An Exposition on the Doctrine of Deceptive Similarity in Indian Trademark Law

Introduction

The concept of "deceptive similarity" is a cornerstone of trademark law in India, designed to protect the goodwill and reputation associated with a trademark, prevent unfair competition, and safeguard consumers from confusion and deception. A trademark is deemed deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion among the relevant public. This article undertakes a comprehensive analysis of the legal principles governing deceptive similarity under Indian law, drawing extensively upon statutory provisions and seminal judicial pronouncements that have shaped its interpretation and application. The objective is to elucidate the multifaceted tests and factors employed by Indian courts in adjudicating disputes involving allegations of deceptively similar trademarks.

Statutory Framework in India

The primary legislation governing trademarks in India is the Trade Marks Act, 1999 (hereinafter "the Act"). The definition of "deceptively similar" is enshrined in Section 2(1)(h) of the Act, which states: "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." This definition is pivotal and forms the basis for actions related to both trademark infringement and opposition to registration.

Several other provisions of the Act are pertinent to the issue of deceptive similarity:

• Section 11: Relative grounds for refusal of registration. This section prohibits the registration of a trademark if, inter alia, it is identical with an earlier trademark and the goods or services are similar, or if it is similar to an earlier trademark and the goods or services are identical or similar, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark. It also addresses well-known trademarks and the prevention of their dilution.
• Section 29: Infringement of registered trademarks. This section outlines various scenarios constituting infringement. For instance, Section 29(1) states that a registered trademark is infringed by a person who, not being a registered proprietor or a permitted user, uses in the course of trade a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Section 29(2) further elaborates on situations where a mark is identical or similar to a registered trademark and is used for identical or similar goods/services, leading to a likelihood of confusion or association.

Earlier statutes, such as the Trade and Merchandise Marks Act, 1958 (e.g., Section 2(d) defining "deceptively similar," Section 12 regarding prohibition of registration) and the Trade Marks Act, 1940 (e.g., Sections 8 and 10), also contained analogous provisions, and jurisprudence developed under these acts remains highly relevant. For example, in Biofarma v. Sanjay Medical Store (Delhi High Court, 1997), the court, referring to Section 2(d) of the 1958 Act, outlined factors for deciding deceptive similarity. Similarly, Itc Limited v. Rakesh Behari Srivastava (Allahabad High Court, 1997) discussed Section 12 of the 1958 Act in the context of protecting registered trademark owners.

Judicial Principles for Assessing Deceptive Similarity

Indian courts have, over decades, evolved a robust set of principles to guide the assessment of deceptive similarity. These principles emphasize a pragmatic, consumer-centric approach.

The "Average Consumer" with Imperfect Recollection

A fundamental tenet in assessing deceptive similarity is to view the marks from the perspective of an average consumer with imperfect recollection. The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. (1959 AIR SC 0 142) emphasized that the assessment of confusion must be grounded in realistic consumer behavior, considering the viewpoint of an average consumer with imperfect recollection, rather than a meticulous side-by-side comparison by an expert. This principle was reiterated in Amritdhara Pharmacy v. Satya Deo Gupta (1963 AIR SC 0 449), where the Court noted that the evaluation should be from the standpoint of an average consumer, not a linguistically or ideologically informed individual, especially when considering similar medicinal products ("Amritdhara" v. "Lakshmandhara").

The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 SCC 5 73) further elaborated that the marks must be compared from the viewpoint of a person of average intelligence and imperfect recollection. The Court observed, "His impression of the mark is based on a general recollection of the main features of the mark and not a photographic memory of all its details." (citing earlier cases). This approach was also highlighted in Fdc Limited v. Faraway Foods Pvt. Ltd. (Delhi High Court, 2021), stating that confusion refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection, and the question is one of first impression.

Holistic Comparison v. Dissection: The Anti-Dissection Rule and Dominant Features

Trademarks are generally to be compared as wholes. The "anti-dissection rule" posits that conflicting composite marks should be compared by looking at them as a whole, rather than breaking them into their component parts. The Supreme Court in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd. (1969 SCC 2 716), citing Aristoc Ltd. v. Rysta Ltd., highlighted that marks must be compared holistically. Similarly, in Parle Products (P) Ltd. v. J.P And Co., Mysore (1972 SCC 1 618), the Court emphasized that the overall impression left by the two wrappers was crucial.

The Delhi High Court in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani & Anr. (2022 SCC OnLine Del 3390) and Grey Matters Educational Trust v. Examiner of Trade Marks (2024 SCC OnLine Del 1478), citing South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. (2014 SCC OnLine Del 1953), reiterated that "conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their components parts for comparison."

However, this rule is not absolute. The Calcutta High Court in Kunj Roller Flour Mills Pvt. Ltd. v. New Rishta Agro India Ltd. (2024 SCC OnLine Cal 134), while acknowledging the anti-dissection rule, also noted from South India Beverages that "while a mark is to be considered in entirety, yet it is impermissible to accord more or less importance or 'dominance' to a particular portion or element of a mark in cases of composite marks." Thus, if a particular element of a composite mark is dominant or essential, it may be given greater weight in the comparison. The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965 SCC 1 737) found "Navaratna" to be the essential feature.

Types of Similarity

Courts examine various types of similarities:

Visual Similarity

This involves comparing the overall look and appearance of the marks. In Parle Products (P) Ltd. v. J.P And Co., Mysore (1972 SCC 1 618), the Supreme Court found the defendants' biscuit wrappers to be deceptively similar to the plaintiffs' based on the overall visual impression, including size, color scheme, and imagery, despite some differences. The court critiqued the High Court's reliance on distinguishing features, arguing that assessment should prioritize overall similarity.

Phonetic Similarity

This pertains to the sound of the marks when spoken. The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta (1963 AIR SC 0 449) found "Lakshmandhara" phonetically similar to "Amritdhara." In Corn Products Refining Co. v. Shangrila Food Products Ltd. (1959 AIR SC 0 142), "Gluvita" was found phonetically similar to "Glucovita." The Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 SCC 5 73) cautioned against downplaying phonetic similarities even if there are differences in scripts or individual components. Fdc Limited v. Faraway Foods Pvt. Ltd. (Delhi High Court, 2021) stressed that in phonetic similarity, "A meticulous comparison of the words, syllable by syllable, is to be avoided. The possibility of careless pronunciation and speech, both on the part of the [speaker and listener] is relevant."

Structural and Idea Similarity

This involves the overall structure of the mark and the idea it conveys. In Corn Products Refining Co., the structural similarity between "Glucovita" and "Gluvita" was a factor. In Amritdhara Pharmacy, the common suffix "dhara" meaning "current" or "flow" contributed to the similarity of idea, especially in the context of liquid medicinal preparations.

Key Factors in Determination

The courts consider a confluence of factors, often referred to as the "Cadila factors" from Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 SCC 5 73), though many were articulated in earlier cases and further refined in subsequent ones like Biofarma v. Sanjay Medical Store (Delhi High Court, 1997) and M/S. Vinayak Tea Co. v. M/S. Kothari Products Ltd. (Allahabad High Court, 2002). These include:

• Nature of the Marks: Whether they are word marks, device marks, label marks, or composite marks.
• Degree of Resemblance: Phonetic, visual, and structural similarity, as well as similarity in the ideas conveyed.
• Nature of the Goods or Services: The type of products or services in connection with which the marks are used.
• Similarity in Nature, Character, and Performance of Goods/Services: Whether the goods/services of the rival traders are similar.
• Class of Purchasers: Their education, intelligence, and the degree of care they are likely to exercise in purchasing. This was crucial in F. Hoffmann-La Roche (specialized nature of pharmaceuticals) and discussed in M/S. Murugan Idli Shop Rep. By Its Proprietor S. Manoharan v. M/S. Sri Murugan Idli Shop (Madras High Court, 2011) concerning "Kotex" v. "Blotex" and the expected behavior of customers for such goods.
• Mode of Purchasing or Placing Orders: How the goods are bought (e.g., over the counter, by prescription, online).
• Surrounding Circumstances: The overall context in which the marks are encountered by the public.
• First Impression: The initial impression the mark makes on the average consumer.

The Role of Common Elements and Descriptive Terms

The presence of common elements, especially if they are descriptive or generic, is a significant consideration. In F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd. (1969 SCC 2 716), the Supreme Court noted that the suffix "VIT" in "PROTOVIT" and "DROPOVIT" was a known abbreviation for vitamins and common in the pharmaceutical sector. The distinctiveness of the initial parts ("PROTO" v. "DROPO") was sufficient to avoid confusion. The Court held that "DROPOVIT" was an invented word.

However, if a common element forms the dominant part of a mark or has acquired distinctiveness, its use by another can lead to deception. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965 SCC 1 737), the term "Navaratna," though descriptive of an Ayurvedic formulation, was held to have acquired distinctiveness through long and extensive use by the respondent, making the appellant's use of "Navaratna Kalpa Pharmacy" an infringement.

The Gauhati High Court in Dura Roof (P.) Ltd. v. Dyna Roof (P.) Ltd. (2017) cited cases emphasizing that more attention should be given to uncommon features when common features are descriptive or publici juris.

Reputation, Goodwill, and Acquired Distinctiveness

The reputation and goodwill associated with a trademark are crucial, particularly in passing-off actions and for establishing acquired distinctiveness. In Corn Products Refining Co. v. Shangrila Food Products Ltd. (1959 AIR SC 0 142), the established reputation of "Glucovita" was a key factor in refusing registration for "Gluvita." Similarly, in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002 SCC 2 147), the Supreme Court upheld an injunction based on the significant reputation and goodwill of the "Mahindra" mark, making it likely that the defendant's use of "Mahendra & Mahendra" would cause confusion.

As discussed, Kaviraj Pandit Durga Dutt Sharma is a landmark case on acquired distinctiveness, where a descriptive term gained trademark protection due to prolonged and exclusive use.

Special Considerations

Pharmaceutical Trademarks: A Higher Standard of Scrutiny

Courts apply a stricter standard when assessing deceptive similarity for pharmaceutical products due to the potential for serious harm to public health from confusion. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 SCC 5 73), the Supreme Court emphasized that in the case of medicinal products, "meticulous chemists and dispensing pharmasists" are not the yardstick, but rather the "unwary purchaser of average intelligence and imperfect recollection." The Court stressed that "confusion between medicinal products may be life threatening or health threatening" and therefore, "a stricter approach should be adopted." This echoes the sentiment in F. Hoffmann-La Roche where the specialized nature of goods (though in that case it reduced confusion risk as they were prescription based) was noted.

Deceptive Similarity in Passing Off v. Infringement Actions

While the core question of likelihood of confusion is common to both infringement and passing-off actions, there are distinctions. Infringement is a statutory remedy available to the proprietor of a registered trademark (Ruston & Hornsby Ltd. v. Zamindara Engineering Co., 1969 SCC 2 725). Passing off is a common law remedy protecting the goodwill of an unregistered trademark or the trade dress/get-up of goods.

In Kaviraj Pandit Durga Dutt Sharma, the Supreme Court distinguished between the two, noting that in an infringement action, the statutory protection of the registered mark is paramount. In Ruston & Hornsby Ltd., the Court observed that "it very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved." Conversely, "although the defendant may be using plaintiff's mark the get up of the defendant's goods may be so different... that there would be no probability of deception... Nevertheless, in an action on the trade mark... an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark." This was also cited in Assam Roofing Ltd. & Anr. v. Jsb Cement Llp & Anr. (Calcutta High Court, 2015).

Dilution of Trademarks (Section 29(4))

Section 29(4) of the Act deals with the infringement of a registered trademark by use on goods or services which are not similar to those for which the trademark is registered, provided the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark. In ITC Limited v. Philip Morris Products Sa (2010 SCC OnLine Del 27), the Delhi High Court analyzed a claim of dilution regarding ITC's "W-Namaste" logo and Philip Morris's "flaming M" logo on Marlboro cigarettes. The Court found no infringement or dilution, emphasizing the dissimilarity of goods and the failure to meet the stringent criteria under Section 29(4), particularly the lack of a direct link or association that would cause detrimental impact.

Disputes Between Registered Proprietors

The question of whether a registered proprietor of a trademark can sue another registered proprietor alleging deceptive similarity has been consistently answered in the affirmative by Indian courts. In Raj Kumar Prasad & Anr. v. Abbott Healthcare Pvt. Ltd. (2014 PTC DEL 60 51), the Delhi High Court noted that "The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the defendant can be restrained from marketing goods under the offending trademark." This stance was reaffirmed in CORZA INTERNATIONAL AND ORS v. FUTURE BATH PRODUCTS PVT LTD AND ANR (2023 SCC OnLine Del 153).