Concept of Deceptively Similar Trademarks

Author: Visheshta Kalra, BBA.LLB(H), Amity Law School, Noida

INTRODUCTION

Intellectual property rights are the inventive work of individuals that permits them to practice their privileges as proprietors of actual property because of imaginative work. Trademark is one of the spaces of intellectual property whose design is to secure the brand name of the item or administration. Trademark furnishes the proprietors of imaginative works with the lawful option to keep others from utilizing a confusingly comparative imprint. The comparability of the trademark with the current trademark is one of the critical hindrances to the enrolment of the trademark.

Section 2(1)(zb) of The Trademarks Act, 1999 defines a “trademark” as ‘a mark that can be represented graphically and that can distinguish one person’s products or services from those of other people and can include the shape of the products, their packaging and colour combination, or any of these combinations.’

A Trademark needs to additionally be a “mark”. According to Section 2(m) of The Trademarks Act, 1999, a “mark” means: “consists of a device, brand, heading, label, ticket, name, signature, word, letter, number, a form of goods, packaging or mixtures of colours or a combination thereof.”

In the case of Laxmikant V. Patel vs. Chetanbhat Shah, it has been argued that the definition of a brand is very broad. The 3 essential elements of a brand are:

1. It has to be a mark
2. It has to be graphically represented
3.  It has to be able to produce goods and to distinguish the services of one person from those of another person.

Section 11(1) of the Trademark Act, 1999 states that ‘a trademark cannot be registered if it is deceptively similar or identical to the existing trademark and the goods and services, which can confuse the public at large’

Trademark assumes an essential part in making a brand name and generosity of any business. Not exclusively does it helps in making brand esteem yet in addition, helps in income age. Being of such essential significance, a trademark is helpless against getting encroached and additionally abused. One such method of brand name is making “deceptively similar ” trademark .

MEANING OF DECEPTIVE SIMILARITY

At the point when an individual gets his trademark enlisted, he gains important rights to the utilization of the trademark regarding the merchandise in regard to which it is enrolled. Furthermore, in case of an attack of his privileges by some other individual utilizing an imprint that is indistinguishable or misleadingly like his trademark, he could secure his imprint by an activity for encroachment and get an order.[1] Along these lines, the reason for ensuring the trademark is that no imprint will be enrolled which is probably going to misdirect the general population or which makes disarray in the personalities of people in general as to the ‘beginning’ or wellspring of merchandise or administrations.

“Deceptive Similar ” is alluded to as those trademarks that are comparable or a copy to a current trademark to bamboozle or to create turmoil to the consumers. Section 2 (h) of the Trademark Act 1999 states that a trademark is considered deceptively similar to another trademark if it simply resembles that other trademark and is likely to cause confusion.

CRITERIA FOR DETERMINING DECEPTIVE SIMILARITY

• Nature of the mark

• The level of likeness between marks, phonetic or visual, or similarity in idea

• The idea of merchandise or administrations in regard to which they are utilized as a trademark

• The likeness in the nature, character, and execution of the merchandise/administrations of the opponent brokers/specialist co-ops

• The class of buyers/clients who are probably going to purchase the merchandise or benefit the administrations, on their education and knowledge and a level of care they are probably going to practice in buying as well as utilizing the products

•  The method of buying in the exchanging channels that the goods and services cross throughout a business or putting in a request for the great.

RELEVANT CASES

CASE 1.  M/S Lakme Ltd. v. M/S Subhash Trading[2]

In this case, the plaintiff was selling cosmetic products under the trademark name “Lakme” and therefore the defendant was also selling similar products under the name “LikeMe”. A case of trademark infringement was filed by the plaintiff against the defendant. The Court held that the names weren’t deceptively similar and are two separate marks with a difference in their spelling and appearance.

CASE 2. SM Dyechem Ltd. v. Cadbury (India) Ltd[3]

In this case, the plaintiff commenced an enterprise of chips and wafers beneath the trademark “PIKNIK”. Later, the defendant began an enterprise of chocolates beneath the name “PICNIC”. A case of trademark infringement was filed thereafter. The Court held the marks now no longer to be deceptively similar as they’re one-of-a-kind in look and composition of words.

CASE 3. Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd[4].

In this case, the Supreme Court has formulated certain guidelines for handling similar trademarks and other cases. Considering the possibility of medical malpractice, it is very important to strictly avoid the confusion between pharmaceuticals and drugs. The Court, thereby, held that being clinical merchandise, extra precaution and care have to be taken and the names of the brand, therefore, being phonetically similar shall quantity to being deceptively similar.

CASE 4. Mahendra and Mahendra Paper Mills Ltd. V. Mahindra and Mahindra Ltd[5].

In 2001 the Supreme Court ruled that the name “Mahendra & Mahendra”, due to its phonetic similarity, violated the early trade name “Mahindra”, which had been used for five decades, and thus acquired an independent and secondary meaning.

CONCLUSION

It very well may be inferred that an owner can’t utilize the trademark which is of another owner, he can’t receive/utilize an imprint which causes or is probably going to create turmoil or trickery in the personalities of the public, he can’t utilize a brand name of an Organization which is a notable trademark, and, he can’t using mark demonstrate that specific merchandise started from him which is beginning from someone else having grounded notoriety and altruism.

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[1] Kavita Pandit Durga Dutt Sharma v. Navaratana Pharmaceutical Laboratories, AIR 1965 SC 980

[2] 1996 (64) DLT 251

[3] (2000) 5 SCC 573

[4] (2001) 5 SCC 73

[5] (2002) 2 SCC 147