CONCEPT OF DECEPTIVE SIMILARITY UNDER THE TRADEMARKS

ACT, 1999

Introduction: Intellectual property preserves the legality of any human or profession who
generates artisanship. Creative work encompasses Music, scholarly, dramatic, discoveries,
innovations, phrasing and delineation. Copyright, Patent, trademark, Industrial design, Moral
rights, Design rights are the classification of intellectual property. Section 11 of the Trademarks
Act, 1999 plays an important role in not granting registration to trademarks on the ground of
deceptive similarity. Now the question arises what exactly deceptive similarity is? Deceptive
similarity is the paramount menace that sticks out in the world of Trademark proprietor, which
also encroaches intellectual property rights. According to Section 2(1)(h) a mark shall be
reckoned deceptively similar to another mark if it is so approximately simulating the other mark
as having a tendency to deceive or cause confusion.

Deceptive similarity is of three types:

• Visual similarity: The visual characteristics of a trademark containing its shape, color,
font, and entire design impersonate a pivotal role in demonstrating deceptive similarity.
• Phonetic similarity: The phonetic similarity amongst trademarks directs to how they
sound when uttered vehemently.
• Conceptual similarity: Despite being the virtual or phonetic similarity are inconsequential
if the principal concept is almost identical it can still effectuate confusion among
consumers.

Fundamentals while deciding deceptive similarity:

• Similarity in the inherent features and intention of the competitor trader's goods.
• The essence of the marks- If they are words, descriptive or non-descriptive names.
• The extent of Phonetic, visual and conceptual similarity among the marks.
• The category of buyers who are anticipated to acquire things with the marks, their academic
attainment and intellectuality.

Judicial precedents:
 ➢ Cadila Health Care Limited Vs Cadila Pharmaceuticals Limited 2001 (2) PTC 541
SC as below: The grades must be compared together. It is not correct to pick a piece of the
term and claim that there is no significant resemblance to cause confusion since that bit of
the word varies from the equivalent section of the word in the other situation. The true test
is whether the proposed trademark as a whole is likely to induce deceit, misunderstanding,
or error in the minds of those who are familiar with the existing trademark.
➢ In Ansul Industries v. Shiva tobacco Company (2007) it has been held that “the Court
has to consider and examine whether a consumer of the products is likely to be deceived
or confused after examining board and dominant features of the two marks and whether
there is overall similarity that is likely to mislead a purchaser. Both the marks have to be
considered as a whole.”
➢ In the matter of N. Dinesh Kumar v. Shweta Khandelwal on 15 th March 2021, a

Single Judge [P. Krishna Bhat, J.] of the Karnataka High Court vide judgment dated

March 15, 2021, held that the main question that arises for consideration is – “whether

there is a likelihood of confusion arising between the two trademarks, in the mind of a

‘quintessential common man’ who looks at any one of them for a fleeting second and

whether he is likely to take it for the other trademark?”

It was held by the High Court that while deciding such cases, one should have in mind

“the ‘quintessential common man’ who goes to the neighbourhood shop with the idea

of purchasing a product of his liking. This ‘quintessential common man’ is neither

blessed with the wisdom of Solomon nor the trained eyes of Sherlock Holmes. …In

order to come to the conclusion whether one mark is deceptively similar to another, the

broad and essential features of the two are to be considered.

In view thereof, the Applied Trade Mark has been applied for distinct goods– and is an

original creation. Hence the word mark as a whole is distinct and is capable of
Registration.

➢ Parle Products (P) Ltd. v. JP Co. Mysore (1972) , The standard for determining
misleading resemblance between two trademarks was established by the Hon'ble
Court. It said that a careful examination of both marks is not required. Instead, the
total similarity should be assessed using the from the standpoint of the consumer, it has
the potential to generate misunderstanding. It said that the similarity should be considered
as a whole from the ordinary person's intelligence with the defective collection.