How Do You Decide if a Trademark is Likely to Cause Confusion?

What is Likelihood of Confusion in Trademarks?

Trademarks are primarily based around the ability of a mark to be recognized by the intended audience and identify that mark with the product being sold. This essentially means that two trademarks which are likely to cause confusion will result in dilution of the prospective consumer base for a brand.

When a mark is marketed by attaching the name of a particular place or person when in reality there is no such attachment, it causes confusion. This may lead to a false sense of perception in the minds of the consumer and might get swayed to buy products with a false sense of trust. Section 11 of the Trade Marks Act prevents the registration of such marks unless there has been earlier bona fide use of such a similar mark.

The Standard for Likelihood of Confusion

In National Sewing Thread Co. Ltd v. James Chadwick & Bros. Ltd the Hon’ble Supreme Court observed:

“… the burden of proving that the trademark concerned is not likely to deceive or to cause confusion, is upon the applicant. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trademark, what association he would form by looking at that trademark, and in what respect he would connect the trade mark with the goods which he would be purchasing.”

This is because with so many brands in existence there are bound to be similarities between two brands. A standard where even the smallest of similarities in trademarks is said to be infringing others is not practical, and may result in the rights of legitimate brand users being suspended.

Identifying Likelihoods of Confusion: Case Laws

It is common knowledge that a trademark for sports products and another for marriage halls can possibly have similar logos or names. The relatedness of goods and services is essential when it comes to ascertaining how much of similarity is permissible. Similar marks with an overlap in the goods or services it’s used for are generally not allowed to coexist. However, completely different products can have the same mark. The only exception to this rule is that of a “well-known mark”. The registration process, requirements, and fees of registration for this type of mark is a lot higher than those for ordinary trademarks. However, once registered this mark is protected in all classes.

Phonetic or visual similarities can also prevent marks from being registered. However, these similarities may be overridden by other factors such as prior usage and differences in consumer base.

In the case of Starbucks Corporation v. Sardarbukhsh Coffee and & Co, the famous coffee chain Starbucks brought a suit of infringement against the defendant, claiming similarities in sound and logo. The court accepted the likelihood of confusion here, and ordered the defendant to change the name to “Sardarji-Bakhsh Coffee & Co.”

Similarity in meaning is also a reason two conflicting marks may cause confusion. Two words indicating the same meaning are bound to cause confusion. Much so when it comes to two words which are socially relevant and hold meaning in the common parlance in society.

Take the case of Officer’s Choice v. Collectors Choicewhere it was alleged that the word “collector” was easily confused with officer. Here, the court took the psychology of the general population in mind and came to a conclusion that indeed officer and collector could be confused with each other by the target consumer bade. The court primarily highlighted how both the brands targeted the mid to lower income group, nothing that the degree of literacy not be adequate to allow two very similar sounding brands to coexist.

This might not always be the case. In Officers Choice v. Fauji where the conflicting marks had the same meaning for the same product, but in different languages. In this case, the plaintiffs moved to the high court on accounts of “Fauji” being conceptually similar to their own brand. They alleged that along with a military Officer is referred to as ‘Fauji” in India, the font and design of the logo was similar too.

However, the court did not agree, and gave a judgment stating that there was no real resemblance between the two brands. They stated that the meaning is subjective person to person as “officer” in the dictionary has been defined to being a person with power.

In the case of Gillette Company LLC v, Tigaksha Metallics Private Ltd. the plaintiff filed a case of injunction against the defendants on account of their marks being deceptively similar in both meaning (the plaintiff’s mark has SWORD, and the defendant used TALWAR which is Hindi for sword) and visual representation (images of swords in both cases.

The Court rules in favor of the plaintiff in this case, applying a concept of “word association”, which generates “an associative patterns by word. Add that to the products being identical, and the court dismissed the plea to remove the temporary injunction by the defendant.

Conclusion

It can be understood that the “Likelihood of Confusion” test is the parameter which judges if two marks are similar. However, it is pertinent to note that in currently there is no method set in stone and to get a definitive answer each case is required to be judged separately. This can be seen from how very similar circumstances seem to result in differing results. This is especially the case given the many parameters that can be considered, such as social presence, having a customized, or presence in a different Trademark classification.

Author: Apurva Kumar Das, Legal Intern at PA Legal.

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