Deceptive Similarity

Trademarks play a vital role in creating a brand name and goodwill of any business.
Not only
does it helps in creating a brand value but also, aids in revenue generation. Being of such
vital importance, trademark is vulnerable to getting infringed and/or misused. One such way
of trademark is making "deceptively similar" trademarks.
"Deceptively similar" trademarks can be understood as a trademark created, almost similar

or a look-alike of an already existing trademark in order to deceive and confuse the
consumers. This concept of deceptive similarity has been discussed in The Trade Marks Act,
1999 under Section 2(h) 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 deceive or cause confusion."
The concept of deceptive similarity has been widely recognised as a ground for trademark
infringement under various trademark regimes. Under the Indian legal system as well,
deceptive similarity is consider as a ground for not granting the registration of the trademark
to an applicant by the Registrar of Trademarks.
However, the Act does not ascertain any criteria that can decide the ambit and scope of the
phrase "deceptive similarity," hence, there is a vacuum. In order to remove the vacuum, it is
essential to note the judicial stand on various cases regarding the said matter. Indian Courts
have dealt with several cases providing with landmark principles and guidelines in matters of
deceptive similarity. In order to adjudicate cases of intellectual properties and deceptive
similarity, principles of phonetic and visual similarity, goodwill, reputation, test of likelihood,
etc. have been recognised as some criteria to test deceptive similarity, by the Courts.
Some important cases concerning the judicial view of the Courts in the matter of
Deceptive Similarity
 M/S Lakme Ltd. v. M/S Subhash Trading1
In this case, the plaintiff was selling cosmetic products under the trademark name
"Lakme" and the defendant was also selling similar products under the name
"LikeMe". A case of trademark infringement was thus filed by the plaintiff. The High
Court held that the names were not deceptively similar and are two separate marks
with difference in their spelling and appearance.
 SM Dyechem Ltd. v. Cadbury (India) Ltd.2
In this case, plaintiff started a business of chips and wafers under the trademark
"PIKNIK". Later, defendant started business of chocolates under the name "PICNIC".
A suit alleging trademark infringement was filed thereafter. The Court held the marks
not to be deceptively similar as they are different in appearance and composition of
words.
 Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.3
In this case Supreme Court laid down certain guidelines for adjudication of matters
concerning deceptive similarity of trademarks. In this particular case, the parties to
the case were the successors of the Cadila group. The dispute arose on the issue of
selling of a medicine by the defendant under the name "Falcitab" which was similar to
the name of a medicine which was being manufactured by the plaintiff under the
name "Falcigo". Both the drugs were used to cure the same disease and hence, the
contention was that the defendant's brand name is creating confusion between the
consumers. Injunction was demanded by the plaintiff. As a defence, the defendant
claimed that the prefix "Falci" has been derived from the name of the disease,
i.e., Falcipharam malaria.
The court observed that because of the diversified population of the country and
varying infrastructure of the medical profession due to language, urban-rural divides,
etc. and with the probabilities of medical negligence, it is important that confusion of
marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby,
held that being medical products more precaution and care must be taken and the
names of the brand, therefore, being phonetically similar shall amount to being
deceptively similar.
 M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.4
In this case, plaintiff claimed that the defendant's trademark "Fauji" is defectively
similar with that of the plaintiff's, that is, "Officer's Choice". The claim was made on
the ground of similarity of idea in making of the trademarks as the word "Fauji" is a
hindi translation of a military officer. Adding to it, both the parties are in the business
of alcoholic beverages. Further, packaging of both the bottles are also alike.
Though, trade dress plays a significant role in deciding the cases of trademark
infringement, in this case, the court held that there is no deceptive similarity between
the trademarks "Officer's Choice" and "Fauji" and hence, dismissed the trademark
infringement suit.
Conclusion
The doctrine of deceptive similarity is widely used in the Courts in matters of trademark
infringement. Trademark being of vital importance in business and its goodwill it is of high
need to protect it from misuse and infringement. Judiciary has taken a keen interest in
matters of Intellectual Properties and several principles and guidelines have been provided
through various judicial decisions in order to make adjudication of cases of trademark
infringement much smooth. The court has also looked after the problems which may arise if
a strict criteria is made for determination of deceptive similarities. It is evident from the cases
above that the courts are going beyond the literal meanings of the legislations to provide
justice and safeguarding the rights of the traders and protecting the interests of the
consumers.

Deceptive Similarity

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Trademarks play a vital role in creating a brand name and goodwill of any business.

"Deceptively similar" trademarks can be understood as a trademark created, almost similar

 M/S Lakme Ltd. v. M/S Subhash Trading1

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