SCOPE AND AMBIT OF DECEPTIVE SIMILARITY UNDER TRADEMARK LAW
Author: Kavya Gupta, I year of B.A.,LL.B.(Hons.) from National Law University, Jodhpur
Trademarks are critical in establishing a company's brand identity and goodwill. It not only aids in the creation of brand value, but also aids in the generation of revenue. Because trademarks are so valuable, they are vulnerable to infringement and misuse. Making “deceptively similar” trademarks is one of the ways of infringement.
The concept of deceptive similarity has been elaborately discussed in the Trade Marks Act, 1999 (hereinafter ‘Act’)under Section 2(h) which states that, “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.” Section 11(1)(a) of the Act, which states the relative grounds for refusal of registration of a trademark, states that a trademark cannot be registered if it is similar or identical to an already registered trademark and is capable of causing confusion in the minds of the public, including likelihood of confusion with an earlier trademark. Section 29(1) of the Act recognizes “deceptively similar” as a ground for a registered trademark to be infringed. There have been many judicial decisions regarding this concept that may help us to analyze the scope and ambit of ‘deceptive similarity’ and how Indian Courts have interpreted the same.
In this case, Dyechem started selling its chips and wafers with the name ‘PIKNIK’. Cadbury used the word ‘PICNIC’ for selling its chocolate. Dyechem filed a complaint in district court, claiming that the names would cause confusion among buyers. The court agreed, and Cadbury was barred from using its trademark name until the dispute was resolved. Cadbury subsequently took the case to the Gujarat High Court, which overturned the temporary order. It was also observed by the Court that, “The plaintiff's label had to be looked at as a whole. Plaintiff was marketing potato chips and potato wafers in a polythene pouch and not chocolates, though plaintiff had registration under class 30 for chocolates. Defendant was marketing under trade label 'Cadbury's PICNIC' in a polythene pouch and hence both marks were different. Defendant was not using the plaintiff's label with the caricature of a boy.”
Dyechem then appealed to the Supreme Court, where it was unsuccessful. As a result, both items may be marketed in the market until the ruling is issued. The Supreme Court took into consideration the fact that Cadbury had become synonymous with chocolates and has become a household name in India. Therefore, there was no scope of deceptive similarity according to the Court.
In this case, the Supreme Court established some standards for deciding cases involving deceptive similarity of trademarks. The parties to the case in this instance were the Cadila group's successors. The disagreement arose over the defendant's sale of a drug under the name "Falcitab," which was confusingly similar to the name of medicine made by the plaintiff under the name "Falcigo." Because both medications were used to treat the same ailment, the plaintiff claimed that the defendant's brand name was causing consumer confusion. The plaintiff requested an injunction. The defendant claimed that the prefix "Falci" was derived from the name of the ailment, Falcipharam malaria, as a defense.
Because of the country's diverse population and the medical profession's uneven infrastructure due to language, urban-rural divisions, and other factors, as well as the risk of medical malpractice, the court stated that trademark confusion in medicines and drugs must be severely avoided. As a result, the Court determined that because medical products require extra attention and care, being phonetically similar shall be a ground for being deceptively similar.
Relying on this judgement, the Delhi High Court passed another judgment of similar kind in 2020, Sun Pharma Laboratories Limited v. Bdr Pharmaceuticals International Pvt Ltd &Anr. The plaintiff used the mark ‘labebet’ since 2009 for the cure of hypertension while the defendant used the mark ‘lubilet’ for an antifungal cream. The Court held that the marks ‘lubilet’ and ‘labebet’ are visually, structurally and phonetically similar, and hence deceptively similar even though they were used on products designed to cure totally different ailments.
In the above-mentioned case, the plaintiff relied on the doctrine of imperfect recollection. This doctrine was discussed for the first time in the House of Lords in the Rysta case. It observed that,
“The answer to the question of whether the sound of one word resembles too nearly the sound of another...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.”
Even the tiniest potential of confusion or deception related with the use of deceptively similar marks on medicinal products has been taken into account by the courts. They've always used the approach of judging deceptive similarity from the perspective of a consumer with average intelligence and imperfect recollection. In pharmaceutical trademark issues, the reliance on human memory has been given little weight, as even a smidgeon of doubt on the side of a consumer could result in serious consequences.
Through the course of time, the Courts have narrowed out some key points which have to be taken into consideration while deciding the case of deceptive similarity in pharmaceuticals:
1. The consumer base has to be considered.
2. The test to check the likelihood of confusion has to be applied strictly in such cases so as to avoid severe health consequences.
3. The marks in contention must be compared as a whole and have to be judged by their appearance and sound too.
In the case of medicinal products, even when the drugs are sold in entirely different forms (as in this case, injectables and lotion), the trade channel stays common. Therefore, extra care is taken by Courts in such cases to avoid even the slightest chances of confusion.
In this case, the plaintiffs; proprietors and owners of the website bookmyshow.com, were refused an interim injunction against Defendant's use of the domain bookmysports.com by the Delhi High Court. The Plaintiffs' application for an interim injunction was dismissed because the prefix 'BOOKMY' of the Plaintiff's trademark BOOKMYSHOW was descriptive in nature rather than an arbitrary coupling of words, and the Plaintiffs' failure to prove that 'BOOKMY' has acquired distinctiveness or secondary meaning. Hon’ble Justice Mukta Gupta discussed four aspects in detail in this case, which are to be considered for determining ‘likelihood of confusion’ amongst the public:
1. Distinctiveness (‘BOOKMY’ is not an arbitrary coupling of two words but rather a description of the business itself)
2. Descriptive mark that has acquired secondary reputation or gained reputation (merely acquiring nation-wide and global recognition and reputation cannot amount to acquiring secondary meaning)
3. Invented word (‘BOOKMY’ was considered as a generic term rather than an invented term mainly because it was used in the same line of business as the name itself suggests, hence being descriptive)
4. The ‘whole mark’ as mentioned in Section 17(1) of the Act (taking the mark as a whole into consideration, the visual and phonetic viewing of ‘BOOKMYSHOW’ and ‘BOOKMYSPORTS’ are completely different in terms of pronunciation, features and even the combination of colours)
In this case, the Supreme Court that even though the trade names, NANDINI and NANDHINI are phonetically similar and that both the companies are dealing with goods of the same class, the goods and services of one company are completely different from the other. Also, the trademark logo adopted by both the parties and the writing style can be differentiated easily. The apex Court also took into consideration the fact that the appellant has added the word ‘DELUXE’ and hence the trade name was ‘NANDINI DELUXE’. Whereas, the defendant used the word ‘NANDINI’ without any prefix or suffix and hence according to the reasoning of the Court, this cannot be deceptively similar or cause any confusion in the minds of consumers.
The arguments put forth from the side of applicants were that the artistic work and design in both these marks were different. They submitted that ‘Nandhini’ is the name of a goddess, and the opponents cannot be given a sole monopoly over the same. They also highlighted that his earlier name was ‘Nandhini’ and they added the word ‘Deluxe’ to the same. Also, they claimed that they were dealing with meat products, and the opponents had their business in milk products and they cannot be given the sole right to use the mark in any product concerning the whole class.
The opponents claimed that their product had a well-known reputation in the whole state and the applicant was trying to gain unduly from the same. They contested that both of their businesses were related to food products falling in the same class and it was capable of confusing an average customer.
The Court relied on the verdict of Vishnudas v. The Vazir sultan Tobacco Ltd. (1996) and stated that the mark ‘NANDHINI’ used by the appellant for different products shall not be detrimental to the status or distinctiveness of the Karnataka Co-operative Milk Producer Federation Ltd.
Plaintiff alleged that the defendant's trademark "Fauji" is deceptively similar to the plaintiff's trademark "Officer's Choice" in this case. The claim was based on a similarity of concept in the creation of the trademarks, as "Fauji" is a Hindi translation of a military officer. Furthermore, both sides are in the alcoholic beverage business and the packaging of both bottles is also identical.
The Court observed that, “Two marks are phonetically different. The meaning of the two words is also different. The word “Officer” refers to “a person in power” whereas the word “Fauji” means a soldier who is not a military officer. The plaintiff's submission that “Fauji” means a Military Officer is not correct and is rejected.”
It also said that, “there is no similarity between the marks and labels of both the parties and there is no likelihood of deception or confusion of a consumer getting confused to buy the defendants’ product thinking to be that of the plaintiff’s.”
Despite the fact that trade dress plays an important role in evaluating trademark infringement cases, the court found no deceptive similarity between the trademarks "Officer's Choice" and "Fauji" in this case, and thus dismissed the plaintiff's claim of trademark infringement.
However, in a similar case of Gillette Company LLC v. Tigaksha Metallics Private Ltd. &Anr. (2018), the Delhi High Court recognized scientific advances in the study of psychology as a tool to determine ‘likelihood of confusion’. Here the trademarks in contention were ‘Wilkinson Sword’ by Gillette and ‘ZorrikTalvar’ by Tigaksha Metallics. The Court held that even though the contested trademarks are structurally and phonetically totally different, translation of sword to talvar in Hindi could easily cause confusion amongst consumers, and hence, the ruling was in favour of the Gillette Company.
If we analyse these cases, we see that there are no rigid guidelines or rules followed by the Indian Courts in determining whether any two trademarks are deceptively similar or not and capable of causing confusion in the minds of ordinary public. The Courts have has taken various factors into consideration on case-to-case basis. Deceptive similarity is a very broad term that encompasses phonetic similarity, visual similarity, and conceptual similarity, but these aren't the only factors to consider when deciding trademark infringement and passing off cases. For a trademark to be deceptively similar, it is necessary for it to copy the ‘essential features’ of another trademark. Apart from phonetic and visual similarity, one of the major factors noted by the Courts in determining deceptiveness is the test of likelihood and confusion. It includes factors like the strength of the trademark owner’s mark, degree of similarity between the two marks, evidence of actual consumer confusion like dip in sales and marketing channels used. It was observed in SMDyechem v. Cadbury that, “Trademark law is about the balance between protectionism and allowing competition”.
The Courts have kept this in mind while delivering judgements and the recent trend has shown that the judiciary has maintained good balance between protectionism and competition and has ensured that healthy competition prevails in the country.
 SM Dyechem Ltd v. Cadbury (India) Ltd.  SCC OnLine SC 938  Cadila Health care Ltd. v. Cadila Pharmaceuticals  (2) PTC 541 SC  Sun Pharma Laboratories Limited v. Bdr Pharmaceuticals International Pvt Ltd & Anr  SCC OnLine Del 623   60 RPC 87  Bigtree Entertainment Pvt. Ltd v. Brain Seeds Sportainment Pvt. Ltd.  (73) PTC 115 (Del)  Nandini Deluxe v. Karnataka Corp Milk Producers Fed. Ltd,  9 SCC 183  Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd,  SCALE (5) 267  Allied Blenders & Distillers Pvt Ltd v. Govind Yadav & Anr. CS (COMM) 819/2018  Gillette Company LLC v. Tigaksha Metallics Private Ltd. & Anr  SCC OnLine Del 9749  supra