DECEPTIVE

SIMILARITY IN
TRADEMARKS
ASST. PROF. EISHA VASHISHTHA
 DECEPTIVE SIMILARITY
"Deceptive similarity" is referred to as those trade marks who are similar or a look alike to an existing trade mark to deceive or to
cause confusion to the consumers.
 According to section 2(h) of the trade marks act,1999 "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 also be defined as similarity between the trademarks which can likely deceive the
general public of average intellect to believe that the mark in question is in some way or the other linked to the registered or a
well-known trademark.
 A deceptive mark can be said to be such a mark which is likely to cause confusion in the minds of the buyer. The most
important deciding factor while taking Deceptive Marks into account is that the general public with average intelligence is
confused so as to the source of the product.
According to the various judgments given by the supreme court and high court there are several conditions which needs to be
considered for Deceptive similar marks:
1.Principle of phonetic and visual similarity.
2. Rule of entirety
3.Test of likelihood and confusion
4.Goodwill
WAYS PRODUCTS CAN BE DECEPTIVE

Deception can arise with regards to:

 Deception as to goods
 Deception as to trade origin
 Deception as to trade connection
 TRADE DRESS
 Trade dress is the characteristics of the visual appearance of a product or its
packaging (or even the design of a building) that signify the source of the product
to consumers.
 The Indian law does not have a separate provision for the trade dress under its
existing Trade mark legislation unlike the US law which recognizes the concept
trade dress under Section 43(a) of the Lanham Act
 Deceptive similarity amongst products is judged on the basis of:
▪ trades dress.
▪ consumers who would be misled into distinguishing between two marks
and hence failing to compare the two similar products.
 FACTORS DETERMINING DECEPTIVE
SIMILARITY
 The nature of the marks, whether the marks are words, labels or composite marks.
 The degree of resemblance between the marks, phonetic or visual or similarity in idea.
 The nature of goods or services in respect of which they are used as trademarks.
 The similarity in the nature, character and performance of the goods/services of the rival
traders/service providers.
 The class of purchasers/customers who are likely to buy the goods or avail the services, on their
education and intelligence and a degree of care they are likely to exercise in purchasing and/or
using the goods.
 The mode of purchasing in the trading channels that the goods/services traverse in the course of
business or placing order for the goods.
 PREVENTION OF DECEPTIVE
SIMILARITY

➢ Section 11 lays down that the existence of likelihood of confusion on the part of the public, which
in other words means perception of the marks in the minds of the average consumer of the type of
goods or services in question, which plays a decisive role in the matter.

➢ Section 11(2)(b)16 seeks to provide that where the goods or services are not similar and the use of
trademark identical with or similar to an earlier trademark without due cause would take unfair
advantage of or be detrimental to the distinctive character or repute of the earlier trademark, shall
not be registered.
 M/S ALLIED BLENDERS AND DISTILLERS PVT.
LTD. V. GOVIND YADAV & ANR.
 In this case, the Court ruled that the trademarks “Officer’s Choice” and “Fauji’s” were not deceptively similar.
 The plaintiff had trademarked the term ‘Officer’s Choice’ in the year 1988 and was using this for alcoholic
beverages.
 The defendants were using the mark ‘Fauji’ with respect to the same products. The plaintiff argued that the
literal translation of the term “Fauji” would be “military officer”. Also, since they were in the same business,
the likelihood of confusion among the consumers would be high. The Court held that the trademarks were not
similar. The words were phonetically different and, whilst the expression “officer” referred to “a person in
power”, the term “Fauji” meant a simple soldier. The case laws relied on by the plaintiff was not accepted by
the Court.
 CADILA HEALTH CARE LTD. V. CADILA
PHARMACEUTICAL LTD
➢ In this case Supreme Court laid down certain guidelines for adjudication of matters concerning deceptive
similarity of trademarks. In this particular case, the parties to the case were the successors of the Cadila group.
The dispute arose on the issue of selling of a medicine by the defendant under the name "Falcitab" which was
similar to the name of a medicine which was being manufactured by the plaintiff under the name "Falcigo". Both
the drugs were used to cure the same disease and hence, the contention was that the defendant's brand name is
creating confusion between the consumers. Injunction was demanded by the plaintiff. As a defence, the defendant
claimed that the prefix "Falci" has been derived from the name of the disease, i.e., Falcipharam malaria.

➢ The court observed that because of the diversified population of the country and varying infrastructure of the
medical profession due to language, urban-rural divides, etc. and with the probabilities of medical negligence, it is
important that confusion of marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby,
held that being medical products more precaution and care must be taken and the names of the brand, therefore,
being phonetically similar shall amount to being deceptively similar.
 PIDILITE INDUSTRIES LIMITED v. POMA-EX
PRODUCTS
❖ The core issue dealt by the court was the infringement of the Plaintiff's mark "FEVIKWIK" by the Defendant's mark "KWIKHEAL",
but the question of trade dress also played a significant role in reaching the conclusion.

❖ The Plaintiff argued that they have a registered and distinctive packaging of their product which was created in-house by an employee
of the plaintiff during the course of employment and constitutes an original artistic work in which copyrights subsist.

❖ Defendant on the other hand has not been using its own trade mark packaging as registered but has been using the packaging which is
similar to that of Plaintiff’s.

❖ The Plaintiff contention was that the Defendant has used every singly feature of its product packaging in its minutest details therefore
the Plaintiff has a clear cut case of infringement and passing off and if goodwill and reputation of the Plaintiff's product is not
protected, it will result into irreparable damage.
❖ The Court while agreeing with the Plaintiff held that the packaging of the Defendant's product was likely to cause confusion among
the public as the packaging of the two products were identical.
 SATYAM INFOWAY LTD V. SIFYNET
SOLUTIONS PVT. LTD

 The appellant was incorporated in as a body corporate in the year 1995 and registered several domain
names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. in June 1999.The appellants
claimed that they had coined the word ‘Sify and have invented it by using elements of its corporate
name, i.e. Satyam Infoway.
 The appellant further claimed a recognizable reputation and goodwill in the trade name ‘Sify’. Later on
Siffynet Solutions Pvt. Ltd, the respondent in this case, started carrying on business of internet
marketing under the domain names, www.siffynet.net and www.sijfynet.com. They commenced their
business in June 2001.
 Coming to know of the use of the word ‘Siffy’ as part of the respondent’s corporate and domain name,
the appellant served a notice on the respondent to cease and desist from either carrying on business in
the name of Siffynet Solutions (P) Ltd. or Siffynet Corporation and to transfer the domain names to the
appellant.
 SATYAM INFOWAY LTD V. SIFYNET
SOLUTIONS PVT. LTD
CONTD.
 The defendant refused to comply with the notice and hence the matter went to Civil
Court and later on defendant’s appeal to the High Court and finally the matter was
listed in the Supreme Court on the plaintiff’s appeal. The Supreme Court thereafter
made very important observations in this case which did set up a good precedent in
this field of domain name as trademark, which till then was unexplored in the
intellectual property arena.
 The Court stated that a domain name is accessible by all internet users and the need
to maintain an exclusive symbol for such access is crucial as we have earlier noted.
Therefore a deceptively similar domain name may not only lead to a confusion of
the source but the receipt of unsought for services.
 DELHI LAKME LTD v. SUBHASH
TRADING

 In this case the plaintiff was selling cosmetic products under the registered Trade
Mark “Lakme”.
 Defendant was using the Trade Mark “LikeMe” for the same class of products. It
was held that there was striking resemblance between the two wards. The two
words are also phonetically similar.
 There is every possibility of deception and confusion being caused in the mind of
the prospective buyer of the plaintiff‘s products. Injunction was made permanent.
AMRITDHARA PHARMACY v. SATYADEO
GUPTA
 In this case the Supreme Court observed that the ordinary purchaser would go more by the overall structure and
phonetic similarity and the nature of medicine he has previously purchased or has been told about, or about which
he has otherwise learnt and which he wants to purchase.
 The words “Amritdhara” were held deceptively similar through registration of “Lakshmandhara” were allowed on
the basis of honest concurrent user.

Court Observed:
 The average consumer would perceive the plaintiff’s mark in its overall effect as representing the badge of origin.
 The average consumer normally perceived a mark as a whole and did not proceed to analyze its various details.
 Where the proprietor used his mark in combination with another mark in order to create a composite badge of
origin, the average consumer would normally perceive the whole and not proceed to analyze its various details.
 There was likelihood of confusion.
 The claim for passing off was upheld and the use of the Mark Lakshmandhara was limited to Uttar Pradesh only on
basis on honest concurrent use.
THE END