Deceptive Similarity in Registered and Unregistered Trade Marks
Trademarks play an important role in increasing the revenue generation of a business and one might think they are safe from infringement. However, trademarks are vulnerable to infringement and misuse most of the time, through “Deceptively similar” trademarks.
“Deceptively similar” trademarks are trademarks created that look alike or are similar to an existing trademark to spread confusion in the minds of consumers. Such marks are likely to deceive the general public and trick them into believing that there is some link between the pre-existing mark. This is a tool used to falsely use the goodwill and brand of other businesses without investing in one’s mark. In my opinion, it is a weapon of the weak.
This concept of deceptive similarity has been discussed in The Trade Marks Act, 1999 (“TM Act”) under Section 2(h) 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.” Although the concept of deceptively similar is a common ground for not granting the registration of a trademark of an applicant or seeking injunctions against alleged infringers, there are no set criteria provided in the statute to determine the ambit and scope of the phrase “deceptively similar”. To ease the vacuum created Courts are to follow judicial precedents and the principles laid down in landmark cases while adjudicating cases arising out of the aforementioned concept.
Some landmark cases are:
Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. (2001) 5 SCC 73, where the Court laid down guidelines for adjudication of matters about the deceptive similarity of trademarks. The dispute arose due to the selling of medicines under the name of “FALCITAB” which was similar to the plaintiff’s mark “FALCIGO”. Both medicines were used for the same disease and would lead to confusion.
The Delhi High Court in the case of Shreya Life Sciences Pvt Ltd v. Magna Biochem Pvt Ltd. 32008 (38) PTC 331, observed that the first step ought to be a comparison of both marks without undue emphasis on factors like similarity and dissimilarity. The possibility of confusion should not be determined by splitting a trademark into its various components and then be compared to the corresponding conflicting part. The part that is under the scanner should be compared in its entirety.
A mark can be deceptively similar in terms of phonetics, their literal translations, their visual representation etc. Any feature that can create confusion amongst the public is open to be used deceptively in a similar manner.
In the case of Mahendra and Mahendra Paper Mills Ltd. V. Mahindra and Mahindra Ltd. 2001, the Hon’ble Supreme Court ruled that the name “Mahendra & Mahendra” infringed the trade name “Mahindra” which had been in use for decades and had acquired a distinct and secondary meaning altogether. Such ruling was based on the phonetic similarity of the words.
In a similar case, the two trademarks “Peacock” and “Mayur” were held to be deceptively similar in terms of their meaning as they both represented a bird and the issue was the literal translation of the marks. ( M/s Bhatia Plastics v. M/s Peacock Industries Ltd.)
In the case of Dyechem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573, the plaintiff had started a business under the trademark “PIKNIK”. Defendant started a business of chocolates as opposed to chips and wafers, under the name of “PICNIC”. Subsequently, a suit was filed alleging infringement of the trademark. The Court, however, held that the marks were not deceptively similar as they differed in the composition of words and appearance as well.
It is assumed that only a registered trademark can be infringed through the creation of a trademark that is deceptively similar to it. However, recently the Delhi High Court in Krown Biscuit Pvt. Ltd. v. Richfield Industries Pvt. Ltd. (Comm) 357/2021 & I.A. 9735-9737/2021 passed an interesting order that protected a trademark, pending registration, from being infringed and has an advantage over deceptiveness.
In this case, Plaintiff is involved in the manufacture of cookies and biscuits and has been in the business of confectionery since the 1980s. The term "BLACK MAGIC" was coined and adopted by Plaintiff on 01/09/2019 for their chocolate and vanilla crème biscuits. The manufacture and sale of the biscuit category commenced in September 2019. They had also applied for registration of the said mark under CLASS 30 of the TM Act, which is still pending.
Furthermore, Plaintiff had applied for Copyright registration as an ‘artistic’ work under Section 2(c) of the Copyright Act, which was subsequently granted.
The present application was filed under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 seeking an ex parte injunction against the Defendants from manufacturing, advertising, selling, offering for sale etc., or dealing in biscuits or its allied/ cognate products under the mark of “WHITE MAGIK”. Plaintiff’s also sought to prohibit the defendants from using the label, packaging, trade dress, get-up, or any such features that are deceptively similar to the Plaintiff’s distinctive trademark “BLACK MAGIC”, which may lead to confusion in the minds of the consumers.
In June 2021, the plaintiff discovered that the defendant had been using an illusory and confusingly similar label, packaging and trade dress practice which was an act of infringement, unfair competition and passing off. It is important to highlight the fact that Defendant had applied a trademark registration for its label and device only on 15/05/2021, under Class 30 i.e., the biscuits and confectionery category.
The Hon’ble Court passed an Order in favour of Plaintiff, after careful perusal of both the marks i.e., “BLACK MAGIC” and “WHITE MAGIK”.
In Para 5 of the Order, the Court categorically held that “it is manifest that the trade dress/ label used by the defendant is prima facie deceptively and confusingly similar to that of the plaintiffs”. The Court held that the defendant’s trade dress/label WHITE MAGIK for its cream biscuits was deceptively similar to the plaintiff’s trademark BLACK MAGIC for its biscuits. The Court passed an interim order restraining the defendants from using the impugned trade dress/label or any other trade dress/label which is deceptively and confusingly similar to the plaintiff's trade dress/label.
It is can be concluded from the above cases that the doctrine of deceptive similar does not have a fixed ambit. The cases involving this doctrine must be dealt with in consonance with the facts at hand the circumstances surrounding the cases. Two cases might appear similar due to the facts, the way an infringement took place or the marks that are infringed is similar to the case in hand, but circumstances and the situation is the deciding factor. It is pertinent to note that even though a mark has not yet been registered but has been in use for a considerable amount of time, to acquire its own identity and establish a distinct connection with the linked product in the minds of consumers, such mark is safe from infringement due to prior use and an additional advantage over deceptiveness. Courts are pushed to go beyond the basic meaning of a concept, the law, a provision, a mark etc., to deliver justice and protect the rights and interests of consumers as well as companies to ensure a fair and level playing field.
Sonal Sodhani, “Deceptive Similarity and Judicial View” (Mondaq.com February 27, 2019) <https://www.mondaq.com/india/trademark/784380/deceptive-similarity-and-judicial-view>
Intepat Interns, “Deceptively Similar Trademarks: Examples & Case Study | Intepat IP” (Intepat IP August 7, 2020) <https://www.intepat.com/blog/trademark/deceptively-similar-trademarks-examples-case-study/>
Lawsisto, “Concept of ‘Deceptive Similarity’ under Trademarks Law | Lawsisto Legal News” (Lawsisto.com 2019) <https://lawsisto.com/legalnewsread/Mjk5Mg==/Concept-Of-Deceptive-Similarity-Under-Trademarks-Law>