An Analysis of Test of Deceptive Similarity under Trademark Laws

Satyam Rathore 1and Sivani Agarwal2

Deceptive similarity can 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.

Under various trademark regimes across the world, deceptive similarity has been recognized as
one of the grounds on which a plea of trademark infringement as well as passing off can be made
and an injunction order can be decreed by the Courts for the same.

The Trademark Act, 1999, 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”. Under the Indian legal order, deceptive similarity has been affirmed at various times
as a ground on which the Registrar can refuse to grant registration to an applicant.

It is important to note that the Trademark Act per se doesn’t go in to the details of the concept of
deceptive similarity. The Act nowhere lays down any criteria which can be deemed as an
essential to constitute the broad and wide ambit of the scope of the phrase deceptive similarity.
Therefore in order to clear the vacuum, it becomes quite necessary to look in to and analyse the
judicial decisions in various case laws concerning intellectual property rights in order to clear the
air over the accurate interpretation of the phrase deceptive similarity. The higher courts in India
have dealt with the matter extensively in a number of landmark judgements and have laid down
various principles upon which the concept of deceptive similarity now rests. Principle of
phonetic and visual similarity, rule of entirety, rule of disintersection, test of likelihood and
confusion, goodwill and recognizable reputation are some of the important criterias which have
been laid down by the courts in order to present a better understanding of the concept of

1
5th year student, BA LLB (hon.), Christ (deemed to be) University
2
4th year student, BBA LLB, Symbiosis International, Pune
deceptive similarity which in turn helps in adjudication of intellectual property disputes in a
better way.

The presentation therefore shallbe focused onexploring various important decisions of the Indian
courts in order to get a clear understanding of the various judicial interpretations of the concept
of deceptive similarity.