Brain Booster Articles
DECEPTIVE SIMILARITY - THE IMITATION OF TRADEMARKS
Author: Harkeerat Kaur Bhambra, IV year of B.B.A.,LL.B. from UILS, Chandigarh University
Every company's reputation is based on its brand value and goodwill, they serve as its identity. A trademark enables a company to develop its own reputation in preparation for future success. Every coin, however, has two sides. Similar to this, a trademark can both assist a company build a profitable good reputation and also be violated or utilized improperly. One method of trademark infringement or misuse is the use of a "deceptively similar" trademark. As a result, customers are unable to distinguish between real trademark products and misleadingly similar trademark products, and the goodwill and reputation of a legitimate trademark holder are still at risk, and anyone who uses it dishonestly profits from that holder's goodwill. The goal of this research piece is to examine the definition of "deceptive similarity" as it applies to trademarks in India under the Trade Marks Act, along the same lines analyzing the basis in history, evolution, and significant precedents on the subject.
Patents, Trademarks, Designs, Copyright, Geographical Indications, and Trade Secrets are the main topics that Intellectual Property Rights cover. Patents discuss how things function. Trademarks are concerned with what you will call it. Design focuses on how something appears. Copyright concerns creative or literal expression. The topic of geographic indicator is product provenance. The protection provided by intellectual property laws extends to human creativity and original ideas.
HISTORICAL BACKGROUND OF TRADE MARK LAW IN INDIA
Indian trademark law first appeared around 1860. The Bombay Mill Owners and Bombay Charter of Commerce asked the State of Bombay to request a Trademark Protection Law in the year 1877. In 1879, the first Trademark Act was passed as a result. However, this Act was repealed in 1880. There was not another official trademark law for the protection of trademarks in India prior to 1940. As a result, many issues including infringement, passing off, and other issues occurred. These issues were resolved by using Section 54 of the Specific Relief Act, 1877. The Indian Registration Act of 1908 was used to secure the declaration of trademark ownership
When the Trade Marks Act, 1940 was passed, the aforementioned challenges and issues were resolved. The English Trademark Act served as the model for this Act. The massive development in trade and commerce necessitated strict trademark protection. After the Indian Trademarks Act of 1940, numerous revisions were made. Trademark and Merchandise Act, 1958, took the role of the Indian Trademark Act, 1940. This Act created provisions for trademark registration, improved protection, and the avoidance of trademark fraud. The Trade Marks Act, 1999, a new Trade Marks Act, was passed in 1999. The Trademark and Merchandise Act of 1958 was replaced by this Act. The World Trade Organization's suggestion served as the foundation for the Trade Marks Act of 1999, which was passed in accordance with the TRIPS duty. Better protection for the trade mark owner and legal recourse for enforcing trademark rights in the event of infringement are the goals and objectives of the Trade Marks Act, 1999.
The Trade Marks Rules, 2017 recently came into effect. The Trade Marks Rules of 2002 were repealed. Therefore, the Trade Marks Act of 1999 and the Trade Marks Rules of 2017 are currently in effect and regulate the Trade Marks legislation in India.
The Trade Marks Act, 1999 defines ‘Trade Mark’ under Section 2 (zb) 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 colors.”
Any company's or product's quality and brand value are key factors in luring customers to make purchases. Trademarks come into play in this situation. Trademarks are recognisable or linked with the goods in order to set them apart from other kinds of comparable goods. Trademarks assist consumers in connecting specific goods with a specific business. Trademarks can take the form of a label, a graphic, or a color scheme that is used to identify a product. It gives consumers a mental image of the quality of the product, and with time, that mark may become a household name.
Trademarks serve as a source-origin indicator for products. The Trade Marks Act of 1999 grants significant protections to registered trademarks in the event of infringement, whilst unregistered trademarks are only protected by the common law tort of passing off. A trade mark grants its owner the legal protections necessary to prevent it from being fraudulently utilized by others with a confusingly similar mark or symbol. A trademark offers a product an identity in terms of its quality and enables consumers to make purchases without being misled or confused.
The Trade Marks Act, 1999, defines ‘Deceptive Similarity’ under 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.”
A trade mark, deceptively similar, is one that is virtually identical to a mark that already exists and has the potential to readily mislead and cause confusion in the eyes of consumers. Deceptively similar trademarks are ones that sound and look very similar to the original trademark, which increases the likelihood that consumers will be duped, causes financial loss, and harms the reputation of the owner of the original trademark. One of the elements of trademark infringement is deceptive resemblance. The Registrar of TradeMarks has the right to reject a trademark applicant's application on the grounds of confusing likeness.
The Trademark Act, 1999, under Section 11(1) states that “a 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 Supreme Court established the criteria for evaluating "Deceptive Similarity" in Cadila Health Care Ltd v. Cadila Pharmaceutical Ltd. The following criteria must be taken into account while determining misleading similarity:-
● Nature of the mark (word, label or composite mark)
● The degree of alikeness between the marks
● Nature of the goods (services for which the Trade mark is used)
● The level of judgment and diligence shown by the buyer when making a purchase of products or services
● The method by which the customer made the purchase or placed the order
● The similarity between the rival dealers' commodities in terms of their nature, functionality, and personalities
Image showing Deceptively Similar Trademarks
THE GUIDING PRINCIPLE
The aim to deceive is not one of the deciding elements in figuring out if a mark confuses or deceives. Whether or not the person intends to mislead the wider audience is irrelevant. So, there is no need to establish that there was an intention to deceive.
In the case of Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., it was decided that the plaintiff did not have to establish the defendant's fraudulent purpose. Furthermore, plaintiffs are not required to demonstrate the defendants' fraudulent purpose or deception once their reputation has been established.
A. Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd. - The owner of the trademark "CALMPOSE" for a medication is the plaintiff. The plaintiff claimed that the defendant began producing a comparable drug under the name "CALMPROSE." The court determined that the marks "CALMPOSE" and "CALMPROSE" are both used for the same class of goods, that they are phonetically and aesthetically similar, and that they are therefore deceptively similar.
B. M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr. - Officer's Choice was a trademark owned by the plaintiff. According to the plaintiff, the defendant's trademark "Fauji" is confusingly similar to his trademark "Officer's Choice" since "Fauji" is a Hindi word that, when translated, denotes a military officer. Both the plaintiff and the defendant are involved in the alcohol industry. Furthermore, the bottle's packaging is the same. The lawsuit for trademark infringement was dismissed because the court determined that there is no confusing similarity between the trademarks "Officer's Choice" and "Fauji."
C. Starbucks Corporation v. Sardarbuksh Coffee and Co. & Ors. - "STARBUCKS'' was a registered trade mark owned by the plaintiff. Sardarbuksh Coffee & Co. is a business that the defendants founded. Both the plaintiff and the defendant offered the same kind of goods and services. According to the Delhi High Court, the name Sardarbuksh Company bears a phonetic and visual resemblance to the "Starbucks'' logo, making it fall under the definition of "Deceptive Similarity." As a result, the Delhi High Court mandated that Sardarbuksh change its name to "SARDAR-JI-BAKSH" or "SARDAR-JI-BAKSH COFFEE & CO'' and modify its logo. Sardarbuksh was further instructed to mark a new trademark registration application with a new name.
D. SM Dyechem Ltd. v. Cadbury (India) Ltd. - Under the trade name "PIKNIK," the plaintiff was operating a business selling chips and wafers. Additionally, the defendant began operating a chocolate shop under the name "PICNIC". A claim for trade mark infringement was made by the plaintiff. Trial court ruled in favor of the plaintiff after concluding that the names "PIKNIK" and "PICNIC" are confusingly similar. The matter was then appealed. The High Court overturned the Trial Court's decision by ruling that the marks "PIKNIK" and "PICNIC" are not confusingly similar. They differ in terms of both appearance and word structure. Also, the Supreme Court upheld the High Court's judgment.
A trademark is essential to providing a company its identity and goodwill. Therefore, it is crucial that it be safeguarded from being used fraudulently by individuals who use a mark or logo that is very similar to or strikingly mimics the original trademark. The consumers become confused as a result of this. A trademark enables buyers to identify the source of a product and to buy one of high quality. In order to preserve the rights of the legitimate trademark holder and to safeguard the interests of consumers, the judiciary has generally handled cases of misleading likeness and has demonstrated strictness in such situations. The doctrine of deceptive similarity has been used by courts to defend against trademark infringement and passing off. To ensure that instances of trademark infringement are handled fairly, the judiciary has been particularly committed and resolute in matters of deceptive likeness. The judiciary's stance in these situations is admirable and gives people hope that justice will undoubtedly be done.
 AIR 1996 Bom 149, 1996 (2) BomCR 642, (1996) 98 BOMLR 972  AIR 1989 Delhi 44, 1988 (2) ARBLR 315 Delhi, 36 (1988) DLT 133  CS(COMM) 819/2018 & I.As. 5616/2018, 14586/2018  CS (COMM) 1007/2018  2000 AIR SCW 2172 : AIR 2000 SC 2114 : 2000 CLC 1338  The Trade Marks Act, 1999, Section 2(zb)  The Trade Marks Act, 1999, Section 2(h)  2001 (2) PTC 541 SC