Deceptive Similarity

under Trademark
Presented by:

Abhishek Gandhi (A012)

Abhinav Gupta (A013)
Nipun Paleja (A027)
Nitin Tiwari (A037)
Outlook Abstract

Introduction

History of Trademark Law in India

Deceptive Similarity under Trademark

Cases
Abstract
• It is of paramount importance for every business venture to develop its own brand value.

• Thus trademark plays a pivotal role in the formation of such identity and helps in revenue generation.

• It is to be noted, that where a trademark furthers a prospect of a successful trade, it also becomes
highly vulnerable to being misused or infringed.

• One such mode of infringement is by way of creating a trademark which is “deceptively similar” to the
pre-existing trademark in order to confuse the consumers and in cash the goodwill of the already
established trademark.

• This not only puts a question to the reputation of the original trademark holder but also results in
economic loss.
Introduction
• Intellectual Property Rights allows people to assert ownership rights on the outcomes of their
creativity and innovative activity in the same way that they can own physical property.

• Trademark is one of the areas of intellectual property and its purpose is to protect the mark of
the product or that of a service.

• A trademark is a distinctive sign or indicator used by an individual, business organization, or

other legal entity to identify for consumers that the products or services on or with which the
trademark appears originate from a unique source, designated for a specific market and to
distinguish its products or services from those of other entities.

• The essential function of a trademark is to exclusively identify the commercial source or origin of
products or services, so a trademark, properly called, indicates source or serves as a badge of
origin

• Trademarks provide their owners with the legal right to prevent others from using a confusingly
similar mark.
History of Trademark law in India
• 1877 – first demand for introducing a trademark legislation in India was made by
the Bombay Mill Owners‘ Association to the then Government of Bombay.

• 1879 – Though a Bill was introduced in the Imperial Legislative Council, there was
no outcome of the process

• However the law governing trademarks found statutory recognition in the Indian Penal Code,
1860 (wherein counterfeiting and falsifying a trade mark were made punishable) and the
Specific Relief Act, 1877 (which provided for restraint of use of trade marks by grant of
injunction).

• 1940 – India borrowed the British Trademark Act, 1938 and prepared the Act on the subject
as Trademark Act of 1940 and introduced for the first time a machinery for registration
and statutory protection for trademarks in India.
History of Trademark law in India
• 1958 – Trademark Act 1940 was replaced by the Trade and Merchandise Marks Act, 1958.

• The objective of the Act was to provide for registration and better protection of trademarks
and for prevention of use of fraudulent marks on merchandise

• 1999 – In order to bring the Indian trademarks law in compliance with the country‘s TRIPS
obligations, the new trademark regime - the Trade Marks Act, 1999 - was introduced and
enacted.

• 2003 – the Trade Marks Act, 1999 came into force on September 15, 2003

• The new law under the Trade Mark Act, 1999 brought in significant changes incorporating
not only the prescribed minimum protection standards but the existing jurisprudence
Deceptive Similarity under Trademark
• Section 2(h) of the Trade Mark Act, 1999 define Deceptively Similar as “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
or cause confusion.”

• Traditionally it was held that there can be an infringement of a trademark only when there is a
likelihood of confusion as to the origin of the trademark.

• If there is no similarity of goods and services then the question of likelihood of confusion does not
arise.

• It is not sufficient if one mark merely leads to a likelihood of recall of the other mark.

• Whenever two marks are identical, there is a prima facie case of infringement due to confusion.
But there are situations where the marks are not identical but are nearly similar.
Deceptive Similarity under Trademark
• In those cases, the plaintiff has to establish that the mark is identical enough to cause
confusion in the minds of the buyer and hence would be misleading.

• There needs to be an element of resemblance, so strong to cause a deception in the minds of

the buyers.

• The ultimate judge of similarity is the consumers who would be misled into distinguishing
between two marks and hence failing to compare the two.

• Deception can arise with regard to:

Deception as to Deception as to Deception as to

goods trade origin trade connection
Criteria for a court of law or tribunal for determining
deceptive similarity
The nature of the marks, whether the marks are words, labels or composite marks;

The degree of resemblance between the marks, phonetic or visual or similarity in idea;

The nature of goods or services in respect of which they are used as trademarks;

The similarity in the nature, character and performance of the goods/services of the rival
traders/service provider

The class of purchasers/customers who are likely to buy the goods or avail the services, on their education
and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;

The mode of purchasing in the trading channels that the goods/services traverse in the course of business or
placing order for the goods;
CASES
• It was held that there was striking resemblance
between the two words. Delhi Lakme ltd vs.
Subhash Trading
• The two words are also phonetically similar.

Plaintiff was selling cosmetic

• There is every possibility of deception and products under the
confusion being caused in the mind of the
prospective buyer of the plaintiff‘s products.
registered Trade Mark
―Lakme. Defendant was
using the Trade Mark
―LikeMe for the same class
• Injunction was made permanent.
of products

• Trial Court held in the favor of appellant and held
that the two are Deceptively Similar Mark.
• On appeal, High Court reversed of the trial court
and held that the two marks are different in their
appearance and word composition.
• Supreme Court held the view of the High Court.
SM DYECHEM LTD.
V. CADBURY (INDIA)
LTD
Plaintiff started business in 1988 in four
products like potato, chips, potato
wafers, corn-pops.
In January 1989 it started using the
trade mark PIKNIK.
It applied for registration on 17.2.1998.
Respondent was found using the mark
'PICNIC' for chocolates.
The appellant filed the suit based on
alleged infringement of trade mark and
passing off and for temporary
injunction.
• It was held that there was striking resemblance
between the two logos.
• There is every possibility of deception and
confusion being caused in the mind of the
prospective buyer of the plaintiff‘s products.
• The plaintiff company has accordingly sought an
injunction restraining the defendant from using
the infringing logo ―MHS or any other trademark
identical with or deceptive similar to plaintiff‘s
registered trademark ―MDH logo.
• The plaintiff was also awarded punitive damages
amounting to Rs. 1 Lakh against the defendant.
M/S Mahashian Di
Hatti ltd. Vs. MR. Raj
Niwas, Proprietor of
MHS Masalay
The plaintiff company engaged in the
business of manufacturing and selling
spices and condiments ,which are
being sold under its registered logo
comprising ―MDH within three
hexagon device on red colour
background)and is registered since 31st
may 1991
The defendant has been using the logo
―MHS within hexagon device with red
colour background on the carton is
alleged to be similar to those being
used by the plaintiff company.
• The plaint and appeal both was rejected by the
District Court and Bombay High Court respectively.
• Supreme Court came to conclusion that both the
marks are Deceptively Similar and refused to
interfere with the decision of the Bombay High
Court.
• It was held that there was striking resemblance
between the two words.
• The two words are also phonetically similar.
• There is every possibility of deception and confusion
being caused in the mind of the consumer.
Mahendra and Mahendra
paper mills ltd. V.
Mahindra and Mahindra
ltd
Mahindra and Mahindra, respondent is a
company under the Company Act, 1956.
The Mahindra and Mahindra is not a single
company but represent the different company
under its head.
It has acquired the considerable goodwill,
reputation and has large amount of turnover.
The appellant contained that it‘s not violating any
of the law as it is using it honestly.
They also contended that they are better known as
―Mahendrabhai in corporate sector; also they
paid the income tax in its name and have
reputation regarding in separate sector of
business.
They only came to known as ―Mahendra and
Mahendra‖ after they started the firm with his
brother.
• Supreme Court held that Schering corporation
1. The mark ―Temodal /Temodar and Temoget and ors. V. Getwell
are not phonetically and in idea similar. life sciences india pvt.
2. These marks are Portmanteaus and can be used Ltd.
for the trademark.
3. The price range of both the products are In the instant case, Plaintiff filed
different; also the product is only given to the an application restraining
practitioner who are highly qualified and well defendant from using the mark
known about the product in present era. ―Temoget in respect of
pharmaceuticals products
4. Hence there is no chance of the confusion Temozolomide on the ground that
the mark ―Temoget is deceptively
similar to Plaintiff registered
trademarks ― Temodal/Temodar
to the plaintiff in respect of same
pharmaceutical product used to
cure the Brian Cancer.
• After hearing the contentions of both the parties and considering the fact that the
medicinal preparations were sold on prescription and each of them were Schedule H
drugs, the Court vacated and set aside the injunction previously granted to the Plaintiffs
on the basis of the following:
1. The two trademarks were “OXETOL” and “EXITOL”. Undoubtedly, the word TOL was
prefixed by a syllable that predominantly contained ‘X’.
2. The active ingredients of the two products were completely different namely
Oxcarbzapine and Lacitol.
3. OXETOL was sold in capsules or tablets in blister packs. EXITOL was a administered
in the form of a syrup or granules.
4. OXETOL was prescribed only by neurologists. EXITOL was prescribed by physicians at
hospitals.
5. OXETOL was used in treating epilepsy and bipolar disorders.
6. EXITOL was a laxative that could be administered only to patients admitted in
hospitals, prescribed by trained doctors and to be administered by trained nurses.
7. Although the two marks were phonetically similar, there were visual dissimilarities in
the packaging, label, artwork, graphics, scheme and trade dress.
8. By themselves, the products were meant for different classes of purchasers and
consumers.
9. The prices of the two products were different.
10. A chemist could not commit the mistake of selling the wrong drug.
Sun Pharmaceuticals
Industries Ltd vs.
Anglo-French Drugs
and Industries Ltd
The Plaintiff sought and was granted an injunction
against the Defendant restraining it from using the
trademark EXITOL on the grounds that it infringed the
plaintiff’s registered trademark OXETOL.
In this case, the mark OXETOL (Sun
Pharmaceuticals) was being used as a brand name for
Oxcarbazepine whereas the mark EXITOL (Anglo-
French Drugs and Industries ltd.) was being used for
Lactitol monohydrate.
In defending its adoption of the trade mark, the
Defendant brought to the Court’s notice a number of
significant and pertinent differences between the two
trademarks and the medicinal products in question
such as: the derivation of the marks, their word
structures (prefixes), active ingredients, product forms,
packaging, artwork/graphics, scheme and trade dress,
disease conditions treated, prescribing doctors, the
purchasers of the product, ultimate consumers and the
price.
Decision of the Court
Win-Medicare Private
• The Court first applied the test of likelihood of
confusion and concluded that there was a risk of Limited v. Galpha
confusion. Laboratories Limited
• The Court held that where the defendant’s mark • The plaintiff manufactured
contains the essential feature of the plaintiff’s microbicidal solutions, surgical
mark combined with other matter scrubs, ointments, germicidal
gargles, and various other
• The Court held that it was beyond doubt that the pharmaceutical preparations under
defendants had knowingly adopted a deceptively the trademark “Betadine” which
similar mark as was evident from the identical were sold in various packaging
trade dress, colour, and similar packaging. including tubes, bottles, jars,
cartons etc.
• The ‘common to trade’ defense of the defendants • In May 2013, the plaintiff noticed
was rejected in favour of prolonged use of the an advertisement in the Trade
plaintiff and the Court granted an injunction Marks Journal for registration of
restraining the defendants from using the the mark Bectodine-M.
trademark “Bectodine/Bectodine-M” or any other • The plaintiff filed an opposition.
similar mark.
THANK YOU