Deceptive Similarity of a Trademark: An Analysis through Judicial Precedents
With the advancement of globalization of trade, brand names, trade names, marks, etc., have gained enormous value, requiring uniform minimum protection standards and effective procedures for implementation. Trade Marks Act, 1940 is the principal and the oldest statute on trademarks in India. Before that, the protection of trademarks was governed by common law. After going through a lot of amendments, the Trademark Act, 1999 is the current governing law relating to trademarks in India. The latest Act was made in accordance with the provisions of TRIPS. Trademark law protects the rights of the owners by preventing unauthorized use of the mark, which shall cause ambiguity in the minds of the public.
DEFINITION OF TRADEMARK
Internationally, “trademark” is a graphically representable symbol and is capable of distinguishing a person's goods or services from others, and it may include the shape of the goods, their packaging and the combination of colours. eg. Ferrero Rochers has a unique brown and gold blend that sets this chocolate apart from the rest.
Similar recognition was given by the Indian Law. Sec 2 (zb), of The Trade Mark Act, 1999 defines trademark “trade mark is very wide and means, inter alia, a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” In Rich Products Corp. v. Indo Nippon Food Limited[i] it was held that the graphic representation of a brand in its purview also includes the shape of the goods, their packaging, the combination of colours, i.e it brings “trade dress” into its scope.
DENOTATION OF DECEPTIVE SIMILARITY UNDER INDIAN TRADEMARK LAW
The text of sec 2(h) of Trademarks Act, 1999 defines ‘Deceptive trademarks’ 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.” This means that the trademarks which are almost similar to the already existing trademark and because of which there is confusion or ambiguity to the public then that trademark is known as deceptive trademark. If an ordinary prudent man thinks that there is some connection between this mark and the well-known trade mark which is duly registered then it might cause undue advantage to the owner of the trademark in question. Therefore it is a deceptive trademark. Deceptive trademark is one of the reasons for not registering a trademark. It is one of the ways of trademark infringement.
TESTS TO DETERMINE DECEPTIVE SIMILARITY
Intention is not a significant factor in determining whether the brand in question is deceptive or confusing. It is irrelevant whether the person's intention to deceive the public is there or not. An intention to deceive need not be proven. In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Limited.,[ii] the court held that it is not required by the plaintiff in trademark cases to establish or prove fraudulent intention on the part of defendant. The plaintiff has to prove the reputation of his mark and once that has been established, there is no need for plaintiff to prove fraudulent intention or misrepresentation on the part of defendants.
The Trademark Act, 1999 did not lay down any specific requirements for a mark to be termed as ‘Deceptive’. However there are many judicial pronouncements where the court has extensively laid down the required criteria for a deceptive trademark. The goal of protecting a trademark that has acquired a certain level of distinctive character is to protect the well-being or the goodwill of retailers, and also at the same time ensuring that the customers are given the services they want. [iii]
Taking into account the similarity what is required is close similarity and not the close resemblance.[iv] In Montblanc Simplo-GmbH v. New Delhi Delhi Stationery Mart[v], the plaintiff averred that the defendant is using the same type of pen for which the plaintiff has already gained goodwill. It is alleged, the defendant in relation to its product styled "spacewalker" are using an identical three ring device, a deceptively similar brand name to that of its "starwalker" and a confusingly similar shape, configuration and get-up. The Delhi High Court held that the court had to decide whether the mark of the defendants would cause confusion in the minds of the public as both marks were used for the same goods. It is not essential to prove actual confusion or loss, it is satisfactory if confusion arises.
In Delhi Lakme LTD v. Subhash[vi], plaintiff sells cosmetic products and owns a registered trademark-LAKME. Defendant who is in the same business is using the trademark - LIKEME for his cosmetic products. Held, that there is a prominent similarity between the two terms. The court held that there is likeliness to cause fraud and confusion in the buyer's mind. The injection was made permanent.
In M/S Allied Blenders & Distillers Pvt Ltd v. Govind Yadav & Anr[vii] plaintiff claims that trademark of Defendant i.e "Fauji" is deceptive with Plaintiff’s mark, i.e. "Officer's Choice." This is because of the similarity of the idea of making trademarks, because the word "fauji" is a Hindi word for military officer. In addition, both parties are in the alcoholic beverage business. Also, both packaging is similar. Trade dress plays an important role in determining trademark infringement cases, in this case the court believes that there is no deceptive similarity between the products and there the suit for injunction is dismissed.
Whether or not a trademark used by the owner deceives the public depends on the variety of factors and no concrete answer can be given to determine whether the trademark in question is causing confusion as to the source or origin of the goods. This depends on the facts and circumstances of the individual case. In some cases, the courts considered the common elements of the two marks,[viii] while the courts sometimes considered the unusual elements. Trademarks can be considered deceptive if they have misled the public about the quality of the goods to which they are linked.
In KaviRaj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical[ix] the court held that it is essential to consider the features of the plaintiff’s trademark and it should be seen whether these features are also found in defendant’s trademark. The court held that for determining deceptive similarity, the above mentioned criteria must be fulfilled. The best way to solve the problem is to study design independently, to look at a registered trademark and see if the design creates an impression in the mind of a general citizen that they are buying an article that has a registered trademark.
In SM Dyechem Limited v. Cadbury (India) Limited,[x] the plaintiff had a trademark “Piknik” for his chips and wafers business. Defendant started his chocolates business under the name "Picnic." A lawsuit has been filed alleging trademark infringement. The court held that the marks in this case are not deceptive because they differ in appearance and composition of words.
In Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited[xi], There was a dispute over the sale of the defendant's drug under the name "Falcitab," which resembles the medicine stock produced by the plaintiff under the name "Falcigo." It is argued that the two drugs used to cure the same disease and, therefore, the defendant's brand name creates confusion among consumers. The injection was sought by the plaintiff. Given the diverse population and language of the country, the urban-rural divide, etc., due to the infrastructure of the medical profession and the likelihood of medical negligence, the Court believes that it is important to avoid confusion of marks. Thereby, more care and caution must be exercised in order to be medical products, and the court is of the view that the names of the brand are, therefore, phonetically similar.
Summing up all the cases given above it can be concluded that the main tests to determine the deceptive similarity are:
1. The extent of likelihood of the two marks and also the possibility of confusion between the two marks.
2. The presence of phonetic similarity of the marks in question.
3. The presence of visual similarity between the marks.
4. Goodwill of the original trademark.
Sec 29 of The Trademarks Act, 1999 lays down remedies in cases of trademark infringement. The infringer who causes confusion to the public with his deceptive trademark can be sued for trademark infringement. In Indo-Pharma Pharmaceuticals Works ltd, v. Citadel Fine Pharmaceuticals ltd[xii], it was held that there exists a trademark infringement if another person who is not a registered owner or registered user uses the same trademark or a deceptively similar trademark in relation to the same goods and services for which the trademark is registered.
In cases of trademark infringement, an injunction against the owner of a misleading trademark is usually issued. To protect a trademark from infringement we have:
1. Civil Remedies
2. Administrative Remedies
3. Criminal Remedies
These remedies are available for a registered trademark. If a trademark is not registered then a passing-off action can be taken against the infringer. Also the deceptive trademark can be refused from registration under sec 11 of Trademark Act. Owner or user of the trademark, legal successor or trademark applicant can file a suit for trademark infringement.
As discussed in the cases, it is not always important for intention to be present. In trademark cases there is no necessity of intention to be present for refusing a trademark from registration. Also, it can be observed that neither the legislation nor the courts have neglected the concept of deceptive similarity of trademarks because if neglected then the whole purpose of the Trademark Act, 1999 will be lost. Even if not clearly laid down in the act, the courts have taken enough care to protect the trademark owner from these kinds of issues.
[i] Rich Products Corp. v. Indo Nippon Food Limited; CS (OS) 246/2004.
[ii] Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Limited, 7 AIR 1996 Bom 149. [iii] Evergreen Sweet House v. Ever Green and Others, (2008) 38 PTC 325 (Del). [iv] B.L. WADEHRA, LAW RELATING TO INTELLECTUAL PROPERTY 167 (4th ed., Universal Law Publishing Co. 2007).
[v] Montblanc Simplo-GmbH v. New Delhi Delhi Stationery Mart, (2008) 38 PTC 59 (Del). [vi] Delhi Lakme LTD v. Subhash, 1996 PTC (16) 567. [vii] M / S Allied Blenders & Distillers Pvt Ltd v. Govind Yadav & Anr, (2001) 5 SCC 73.
[viii] Macleods Pharmaceuticals v. Intas Pharmaceuticals Ltd., decided on 29 May, 2013. [ix] KaviRaj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical, 1965 AIR 980. [x] SM Dyechem Limited v. Cadbury (India) Limited, (2000) 5 SCC 573. [xi] Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, (2001) 5 S.C.C. 73.
[xii] Indo-Pharma Pharmaceuticals Works ltd, v. Citadel Fine Pharmaceuticals ltd, AIR 1998 Del. 347.
ABOUT THE AUTHOR
This blog has been authored by Sandhya Parimala who is a 4th Year B.A., LL.B. (Hons.) student at Damodaram Sanjivayya National Law University, Visakhapatnam.
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