Deceptive Similarity in Trademark

Trademarks play a critical role in the world of commerce. They not only identify the source and quality of goods and services but also function as a key component in maintaining a brand’s reputation and consumer loyalty. However, when trademarks are deceptively similar, it can lead to confusion, dilute brand identity and unfairly capitalise on the goodwill of established brands.

What is a Deceptive Similarity in Trademark?

Deceptive similarity under trademark law refers to a scenario where one trademark is so similar to another that it is likely to mislead or confuse the public. This term indicates that even though two marks may not be identical, their resemblance in appearance, sound or meaning could cause consumers to mistakenly associate the marks with each other.

This potential for confusion suggests that the later mark might be capitalising on the goodwill and reputation established by the original mark holder. The legal framework, such as Section 2(1)(h) of the Trademark Act, assesses whether marks are “deceptively similar” by evaluating their phonetic, visual and conceptual likeness.

To assess whether two trademarks are deceptively similar, several key factors should be considered:

• Nature and Purpose of Goods: Evaluate the similarity in the nature and purpose of goods offered under the rival trademarks.
• Characteristics of the Marks: Examine the nature of each mark, which could include words, created words, descriptive or non-descriptive names or geographical names.
• Usage of the Marks: Consider the types of goods that are currently associated with the trademarks or likely to be associated in the future.
• Similarity in Mark Features: Assess the degree of phonetic, visual and conceptual similarity between the marks, focusing on their essential features.
• Consumer Profile: Analyse the demographic and psychographic characteristics of potential buyers, including their level of education, intellect and the degree of attention likely to be exercised during their purchasing decision.
• Purchasing Methods: Reflect on the means by which the goods are purchased or orders are placed, as this can influence the perception of the marks.

These factors collectively help determine the likelihood of consumer confusion, which is central to identifying deceptive similarity between trademarks.

Nature of Deception in Trademarks

Deception of trademarks can manifest in various ways, impacting consumer decisions. Firstly, deception concerning the goods occurs when a mark similar to a registered trademark is used on different goods, leading consumers to mistakenly believe they are buying a product from a brand they trust. Secondly, deception about the trade origin involves consumers recognising a mark and wrongly assuming that the goods come from a familiar source.

Lastly, deception concerning the trade connection happens when non-identical goods share similar marks, causing consumers to erroneously think there is an association or connection between the different brands. These deceptive practices can mislead consumers about the nature, source or affiliation of products, influencing their purchasing choices.

Different Types of Similarity Found in the Marks

When assessing trademark similarities, it’s important to consider different types:

Visual Similarity: This involves comparing visual elements of the marks, including any common syllables, suffixes, prefixes, shapes and overall length. This type of similarity focuses on how the trademarks appear visually to the consumer.

Phonetic Similarity: This type of similarity evaluates how trademarks sound when spoken. Marks that sound alike, such as ‘Zegna’ and ‘Zenya’ or ‘Fevikwik’ and ‘Kwikheal’, can confuse consumers, especially in oral communication or advertising.

Conceptual Similarity: This similarity assesses the ideas or concepts conveyed by the trademarks. Marks that suggest similar ideas or themes can lead to consumer confusion even if they are visually or phonetically distinct. Examples include ‘Gluvita’ and ‘Glucovita’ or ‘Lakme’ and ‘Likeme’, which might evoke related images or concepts in the minds of consumers.

Deceptive Similarity and Intention

In trademark law, the intention to deceive is not a critical factor in determining whether a mark is likely to confuse or deceive the public, regardless of whether the confusion pertains to the goods, their origin or their trade connection. The primary concern is whether the mark itself could cause confusion. The intent of the individual using the mark, whether to mislead or not, is irrelevant; proving a lack of intention to deceive does not favor the defendant.

This principle was affirmed in the case of Kirloskar Diesel Recon Pvt. Ltd. vs. Kirloskar Proprietary Ltd. (1995), where the Bombay High Court stated that requiring the plaintiff to prove the defendant’s deceitful intentions is futile once the reputation and goodwill of the plaintiff are established. Similarly, the Supreme Court in Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd. (2001) emphasised the importance of demonstrating likely deception over proving intent, reinforcing that the potential for confusion is the critical element.

Furthermore, in K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras and Anr. (1970), the Supreme Court held that for a trademark to be considered deceptively similar to another, there is no necessity for an intent to deceive or cause confusion. The focus should be on the probable impact on the ordinary consumer. Hence, in trademark infringement cases, establishing likely deception is sufficient and the intent behind the mark’s use becomes secondary.

Why Should a Trademark Not Be Deceptively Similar

The Trademark Act is fundamentally designed to be consumer-friendly, prioritising the public’s interests alongside those of the registered trademark owner. One of the principal objectives of the Act is to prevent consumer confusion and deception that may arise from the use of deceptively similar trademarks.

Trademarks serve as identifiers; they distinguish a particular product among a multitude and signal to consumers that the product originates from a specific owner. When a trademark is deceptively similar to another, it undermines this identifying function, potentially leading to consumer misidentification and diluting the trademark’s distinctiveness.

Moreover, allowing deceptively similar trademarks would not only confuse consumers but also jeopardise the trademark owner’s business and the goodwill associated with their mark. This goodwill is an intangible yet valuable asset built over time through consistent quality and consumer trust. Protecting it is important for maintaining the economic value and integrity of the brand.

The importance of safeguarding both consumers and trademark owners from the ill effects of trademark infringement was underscored in the case of Cadbury India Limited and Ors. vs. Neeraj Food Products (2007). The Delhi High Court highlighted that the essence and purpose of trademark law are to shield both the consumer and the trader from deceptive practices that exploit the reputation and goodwill known to the public, thereby preserving the trust and reliability inherent in the recognised trademark.

When Can a Trademark be Considered Deceptively Similar

A trademark can be considered deceptively similar to another when there exists a likelihood that it could confuse or mislead consumers about the nature, source or affiliation of the goods or services it represents. The determination of deceptive similarity involves a multifaceted analysis, drawing from a body of case law that includes influential decisions such as Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001). This analysis typically focuses on several key factors:

Nature and Kind of the Marks

This includes an assessment of the overall aesthetic and conceptual attributes of the marks.

Degree of Similarity

Similarity is evaluated on multiple levels—phonetic, visual and conceptual. Phonetic similarity considers how the marks sound when spoken; visual similarity looks at their appearance; and conceptual similarity deals with the ideas or meanings conveyed by the marks.

Type of Goods

The nature of the goods or services associated with the marks is critically examined. Similar goods may heighten the likelihood of confusion.

Consumer Base

The characteristics of potential buyers, including their level of education, awareness of intellectual property and the care they typically exercise when making purchases, are important considerations.

Mode of Purchasing

How consumers acquire the goods or services, whether through physical stores or online platforms, can affect their perception of the marks.

Nature, Performance and Character of Goods

The functional and qualitative aspects of the goods offered under the marks of competing entities are also reviewed.

These criteria were emphasised in the Supreme Court’s ruling in Cadila, which also introduced the Rule of Anti. This rule stresses the importance of evaluating a mark as a whole, rather than dissecting it into parts. This approach is based on the understanding that the average consumer perceives a trademark in its entirety and not in isolated components.

Furthermore, the Supreme Court of India in Corn Products Refining Company vs. Shangrila Food Products Limited (1959) developed a specific test to ascertain similarity between marks. This includes judging the mark as a whole, considering the ordinary intelligence of the general public and relying on imperfect recollection rather than side-by-side comparison. This approach acknowledges that consumers rarely have the opportunity to compare two marks directly against each other in real-world scenarios. Instead, they rely on memory, which can often be imperfect.

The essence of these legal precedents is that the focus is not strictly on whether a discerning observer can distinguish between two marks when placed side by side. Instead, the concern is whether an ordinary customer, relying on usual observation and imperfect memory, might be misled into believing that there is an association between the two marks due to their similarities.

This standard helps to protect both consumers from deception and trademark owners from unfair competition, ensuring that trademarks fulfil their primary function as indicators of origin and quality.

Judicial Pronouncements on Deceptive Similarity in Trademark

Judicial pronouncements on deceptive similarity in trademarks have significantly shaped the understanding and enforcement of trademark law. These rulings highlight the nuances involved in determining whether a trademark is deceptively similar to another and provide guidance on protecting consumer interests and the rights of trademark owners.

1. Wockhardt v Mahesh Medical and General Stores

In the case of Wockhardt vs. Mahesh Medical and General Stores, the central issue was the use of deceptively similar trademarks for the same pharmaceutical product, azithromycin dihydrate. The plaintiff, Wockhardt, had been marketing this drug under the trademark ‘AZIWOK’ since 1995, derived partly from the drug’s name and partly from its business name. In 2002, the defendant began selling azithromycin tablets under the trademark ‘AZIWIN.’ The court emphasised several principles in its ruling:

• First Impression and Imperfect Recollection: The judgment stressed that trademarks must be evaluated based on the first impression of a person of average intelligence and imperfect memory.
• Multi-faceted Similarity: Consideration of overall structure, phonetic similarity and the similarity of idea is important, applying both visual and phonetic tests.
• Contextual Evaluation: The context, such as both trademarks being related to the same drug, increases the possibility of confusion.
• Phonetic Consideration for Indian Consumers: Special attention is required in the pharmaceutical sector, where phonetic similarity can cause significant issues, even if the drug is not widely sold.

The court concluded that ‘AZIWIN’ is deceptively similar to ‘AZIWOK,’ primarily due to these factors.

2. Corn Products Refining Co. vs. Shangrila Food Products Ltd

This case involved two companies in dispute over the trademarks ‘Glucovita’ and ‘Glvita’ for biscuits. The Supreme Court’s decision underscored the importance of market reputation and the likelihood of confusion or deception:

• Market Reputation: It’s important to assess whether a trademark has built a significant reputation among the general public.
• Evidence Consideration: Courts must consider evidence regarding the product’s reputation and its connection to the trademark.
• Buyer’s Perspective: The evaluation should consider the potential buyer’s viewpoint, recognising that trademarks with common elements are likely to confuse if they are used in the same market.

The Court held that ‘Glvita’ could likely cause confusion with ‘Glucovita,’ given the latter’s established market presence.

3. Cadila Healthcare vs. Cadila Pharmaceuticals

In this litigation, Cadila Healthcare alleged that Cadila Pharmaceuticals’ use of ‘FALCITAB’ for a drug was deceptively similar to its ‘FALCIGO.’ The High Court initially found no likelihood of confusion, citing that the medications were typically prescribed by professionals like doctors and pharmacists, who were less likely to be confused by the similarity. However, the Supreme Court reversed this decision, emphasising:

• Inherent Risks in Pharmaceuticals: Even with professional handling, the risk of confusion in pharmaceuticals can have dire consequences, including adverse health effects or death due to differences in drug composition or side effects.
• Broader Public Safety Concerns: The Court highlighted the broader public health implications, affirming that the potential for confusion must be rigorously evaluated to prevent harmful outcomes.

Final Thoughts

Deceptive similarity in trademarks is a complex issue with significant implications for businesses and consumers. It demands careful legal analysis and informed decision-making to protect intellectual property rights while fostering fair competition and consumer protection.

As global commerce continues to evolve, so too will the strategies for managing and litigating trademarks, highlighting the need for adaptive legal frameworks and vigilant enforcement practices.