An Analysis of Judicial View on Test of Deceptive Similarity in India

This article was written by Shirsh Raj, a student of School of Law, Christ (Deemed to be University),  Bengaluru.

Abstract

The present paper aims to understand the concept of deceptive similarity in trademarks. The idea of deceptive similarity is defined under Section 2(1)(h) of the Trademarks Act, 1999. Hence, when two marks are placed beside each other they may have many differences yet, the main impression on the mind of the two should be the same.

With this paper the authors have tried to highlight the position of the Courts in understanding the concept of deceptive similarity beyond the literal meaning of the term under law to deliver justice. Courts have developed guidelines and valuable principles to understand the concept and to protect the rights of the trademark holder.

As a conclusion, the authors have tried to present an overview of the judicial approach in easing the understanding of deceptive similarity in such a manner wherein a balance has maintained between the protection of intellectual property rights of the trademark holder as well as the growth and enlargement of the market in the present globalised world.

Keywords : Deceptive Similarity, Trademark, Judicial, Intellectual Property, Analysis

What is Deceptive Similarity?

 In simple words, deceptive similarity can be defined as similarity between the trademarks which can likely deceive the general public of average intellect to believe that the mark in question is in some way or the other linked to the registered or a well-known trademark.

Under various trademark regimes across the world, deceptive similarity has been recognised as one of the grounds on which a plea of trademark infringement as well as passing off can be made and an injunction order can be decreed by the Courts for the same.

The Trademark Act, 1999, 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”[1]. Under the Indian legal order, deceptive similarity has been affirmed at various times as a ground on which the Registrar of Trademarks can refuse to grant registration to an applicant. The term ‘deceptively similar’ or the other as appearing in the different sections would seem to convey or connote the same meaning and effect as per the definition, which expression has received judicial construction in several cases[2].

1. Judicial Interpretation of Deceptive Similarity

It is important to note that the Trademark Act per se doesn’t go in to the details of the concept of deceptive similarity. The Act nowhere lays down any criteria which can be deemed as an essential to constitute the broad and wide ambit of the scope of the phrase deceptive similarity. Therefore in order to clear the vacuum, it becomes quite necessary to look in to the judicial decisions in various case laws concerning intellectual property rights in order to clear the air over the legitimate interpretation of the phrase deceptive similarity. The higher courts in India have dealt with the matter extensively in a number of landmark judgements and have laid down various principles upon which the concept of deceptive similarity now rests. Principle of phonetic and visual similarity, rule of entirety, rule of disintersection, test of likelihood and confusion, goodwill and recognisable reputation are some of the important criterias which have been affirmed by the courts in order to present a clear understanding of the concept of deceptive similarity which in turn helps in adjudication of intellectual property disputes in a better way. The paper further looks in to various important decisions of the Indian courts in order to get a clear understanding of the various judicial interpretations of the concept.

2. Important Judicial Decisions

• Mahendra & Mahendra Paper Mills Ltd v. Mahindra & Mahindra.[3]

In this case an appeal was heard by the Supreme Court against the interim order passed by the Single Judge of the Bombay High Court restraining the defendant from using the name ‘Mahendra & Mahendra’ in his business establishment. This interim order was confirmed by the Division Bench of the High Court and the same was challenged in this appeal filed by the defendant. It would be vital here to throw light on the facts of the case briefly. The plaintiff Mahindra & Mahindra Ltd., a renowned company in the field of manufacturing of motor vehicles and other goods and services contended that the name of the defendant which is a paper mill located in Gujarat is almost the same as that of the plaintiff with the only difference in spelling by substituting ‘e’ for ‘i’ in ‘Mahindra’. The plaintiff contended that the words are phonetically, visually and structurally almost identical and in any circumstance deceptively similar. The plaintiff also alleged that in the prospectus of the defendant the words “Mahendra and Mahendra” are more prominently written than the rest of the names. The plaintiff contended that it was quite clear from the various evidences cited that the defendant wished and intended to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way linked with the plaintiff and thus intends to trade on the reputation of the plaintiff.  On the other hand the defendant contended that the words ‘Mahendra and Mahendra’ was in continuation of their business name which they had been using continuously for various business since 1974. Terming the name ‘Mahendra’ to be a generic name, the paper mills said that in no way were its products similar to the products of Mahindra & Mahindra Ltd.

The Court held that the plaintiff has been using the word ‘Mahindra’ and ‘Mahindra & Mahindra’ in its companies/business concerns for a very long span of time extending over more than half a century. The court further stressed that the name has acquired distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name ‘Mahindra’ with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff’s group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. In this important case law, it can be seen that the Supreme Court laid emphasis on the usage of the trade name for a long span of time which in the course of time has bestowed upon the plaintiffs a goodwill and recognisable reputation.

• Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited[4]

The Supreme Court’s judgement in this case is considered as one of the landmark judgment in the field of intellectual property disputes related to the pharmaceutical sector. In this case the Court laid down certain guidelines which should be followed while adjudicating on the matters concerning deceptive similarity between two trademarks of pharmaceutical products.

In this case, the two companies were the successors to the erstwhile pharmaceutical company Cadila Group after its restructuring under Sections 391 & 394 of the Companies Act.  The appellant filed a suit for injunction against the respondent in the District Court at Vadodara, Gujarat. The suit related to a medicine being sold under the brand name Falcitab by the respondent which, as per the appellant, was a brand name similar to the drug being manufactured by it under its brand name Falcigo and the plaintiff also claimed that the same would be passed off as appellants drug Falcigo for the treatment of the same disease in view of confusing similarity and deception in the names.

On the other hand, the defendants claimed that the word Falci, which is the prefix of the mark, is derived from the name of the disease called as Falcipharum Malaria. In addition to this, the defendants also claimed that the products in question were Schedule L drugs which can be sold only to the hospitals and clinics only and therefore there could not even be a remote chance of confusion and deception as the drug dealers and medical practioners are experts in the field to distinguish between diverse drugs.

The lower court’s judgment favoured the defendant on the ground that the two products in question differed in appearance, preparation formula and price and in addition to these, could be sold only to hospitals and institutions and there was no chance of deception or/of confusion specially as the drug was not meant to be sold to any individual.

The Court observed that although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken. The Court also observed that the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. Henceforth the Court concluded that although the two products were to be sold on prescription only, greater care and precaution has to be taken while dealing with medical products and therefore since both the products are phonetically similar, this would amount to being deceptively similar.

• Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd[5]

This case throws light upon instances wherein the domain name can be treated as a legitimate trademark and usage of the same by other without assignment or permission would amount to infringement under the Trademarks Act. In order to understand the ratio of the case, it is necessary to look in to the facts of the case. The appellant was incorporated in as a body corporate in the year 1995 and registered several domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. in June 1999.The appellants claimed that they had coined the word ‘Sify and have invented it by using elements of its corporate name, i.e. Satyam Infoway. The appellant further claimed a recognisable reputation and goodwill in the trade name ‘Sify’. Later on Siffynet Solutions Pvt. Ltd, the respondent in this case, started carrying on business of internet marketing under the domain names, www.siffynet.net and www.sijfynet.com. They commenced their business in June 2001. Coming to know of the use of the word ‘Siffy’ as part of the respondent’s corporate and domain name, the appellant served a notice on the respondent to cease and desist from either carrying on business in the name of Siffynet Solutions (P) Ltd. or Siffynet Corporation and to transfer the domain names to the appellant. The defendant refused to comply with the notice and hence the matter went to Civil Court and later on defendant’s appeal to the High Court and finally the matter was listed in the Supreme Court on the plaintiff’s appeal. The Supreme Court thereafter made very important observations in this case which did set up a good precedent in this field of domain name as trademark, which till then was unexplored in the intellectual property arena.

The Court stated that a domain name is accessible by all internet users and the need to maintain an exclusive symbol for such access is crucial as we have earlier noted. Therefore a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought for services.

• Dongre v. Whirpool Corporation[6]

In this case the issue before the court was whether a foreign trader who didn’t have any substantial business activity in India at the time of the alleged infringement of trademark in question can file a suit of passing off. As per the facts of the case, the plaintiff Whirpool was a multinational company incorporated in the United States of America. The plaintiff was primarily engaged in the business of manufacture, sale, distribution and servicing of washing machines of all kinds. It was a renowned name in the market of electronics including appliances such as washing machines with over 2000 trademarks in a variety of classes. Whirlpool got its trademark registered in India in 1956 for dish washers, dryers, washing machines and other appliances. However the said registration lapsed in the year 1977 due to non renewal. It is also vital to note here that although Whirlpool was not in the Indian market for a period of time, however it did supply washing machines to the US embassy in India It so happened that in the year 1987, Whirlpool entered into collaboration with TVS India and started a joint venture in the name and style of TVS Whirlpool. During the same time period, Mr. N.R Dongre and his company filed for an application for registration of trademark ‘Whirlpool’. TVS Whirlpool opposed the grant of registration on the ground of passing off. However, its opposition was rejected by the Registrar on the ground that in the absence of Whirlpool’s business in India there existed no reputation of it amongst the public. The matter reached the Delhi High Court where in the Division Bench of the Delhi High Court made the following observation: “The courts do not approve of any attempt by one trader to appropriate the mark of another trader, even though that trader may be a foreign trader and mostly uses the mark in respect of the goods available abroad. As mentioned earlier awareness and knowledge of the mark in the latter country may be because of small trickle of goods in that country or through advertisement. The manner and method by which the knowledge of the mark is acquired by the public is of no consequence and will not matter. Applying this principle and the reasons already stated we have prima facie come to the conclusion that the appellant have acquired reputation and goodwill in respect of the goods bearing the mark Whirpool in this country.”[7] A thorough analysis of this case gives a clear idea that reputation and goodwill can exist beyond the borders even though the holder of the trade mark isn’t directly involved in trade or business in the territory in which adoption of a deceptively similar trade mark is being attempted. This landmark case paved the way for the recognition of ‘Transborder Reputation’ in Indian IPR jurisprudence.

• V. Venugopal v. Ushodaya Enterprises[8]

This case involved the concept of dilution of trademarks. Trademark dilution is that facet of trademark infringement, wherein the owner of a well-known trademark has the power to prevent others from using the mark on the ground that such use is likely to lessen the reputation or uniqueness of the trademark.[9]

In this case the appellant was the sole proprietor of Ashika Incense, incorporated in Bangalore that manufactured incense sticks. The appellant had adopted the mark ‘Ashika’s Eenadu’ for its incense sticks. The Respondent Company is Ushodaya enterprises which publishes a newspaper in Telugu, titled ‘Eenadu’. The respondents alleged that the use of the word “Eenadu” by the Appellant amounted to infringement of their copyright and passing-off in the trade mark. A literal interpretation of the word Eenadu would mean ‘today’ in Telugu language and ‘this land’ in Kannada. The appellant contested that the term Eenadu was a generic term common across the Dravidian lingua and ascribed different meanings in different languages. The appellant further contended that they were dealing in goods which were completely different from the goods in which the respondent was dealing. Therefore no question arose of any form of passing off or trade mark infringement. The court held that the respondent company’s mark `Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company’s products and services are correlated, identified and associated with the word `Eenadu’ in the entire State of Andhra Pradesh. `Eenadu’ means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark `Eenadu’. It is important to note here that the Supreme Court specifically referred to the goodwill and reputation enjoyed by the respondent company in the State of Andhra Pradesh. This clearly indicated that the respondents didn’t enjoy any goodwill outside the state of Andhra Pradesh. However the court didn’t look much into this fact and granted injunction with respect to the whole of territory of India. This case affirms the position of the doctrine of dilution which has been well defined in the Trade Marks Act, 1999 under section 29(4).

• Parle Products (P) Ltd. v. JP & Co. Mysore[10]

This case is considered as one of the landmark cases in which the Supreme Court affirmed the protection granted to trade dresses by virtue of the trademark protection. Since this case surfaced way back in 1972, the governing act over the issue was the Trade & Merchandise Act of 1958. Before going in to the facts of this case, it is necessary that light is thrown upon the concept of trade dresses. Trade dress is the overall commercial image (look and feel) of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design or shape/configuration of a product; product labelling and packaging; and even the décor or environment in which services are provided.[11]

Coming to the facts of the case, this case involved the issue of infringement of trademark which was in the form of wrapper of the products. The appellants in this case, Parle Products Ltd., a company engaged in the manufacture and sale of glucose biscuits in the name of famous brand Parle G, filed a suit for an injunction            restraining the respondents from infringing their registered trademark used on packets of biscuits manufactured by them, The suit was dismissed by the trial court and the High Court on the ground that there were enough dissimilarities between the two marks in various aspects including the colour combination of the design on wrapper, artistic representation of the girl on the wrapper etc. The matter went on appeal to the Supreme Court wherein the Court made the following observations: “Whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word “Glucose Biscuits” in one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. ……. We have therefore no doubt that the defendants’ wrapper is deceptively similar to the plaintiffs’ which was registered. We do not think it necessary, to refer to the decisions referred to at the Bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.”[12]

3. CONCLUSION

The concept of deceptive similarity is one of the vital aspects of the trademark regime. It is a substantial weapon brought in to use by the Courts to decide upon complex issues of trademark infringements which are a common thing to see in today’s world of competitive market. Fairness and just conduct of business needs a better regime to protect the goodwill and market reputation of the players in market. Trademarks being a vital component of the technology driven market where in the identification of the goods are directly related to the features and characteristics; there protection from fraud and misrepresentation is of primary concern of the law. As we have seen in the cases discussed above, the judiciary has evolved a variety of tests and criterias to supplement the concept of deceptive similarity which in its statutory from suffers from vagueness. The judicial decisions reflect the shift in the approach of the courts from bare comparison of two trademarks by keeping them side by side as was laid down in the rule formulated in the Pianoist Case, to the rules of dissection, anti dissection rule and broader criterias for comparison of marks for any instances of even a slight similarity which could deceive the general public of average intellect.

The judicial decisions have led to the evolution of a touchstone upon which trademark regime can function in a just and equitable manner. Through an analysis of the cases discussed above we can observe that the court has taken in to account the problems which may erupt on ground of a rigid approach for determination existence of deceptive similarity. In cases such as Astrazeneca Uk Ltd Vs Orchid Chemicals[13] wherein the Court held that no legal rights can emanate in favour of the plaintiff from infringement of a registered trade mark, as one registered trademark cannot get infringed by another registered trademark. Looking upon the facts of the case, the court stated that the two marks `Meronem’ and `Meromer’ having `Mero’ as common word will not infringe each other on account of their registration in the present facts and circumstances of the case. It is worthy to note here that the approach of the Court has never been rigid in such matters of conflict in the intellectual property arena. The Courts have chosen a very balanced approach while dealing with such question and have decided upon cases based on specific facts of the cases. Closely analysing the judicial decisions, it can be safely assumed that the focus of the Courts have been to maintain a harmony between the rights of the trademark owners and flourishment of the markets as well as economic growth. The judicial wisdom of a balanced approach is also reflected in the very recent cases upon which the courts have adjudged keeping in mind, a balanced approach. In the case of M/S Bright Enterprises Private vs. MJ Bizcraft Llp & Anr a passing off action cannot be maintained solely on the ground of similarity in terms of trade name unless the plaintiffs have enough evidences to prove that such generic terms have acquired a secondary or special meaning so as to denote only to the plaintiffs.

Hence forth it can be safely concluded through an analysis of the judicial pronouncements in the cited as well as other important cases that the approach of the judiciary has been well balanced when it comes to determination of deceptive similarity and the view has been formulated keeping in consideration the interests of the trademark proprietors as well as the smooth functioning of competitive market and economic prosperity.

[1] § 2(1)(h), Trademarks Act, 1999.

[2]KC KAILASHAM ET AL., LAW OF TRADEMARKS & GEOGRAPHICAL CONSTRUCTION, 35 (2^nd ed. Lexis Nexis).

[3] 2001 Supp.(5) S.C.R. 225.

[4] (2001) 5 S.C.C. 73.

[5] A.I.R. 2004 S.C. 3540.

[6] A.I.R. 1995 Delhi 300.

[7] P. NARAYANAN. LAW OF TRADEMARKS & PASSING OFF, 735 (6ed. Eastern Law House).

[8] (2011) 4 S.C.C. 85.

[9] Palak Jain, Trademark Dilution in India, RGNUL Student Research Review (October 14, 2016, 09:15 PM), http://www.rslr.in/rslr-blog/trademark-dilution-in-india.

[10] A.I.R. 1972 S.C. 1359.

[11] Types of Protection: Trade Dress, International Trademark Association (October 14, 2016, 04:00 AM), http://www.inta.org/TrademarkBasics/FactSheets/Pages/Trade-Dress.aspx

[12] Supra note 11.

[13] 2007 (34) PTC 469 Del