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What is Deceptive Similarity in Trademarks?

What is Deceptive Similarity?

It is generally not a very pretty sight when two people are at an event wearing similar outfits. People tend to believe that the exclusiveness of their presentation is tainted when another person is carrying the same outfit.

A similar concept applies to Trademark infringement via deceptive similarity. This happens when the way two parties are trying to present their businesses is deceptively similar. This situation gets compounded when the sectors of both the businesses overlap or are the same.  Trademark is based on the perception of a brand in the consumer’s brand, so if a consumer relates a brand to a particular entity, another entity using the same name will eat into the business of the entity that has the mark registered.

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In the Trademark Act (1999), Section 11(1) states that a trademark will not be allowed to be registered provided it is identical or can confuse the public at large with another pre existing trademark. Similarly, section 2(h) of the Trademark Act, 1999 states that “A mark is deemed to be deceptively similar to another mark if it so merely resembles that other mark as to be likely to or cause confusion.”

The understanding and solving of disputes involving deceptive similarity is very interesting as there are no concrete parameters to ascertain whether or not a mark is similar to another and if the existence of both will cause confusion. However, this does not mean that the statutes around trademark are not able to protect entities, there is a long list of judicial decisions which have provided guidelines for future cases. We discuss some of those here, in an attempt to let people know

Cadila Healthcare Ltd. V. Cadila Pharmaceutical ltd.

While most cases dealing with Deceptive similarity involve two entities whose ownerships are different, this is a case of two entities previously under the same umbrella feuding over particular medicine by the name of “Falcigo”. The defendants started manufacturing a drug called “Falcitab”. Both the medicines in this scenario were being prepared to take care of the same disease (Falcipharam Malaria).

This case is particularly interesting because apart from considering the reputation of the companies in the consumers mind the court also took into account how the product was Pharmaceutical in nature. This makes the fact even more important, as people buying the product totally trust them blindfolded and additional precautions should be taken to decrease deceptive potential.  This resulted in the court stating that the marks are indeed phonetically similar and are bound to confuse the market.

M/S Allied Blenders and Distillers Pvt. Ltd v. Govind Yadav and Anr.

This case, as the name suggests, involved two companies dealing in liquor. The plaintiff claimed that the defendants brand name of “Fauji” is deceptively similar to “Officers Choice”. The claim was made on the grounds that if one was to translate the literal meaning of Fauji into English, the result would be “Officer”.

This case was also interesting as according to the statutes prevalent, Liquor cannot be marketed.  This would also mean that the consumers who know about the brands would have made themselves well aware of the difference between two brands. Also, since officer could also be understood as a person who holds authority. The case was ruled in favor of the defendant ascertaining that the similarity was not deceptive, as the connection would be too far-fetched.

Mahendra and Mahendra Paper Mills Ltd v. Mahindra and Mahindra

This case laid out certain guidelines with its judgment as the contention was that one entity was accused of mooching off the others goodwill. The case as obviously involves a very well known entity in the country Mahindra and Mahindra and a paper producing factory in Gujarat with just a difference of one vowel in their names. Here, the court observed that the deception was clear as phonetically it would easily confuse anyone. Plus, the difference in names, when looked at casually would also be very similar.

Conclusion

The aforementioned are only a handful of the huge number of cases which have dealt with claims of deceptive similarity in India. One thing is for sure- that there cannot exist a stringent formula that could definitely ascertain a case of deceptive similarity. These judgments have given an understanding on how widely these claims and the deciding circumstances are. The only certain parameter is gauging the consumer outlook towards the dispute and the brand’s relevance in that market. It is a popular belief that the everyday consumer relies on name and packaging whilst purchasing a product, a small change may lead the consumer to buy something that is actually not the product intended to be bought.

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

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