Deceptive similarity can in simple terms be described as likeness between two trademarks which can probably mislead the general public of average intellect to believe that the present mark is in one way or the other connected to another registered or a well-known trademark.
Deceptively similar trademark seem visually and phonetically very close to an already registered trademark and due to such strong resemblance; there are great chances of customers being deceived and as a circumstance also effects in economic loss and damage to the reputation of a honest trademark holder owner. Deceptive similarity is one of the aspects for trademark infringement for which the Registrar of Trade Marks can reject the application of Trademark registration of an applicant on the view of deceptive similarity
trademark infringement search are the ways of attaining product differentiation and the term ‘product differentiation’ describes the image of a product which a buyer has in his mind with respect to specific goods or services which is deep-rooted in a particular manner or style.
Certain marks may not be similar to each other in concept but may be similar in sound or syllables or letters. The noticeable aspect is to see the message of the mark.
The Supreme Court and High Court in their various judgments have given several conditions which are required to be taken into account for recognizing the deceptively similar marks.
- Principle of Phonetic and visual Similarity
- Rule of Entirety
- Test of Likelihood and confusion
INTERPRETATION OF JUDICIARY ON DECEPTIVE SIMILARITY
- Cadila Health Care Ltd .v. Cadila Pharmaceutical Ltd
Supreme Court provided the grounds for testing “Deceptive Similarity”. This is a landmark case of pharmaceutical sector in which Supreme Court has prescribed certain guidelines to be followed for adjudication of matters related to deceptive similarity between two pharmaceutical products. 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
The parties in this case were the successors of the Cadila group. The defendant was selling a medicine named “Falcitab”, which was very similar to the name of the medicine called “Falcigo” manufactured by the plaintiff. This was the reason of dispute between both the parties. Both the medicines were used to treat the same disease. Hence, the plaintiff demanded injunction on the ground that the defendant’s medicine name “Falcitab” is creating confusion in the minds of the consumers. Defendant, on this, in his defense, stated that the prefix “Falci” has been taken from the name of the disease i.e. Falcipharam malaria.
Court observed that taking into consideration the vast population of India, probabilities of medical negligence, medical professions changing infrastructure because of language, etc, it is very necessary that confusion of Trade Marks with regards to medicines, pharmaceuticals and drugs should be strictly prohibited. The court further said that extra caution and care should be exercised with regards to medical products and the brands names that are phonetically similar shall be considered as deceptively similar.
- Starbucks Corporation .v. Sardarbuksh Coffee and Co. & Ors.
The Delhi High Court in its interim order stated that since Starbucks being a very famous brand is recognized globally, it is unfair if a Trademark will be allowed to a brand being deceptively similar to it. Since Sardarbaksh opened 5 outlets in Delhi already, it has to change its name to Sardarji- buksh so as to make it distinctive from the brand Starbucks.
- M/S Lakme Ltd .v. M/S Subhash Trading
In this case, the plaintiff was the seller of cosmetic products selling his cosmetics under the registered Trademark name – “Lakme”. The defendant was also selling same class of product under the name “LikeMe”. Thus, the plaintiff filed the case of Trademark infringement. The Delhi High Court in this matter held that there is striking resemblance between the two brand names “Lakme” and “LikeMe”. They are phonetically similar and there are high chances of it causing deception and creating confusion in the minds of the consumers regarding plaintiff’s products. Injunction was thus granted.
Trademark is a source of advertisement because it functions as an indicator.
- N.R. Dongre v. Whirlpool Corporation
It was held that advertisement of a trademark without existence of goods in the market is also to be considered as use of the trademark. It is not necessary however that the association of the plaintiff’s marks with his goods should be known all over the country or to every person in the area where it is known best. The knowledge and awareness of the trademark in respect of goods is not limited to the population of a country wherein the goods are made available but the same knowledge also reaches in the other countries where the goods may or may not have reached.
Deceptive Similarity as a ground for refusal of trademark registration is the most important feature of the Act, along with other supplementary provisions covered under the purview of Deceptive Similarity. As already discussed, proof of intention to show Deceptive Similarity is irrelevant.
To establish infringement of a registered trademark, it is necessary to establish that the infringing mark is identical or deceptively similar to the registered mark, and no additional proof is required. In a passing-off action, proving that the marks are identical or deceptively similar is not enough. The mark’s use should be likely to deceive or confuse. Furthermore, in a passing-off action, it is necessary to prove that the defendant’s use of the trademark is likely to cause injury or damage to the plaintiff’s goodwill, whereas, in an infringement suit, the defendant’s use of the mark does not need to cause any injury to the plaintiff.
As a result, it can be concluded that a proprietor cannot use another proprietor’s trademark, nor can he adapt/use a mark originating from another person with a well-established reputation and goodwill that causes or is likely to cause confusion or deception in the minds of the public.