Deceptive Similarity in Trademarks
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Deceptive Similarity in Trademarks
INTRODUCTION
Trademarks have always played a key role in building a brand’s distinct identity. Simply put, a trademark is a sign or any combination of signs which helps the consumer distinguish the goods and services offered by a brand from another.
The origins of trademarks can be traced back to as far back as to the ancient world 3000 years ago.
For instance, Indian artisans and craftsmen used to engrave a distinct signature on their creations to mark them as their own before sending them to Iran.
DEFINITIONS
Article 15.1 of the TRIPS agreement spells out the characteristics of trademarks as
“Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.”[1]
The Indian Trademarks Act of 1999 went on to define trademarks as “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”.
Considering both definitions, the value of a trademark is quite apparent, especially in the present market. Globalisation has led to companies crossing borders and expanding trade. Thus, a brand’s identity and value are what helps establish it in a new market.
Trademarks tend to use their products unique characteristics to advertise and build revenue along with assuring consumers with a promise of quality.
DECEPTIVE INFRINGEMENT
As a company’s brand value grows in the market, the trademark soon becomes highly vulnerable to infringement.
One way of infringement is by creating a mark “Deceptively Similar” to the established mark.
The Indian Trademarks Act, 1999 defines Deceptively Similar in 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”
In simple words, deceptive similarity can be defined as a resemblance between two trademarks which may confuse the general public of reasonable intellect to believe that the mark in question is linked to a registered or a well-known trademark.
The Courts of India have set various rules and precedents to help determine a case of deceptive similarity or infringement. Over the years, through case law, the courts have developed principles and factors to be applied to work out the question of deceptive similarity between marks. These are the main criteria for a court of law or tribunal care with the subsequent factors at the time of determining deceptive similarity and likelihood of confusion between marks in question that has evolved over the years through precedents and they are as follows:
- The nature of the mark
- The degree of similarity between the two marks in question
- The nature of the goods and services in question.
- The sect of consumers that will most likely purchase the products and their level of intellect.
These rules, however, are merely guidelines, the court when deciding a case may not consider all of the rules mentioned above.
In South India Beverages Pvt. Ltd. v. General Mills Marketing Inc[2], the Delhi High Court laid down two important tests in a case where the main point of dispute was that the defendant named his brand “D'DAAZ” which was quite similar to the plaintiff’s mark “'HAAGEN DAZS”. The defendant’s main argument was that as the word “Haagen” was the dominant word in the plaintiff’s trademark, their brand name of “D’DAAZ” could not be considered to be an infringement.
The first rule is the “Anti-Dissection Rule”. This rule was explained in the book “McCarthy on Trademarks and Unfair Competition” as “The Anti-Dissection Rule compares composites as a whole: Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison”.
The Second rule was that of “identifying the dominant mark”, this rule is for when the court has to determine which part of a composite trademark is dominant.
These rules at first glance may look like they are in contradiction, however the judgement clearly stated that composite trademarks must be looked at as a whole even when the impression in a consumer’s mind may be dominated by a certain part of the mark.
CASE LAWS
- “Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors”[3]
A recent famous example of Deceptive Similarity was that of where the Delhi-based coffee chain made an effort to use a name and mark similar to the global giant.
Starbucks had registered its name and the famous logo of a “crowned woman with long hair” in the year 2001. The private Indian chain also created and used a logo which essentially consisted of a green turbaned man surrounded by a black band with the name of the chain which is extremely similar to the logo of Starbucks.
The High Court of Delhi after through observation directed the defendants to continue their business with the name “Sardarji-Baksh Coffee & Co.” The suit was settled in the year 2018 with the defendants agreeing to the terms that they change their name. Further, the Delhi chain was granted permission to register the word “Bakhsh”.
- M/S Lakme Ltd. v. M/S Subhash Trading[4]
The plaintiff is a company that manufactures cosmetics under the registered trademark “Lakme”. The defendant soon entered the cosmetic market and named their own brand “LikeMe”. The court held that the names were not deceptively similar and thus can be considered different marks.
- SM Dyechem Ltd. v. Cadbury (India) Ltd[5]
The plaintiff is a company that manufactures chips and wafers under the registered trademark “PIKNIK”, the defendant began to manufacture chocolates under the name “PICNIC”, the plaintiff argued that the marks were similar and thus affecting its brand value and sales. The court held that the marks cannot be considered to be similar to each other and thus there is no actual infringement.
- M/S. Nandhini Deluxe vs M/S. Karnataka Cooperative Milk Federation Ltd
The plaintiff runs a fairly popular restaurant “Nandhini” in Bangalore. The defendant decided to start selling milk & milk products under the same name, outraged by this the plaintiff approached the court claiming this was a clear case of infringement. The court held that one manufacturer cannot hold a mark completely for himself and restrict brand owners of a completely different class of trade. Thus, it was held that there was no scope of deception or infringement.
- Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.
The main dispute in this case was about the selling of a medicine by the defendant under the name “Falcitab” which was similar to the medicine “Falcigo” by the plaintiff.
The court laid down certain rules in the possible case of Deception focusing on the pharmaceutical field. It was held that as India was a diverse country, any phonetic similarity in the names of medicines may lead to confusion and serious complications. Thus, phonetic similarity was held to deception and infringement in the pharma field.
CONCLUSION
The Deceptive Similarity Doctrine in Trademark Infringement is used widely by Indian courts to ensure that a fair competitive market is maintained.
Judiciary has taken a keen interest in matters of Intellectual Properties and a number of other principles and guidelines are being provided through various judicial decisions so as to form decree of cases of trademark infringement easier. As mentioned in the case laws, the Indian Judiciary is ensuring fairness and protecting the rights of consumers and Brands.
