The Concept of Deceptive Similarity in Trademarks

Trademarks have been recognized as one of the most valuable and significant assets of intellectual property rights. Trademarks are the form of intellectual property rights that provide recognition to the companies and the businesses. The companies and the business entities are known for their goodwill and reputation, which can only be achieved through an appropriate trademark. Trademark has acted as an indispensable instrument for the creation of a brand name and a value name for the enhancement of revenue generation of an enterprise. The trademarks have been adopted by the companies so that the consumers are able to recognize the goods based on their distinctiveness. However, the registration of a mark as a trademark if on the one hand helps the businesses for forming successful goodwill, then on the other hand it is also capable of being misused, thereby resulting in trademark infringement. Trademarks provide a guaranteed continuance in the flow of quality and have been referred to as “quality symbols’ which frame the order of priority for the consumers to purchase the goods and avail the services. Henceforth, there is a requirement for providing protection to the trademarks for the purpose of maintaining welfare in society. However, the most contentious issue under the laws of the trademark is that of ‘deceptive similarity’, which affects the identification of the registered trademark.

The term and the expression ‘deceptive similarity’ has been defined under Section 2(1)(h) which means that if there is a new registration of the trademark, which is similar in shape, color, packaging, etc and in resemblance, which if registered can result in public deceit and confusion, then such an expression is referred to as ‘deceptive similarity’. Therefore, in terms of a layman, deceptive similarity can be defined as a kind of similarity between the trademark in question and the already registered trademark or a well-known trademark, which can cause public deceit and confusion, and if this kind of a similarity between trademarks can lead the general public of average intelligence in a belief that the mark in question is related to a registered or a well-known trademark. The mark would be considered deceptively similar if the mark in question and the already registered trademark can tend to percept a connection between the marks.

The concept of deceptive similarity has evolved over time through judicial pronouncements, and the courts have presented their stance on the same. The Supreme Court in the case of Cadila Health Care Limited v. Cadila Pharmaceutical Limited has opined on the expression of deceptive similarity by the determination of it through various grounds:
Nature of the mark mainly wordmark, label mark, and composite mark.
The degree of resemblance of the works.
The nature of goods or the services for which the mark is used.
The level of average care and intelligence exercised by the consumer.
The primary mode used by the consumer for purchasing goods.
If there is any similarity or resemblance in the goods of the rival traders.

In the case of M/S Mahashian Di Hatti Limited Vs. Mr. Raj Niwas, Proprietor of MHS [181(2011) DLT 55] the plaintiffs were in continuous use of the mark ‘MDH’ since 1991 with respect to certain products such as “Kashmiri Mirch” and “KasooriMethi” and the plaintiff had all rights of exclusivity over its products. It was in 2011 when the disputes arose between the parties, wherein the plaintiffs came to know that the defendants were using products with the same packaging and outer appearance. The plaintiffs were aggrieved by the action of the defendants and subsequently filed a suit for claiming injunction with respect to trademark infringement under Section 29(1) of the Trademarks Act,1999 as the products were phonetically similar, thereby resulting in deceptive similarity. The court held the defendants liable for the visual similarity of the mark and restrained the defendants from manufacturing and selling any goods similar to that particular trademark.

In the case of Victoria Foods Private Limited v. Rajdhani Masala Company & Another, 1st September 2021, the plaintiffs were the original owners and proprietors of the trademark “Rajdhani” and were in the business of food products, condiments, confectionery, etc for a long time. The disputes arose between the parties when the plaintiffs were made aware through social media handles that the defendants were also engaged in the business of Indian spices with the name “Rajdhani Masale Company” and “New Rajdhani Masala Company”. Aggrieved by the actions of the defendants of using a mark similar to their already registered trademark, the plaintiffs filed a suit and an interim application claiming for relief in the form of injunctions. The defendants, on the other hand, contended and denied the claims of the plaintiffs. The Delhi High Court had to decide the issues between the parties on the basis of ownership, prior use, deceptive similarity, and delay in approaching the court. Henceforth, the court after duly hearing both sides of the parties pronounced the judgment in the favor of the plaintiffs on the basis that the plaintiffs were the original owners and proprietors of the trademark and were also the prior users of the mark. They further opined that the mark of the defendants was deceptively similar to that of the plaintiffs, and hence ruled in favor of the plaintiffs and restricted the defendants from using such marks. Secondly, the court also stated that the defendants were able to establish a prima facie case, thereby providing a balance of beneficence to them.
In the case of M/S. Dabur India Limited vs. Bison Laboratories Private, 22 June 2021, the plaintiffs were the original owners and proprietors of the registered trademark ODOPIC. The dispute arose between the parties when it come under the notice of the plaintiffs that the defendants were using the trademark named ODOSOL, for the purpose of cleaning preparations. The plaintiffs were aggrieved by the actions of the defendants and filed a suit claiming relief in the form of injunctions. The Supreme Court after hearing the plea of both the parties cited and pronounced judgment in the favor of the plaintiffs by granting a permanent injunction as the marks of the defendants were deceptively similar to that of the plaintiffs.