Delhi High Court on Descriptive Similarity and Deceptive Similarity

In a recent Judgment dated 11.07.2022 by the High Court of Delhi named Soothe Healthcare Private Limited v. Dabur India Limited[1], the distinction between descriptive and deceptive similarity of work marks was laid down by the division bench of the Court.

Soothe Healthcare Private Limited aka SOOTHE, which is in the business of manufacturing, marketing and trading goods relating to personal hygiene including sanitary preparations and allied products, filed a suit seeking a permanent injunction against Dabur India Limited, aka DABUR, from infringing/passing off, inter alia, the relevant trademarks of SOOTHE.

SOOTHE claims that DABUR commenced marketing and selling baby diapers using the deceptively similar trademark, i.e., DABUR BABY SUPER PANTS. It is claimed that the use of the mark DABUR BABY SUPER PANTS is deceptively similar to its trademark for similar products, i.e., baby diapers and has, therefore, infringed SOOTHE’s registered trademark.

The term deceptive similarity is defined in Section 2(h) of The Trademarks Act, 1999 which states that 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.”

The registration of any deceptively similar trademark is prohibited as per Section 11 states that “trademark cannot be registered if it is deceptively similar, or identical, with the existing trademark and goods and services, that is likely to create confusion in the mind of the public at large”.

The instant case is being filed because of the similar word used i.e. SUPER which is a common term and not a distinct word. Since there are more terms attached to the word SUPER which clearly distinct the brands of the product. The judgement stated about deceptive similarity and descriptive similarity.

As per the above mentioned two sections the mark which is deceptively similar to any other registered mark is not eligible to be protected in IPR as it has potential to destroy the very objective of framing IP laws i.e. to safeguard the novelty/uniqueness/intellect in creating brand names and establishing goodwill of the business. Both Dabur and Soothe’s trademark for baby diapers is DABUR BABY SUPER PANTS and SUPER CUTESTERS, SUPER CUTEZ, SUPER CUTE’S respectively.

The brand name of Dabur started way late than that of Soothe’s and both the semi-name and product is colliding with each other and therefore the case came to notice as to whether it is actually deceptive or descriptive.

The Court laid the judgment in favour of Dabur as the mark used is descriptive in nature and not deceptive. The Court also stated that it seems to be laudatory and descriptive of the product being offered by DABUR. Indisputably, the term SUPER is widely used in respect of various products not only of similar nature but also of different classes and categories.

The court categorically said that both Dabur and Soothe cannot claim work mark SUPER as distinctively for their product called diapers. It is a common word and has no distinct meaning to it to be qualified as protected in IPR.

The article has been contributed by Komal Chhajer, a student at Indore Institute of law, DAVV, Indore (M.P.).

[1] FAO(OS) (COMM) 100/2022.