive Similarity in detail.
It does not lay down specific essentials that would fall under deceptive Similarity.
The scope of such a concept is very wide, hence, Judicial decisions help understand this concept better.
The court’s interpretation of this phrase helps clear vacuum surrounding it. The most important and landmark judgments of the Indian courts are discussed below –
This is a landmark case with regard to deceptive similar Trademarks.
In this case, the Supreme Court lad down certain guidelines related to deceptive Similar Trademarks.
The Apex Court opined that due to the diversified population of the country and infrastructure of medical professional, confusing marks should be strictly prohibited when manufacturing drugs and pharmaceuticals.
It was held that when manufacturing medical products, proper care and precaution should be taken. Hence, similar name brands would also amount to be deceptively similar.
The Delhi High Court in this case held that it sufficient if likelihood of confusion is established, rather than actual confusion or damage.
In this case both marks were used for similar products. Hence, likelihood to cause confusion in the minds of the general public is the main factor to be considered.
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.
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 –
1. Whether there was any special aspect of the common feature which had been copied.
2. Mode in which the parts where put together differently, i.e. whether dissimilarity of the part or parts was enough to make the product dissimilar.
3. 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?
The Apex court court in this case explored into 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 toc 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.
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.
What should businesses do and keep in mind?
Businesses while designing their Trademark should be aware of the marks of their rivals, competitors or any other well-established marks.
They should do a thorough analysis of marks registered and established, so as to reduce chances of Deceptive Similarity.
The perception of the customers and general public should be kept in mind while designing a mark.
This should be done so that they do not get confused with regard to the product or service.
To know if one’s mark has been infringed by another, businesses should keep a track of newly registered marks, specially of competitors and rivals.
Businesses should also analyze the customer behavior, so as to know if there is any confusion among their mark and some other mark.
Wrapping it Up
As a basis for the refusal of registration of trademark, Deceptive similarity is one of the most important one.
The courts in their judgements and interpretations have mentioned that the question of deceptive similarity varies from case to case, depending on its facts.
Indian Judiciary has played a pivotal role in determining what Deceptive similarity is, and what it constitutes of.
Courts have kept an open mind and have maintained a balanced approach when dealing with deceptively similar cases.
This has helped in the growth of the economy and the well-functioning of the Competition market, as well.
Not only this, but also trademark proprietors and their interests have been taken care of by the courts and their interpretations.
Author Bio: Varsha Chamakura is a BA, LLB(H) student at Symbiosis Law School Hyderabad. Connect with her on LinkedIn.