CONCEPT OF DECEPTIVE SIMILARITY UNDER TRADEMARK LAW
Intellectual Property (IP) refers to the original work of the human intellect. IP rights are legal rights that secure the inventor/creator's exclusive right to use their work for a certain period and derive benefit from it. Intellectual Property plays a very significant role in the present day where every minute the world witnesses innovations and creations be it in the field of technology, research & development, art, or literature. It is based on the principle that the intellectual labor associated with a particular innovation or creation must be given due importance. It helps the inventor/creator to derive recognition from such invention/creation and to also secure the benefits arising out of such invention/creation.
WHAT IS A TRADEMARK?
A trademark is a branch or a type of Intellectual property right. It can be a name, sign, symbol, or design that differentiates a product of one enterprise from that of the other. A trademark is a marketing tool that gives recognition to a business or a particular brand. The usage of an authorized trademark by any other person to derive benefits during the trade is illegal and is known as trademark piracy. If there is the use of a trademark through illegal means, the owner of an authorized trademark has the legal right to take legal action against such person or enterprise using their trademark to derive benefits.
The law governing trademarks in India is The Trade Marks Act of 1999. The term “trademark” has been defined under the definition clause Section 2(zb) of The Trade Marks Act, 1999.
DECEPTIVE SIMILARITY UNDER TRADEMARK LAW
Trademarks are a very important element of every business and play a significant role in creating goodwill and a brand name in the market. The importance of trademarks in any business or trade also adds to their vulnerability to getting infringed and misused. Thus, protection has been given to trademarks under The Trademarks Act of 1999. One such method of misuse of trademarks and infringement of the rights of the holder of a registered trademark is “deceptive similarity”.
The term “deceptively similar” has been defined under Section 2(h) of The Trademarks Act of 1999. The literal meaning of the term is that a mark is considered to be deceptively similar when it is very similar to the authorized original mark of a well-known brand which is a registered trademark and it subsequently creates confusion in the mind of the public with average intelligence that such mark in question is similar to that of the original trademark.
Section 11(1) states that if a trademark is identical or deceptively similar to a trademark already existing and the registration and use of such trademark are likely to cause confusion in the mind of the general public regarding the original trademark then such a trademark will not be registered.
Over the years, the law on trademarks has evolved through various judgments which have widened the scope of understanding the concept of deceptive similarity and provided somewhat clear explanations of the extent to which a mark would be considered deceptively similar. One of the guiding principles in the concept of deceptive similarity is whether a mark deceives or creates confusion in the minds of the people. This principle is independent of the fact of intending to deceive. The intention to deceive is immaterial in the case of deceptively similar trademarks.
In the case of Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., it was held that in cases of deceptive similarity, the plaintiff need not prove the deceiving intent of the defendant. The intent is immaterial in these cases.
DETERMINATION OF DECEPTIVE SIMILARITY
The factors used to determine the deceptive similarity and its extent are-
Firstly, the similarity in the purpose of the goods for trade and their similar nature.
Secondly, the words, symbols, or signs and the nature of the marks used, the description of the words
Thirdly, the degree of similarity in terms of visual similarity and conceptual similarity between the trademarks.
Fourthly, the target audience for the goods and services and their level of education and intellect to determine the similarity.
Lastly, the identification of the mode of purchase of such goods.
The Hon’ble Supreme Court in the case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, (2001), provided certain principles for dealing with cases of deceptive similarity. The above-mentioned factors are the principles given by the court in this case.
In the case of Montblanc Simplo-GMBH v. New Delhi Stationary Mart, the Delhi High Court opined that the likelihood of confusion to be caused in the minds of the general public regarding similar trademarks is enough to declare deceptive similarity and the actual confusion or damage need not be caused to bring an action against the act.
In the case of Parle Products (P) Ltd. v. JP &Co. Mysore, the court stated that in the case of a test for determining the similarity, all the essential features of the marks are to be taken into consideration. The court also held that similarity as a whole is to be considered to check if the customers or general public be misled. In this case, it was held that the mark was deceptively similar because if the customers did not take notice of the very few differences, then they’d be confused between the products.
A trademark acts as an identifier and helps in giving recognition to a particular business. The trademark to be protected, under the Trade Marks Act, needs to be unique and distinctive and not be likely to create any confusion on the end of the customers while availing of their products. The trademark in question must be very similar however, the intention of the defendant to use such a trademark is immaterial. It always depends upon the facts and circumstances of the case where a question of deceptive similarity has arisen and its impact on the prospective customers.
3rd Year, SOA National Institute of Law