‘Deceptive similarity’ is one of the important tribulations that is sought to be solved by the Trademarks Act, 1999. After all, Goodwill is all a company has and of which it solely operated. Section 2 (h) describes, “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”. Further, according to section 2 (m) includes a device, brand, heading, label, ticket, name signature, word, letter, numerical, shape of goods, packaging or, combination of colors or any combination thereof. Trademark being of vital importance in business and its goodwill it is of high need to protect it from misuse and infringement. Judiciary has taken keen interest in IP matters where guidelines have been provided through various judicial decisions like the Test for Deceptive similarity in order to make adjudication of cases of trademark infringement in a fair manner. The Trademarks Act does not specifically define what amounts to being deceptively similar, therefore judicial support is important to remove this vacuum.
In order to come to the conclusion 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[[i]]. Thus, have taken into considerationoverall 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. Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the same. “A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived”.[[ii]]
Trade dress too like similar products, plays a significant role in deciding the cases of trademark infringement, like in Lakme Case[[iii]] while determining if LikeMe caused deception, court didn’t agree allowed LikeMe to operate.
But when it comes to having physical products and a choice from them courts, like mentioned before have not allowed side by side placement and the test to find if a product was deceptively similar is settled by the Division Bench of Bombay High Court in Hiralal Parbhudas Case [[iv]] held,
- Marks are remembered by the general impressions or by some significant detail rather than by a photographic recollection of the whole;
- Overall similarity is the touchstone;
- Marks must be looked apart from the first impression of a person of average intelligence and imperfect recollection; Overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic test must be applied;
- Marks must be compared as whole, microscopic examination being impermissible;
- The broad and salient features must be considered for which the marks must not be placed side by side to find out the difference in design.
- In addition, the nature of the commodity, class of the purchasers, the mode of purchase and other surrounding circumstances must also be taken in consideration
Later, Supreme Court in Cadila Health Care Case[ [v] ] solved the confusion and the following principles are considered while deciding upon ‘Deceptively similar’ goods:
- The Nature of the Mark i.e. whether the marks are word marks or label marks or composite marks that both and label works.
- Degree of resemblances between marks phonetically similar and hence in idea.
- The nature of goods in respect of which they used as trade mark.
- The similarity in the nature, character and performance of the goods of the rival traders.
- The class of purchaser who are likely to buy the goods bearing the marks they require, on their education intelligence and a degree of care they likely to exercise in purchasing and /or using the goods.
- The mood of purchasing the goods or placing orders of the good.
- Any other surrounding circumstances which may be relevant in the extent of the dissimilarity between competing marks.
Conclusion:
It
is very clear that courts are going beyond the literal interpretation of the
statute since when it comes to Trade Dress of different products or mere pronunciation,
consumers can be deceived, hence it is very important to scrutinize every case
closely. Since India is a diverse country having people from all backgrounds,
it becomes difficult to understand every aspect of modern day marketing when it
comes to buying goods in market. So, in order to save goodwill of the company and
to ensure the customer is not deceived by appearance and that he buys the right
product of which he intends to, application of Deceptive Similarity test plays
an important role. Of course, the Judiciary has stepped up well to support the
Trademark laws and help remove the existing vacuum.
[i] M/S.GOLDGEM OVERSEAS VS. FLAWLESS DIAMOND
[ii] Karly’s Law of Trade Marks and Trade (9th Ed.)
[iii] M/S Lakme Ltd. v. M/S Subhash Trading
[iv] Hiralal Parbhudas v Ganesh Trading, AIR 1984 Bom 218.
[v] Cadila Health Care Ltd. V. Cadila Pharmaceutical Ltd.
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