CONCEPT OF DECEPTIVE SIMILARITY UNDER

TRADEMARK LAW

ABSTRACT :

Every business and company is known for its brands and goodwill in the market, this act as
the identity through the trademark. Trademark plays a vital role by helping the business to
grow its reputation for a successful business venture, but however each coin has its different
sides, on one hand trademark helps the business to grow successful in goodwill, and on the
other hand it is vulnerable to be infringed or being misusing the existing trademark as a
“deceptively similar” trademark. The Deceptive similarity in trademarks is a concept that
refers to the similarity between trademarks and brands that can cause confusion among
consumers. This occurs when two brands have similar names, logos, or other elements that
make them look alike. Deceptive similarity can lead to brand confusion and dilution, as
consumers may be unable to distinguish between the two brands, leading to a loss of
distinctiveness and recognition of the original brand. This concept is at the heart of
trademark law and is used to protect the rights of proprietor of a trademark by preventing
competitors from passing off their goods and services as those of another company. The
article highlights the importance of deceptive similarity in trademarks, its potential to lead
to brand confusion, principals, grounds, and its use in trademark law.

Keywords: Trademark, Deceptive similarity, Distinctiveness, Passing off, Infringement.

INTRODUCTION :

Trademark is a type of intellectual property that is used to protect the brand name of a
product Or services. A trademark that is popularly known as the brand name, but in a
layman’s language . It is a visual symbol of a brand which may be a “word” or “logo” to
indicate the sources of the Goods as a signature, name, device, label, numerals or
combination of colours or service, and Other marks of commerce is to distinguish it from
other similar related to goods and services Originating from the others. The trademark is the
distinctive sign which identifies certain goods And services as those who produced or
provided by the specific person or enterprises. The Owner of Trademark provides the legal
rights to prevent others from adopting a confusingly Similar imprint mark. One of the major
barriers to trademark registration is that the trademark’s Similarity to the present trademark
or existing trademark.
THE CONCEPT OF DECEPTIVE SIMILARITY IN TRADEMARK

The trademark must meet the criteria of distinctiveness, non-similarity, uniqueness and non-
Prohibited by law. It must be registered in India. Therefore, one of essential and the common
Ground of objecting the trademark is the ‘deceptive similarity’.

In simple terms, when a mark is so similar to another registered trademark that it has the
Potential to deceive or confuse consumers into believing that it is associated with the
registered Or well-known mark, it is referred to as deceptively similar. This definition is
provided in Section 2(1)(h) of the Trade Marks Act, 1999.

HOW THE DECEPTIVE SIMILARITY MARK IS CONSIDERED?

The deceptive similarity mark is considered as a ‘whole from one mark to the other portion
Mark’ not as a part of the trademark. In regards to its visual, phonetically and conceptual
portio The logo or word of the mark. As per the principle of totality under section 17 (1) of The
Trademarks Act, 1999 the Applied Mark should be considered as a whole and must not be
Divided in portions.

THE PRINCIPLEON HOW TO DIFFERENTIATE THE MARK FROM ANOTHERR IN CASE OF

The principles are to differentiate the mark from the other mark is by –

• Nature of the mark in respect to – word, symbol, logo, combination of marks;

• Nature of the goods and services of the mark, in respect to which class the mark is used In
goodwill in market;

• The concept of similarity as how the mark visually, phonetically, aurally the Pronunciations
of the mark, conceptual having a distinctiveness in mark

• Nature of market for its goods and services of the mark by making approachable Towards
its consumers

THE GROUNDSFOR REFUSAL FOR THE TRADEMARK

There are two grounds that is based on for the refusal of the mark under trademark act 1999
for The registration of the mark –

Absolute ground -Section 9(1)(a) of the Trademark Act, 1999 outlines a condition for
Registering trademarks that lack distinctive qualities and cannot differentiate between the
goods Or services offered by one person from those offered by another. This section also
prohibits Registration of trademarks that consist solely of marks or indications that can be
used in trade To describe various aspects of the goods or services such as their type, quality,
any other Characteristic.

Relative ground–Section 11 of the Trade Marks Act, 1999 outlines the grounds for refusing
Registration of a mark if it is either identical or similar to an existing trade mark and covers
Similar goods or services. In such cases, if the public is likely to be confused or make an
Association with the earlier trade mark due to the similarities between the marks and the
Products or services they represent, registration of the new mark may be denied.

Infringement –Section 29 of the Trademark Act, 1999 stipulates that if a person who is neither
A registered proprietor nor a registered user, uses a mark in the course of trade that is
identical Or deceptively similar to a registered trademark for the same goods or services,
then it Constitutes infringement of the registered trademark.

As the new mark takes the unfair advantage of the already existing well known trademark
that Build a goodwill in market for its brand. Proprietor of the registered trademark have an
absolute Legal right and statutory protection for their mark. Therefore, a unauthorized
creator as a third Party can create a similar mark which can restrain by courts under the
action of passing off, to Which the mark cannot be registered under the names of multiple
proprietors or the Unauthorized creators by diluting the trademark of a renowned well known
famous mark by Diminishing its uniqueness, distinctiveness and effectiveness of the mark.

JUDICIAL INTERPRETATION

The concept of the deceptive similarity in trademark act 1999, is not been explained in
details, So in support the judicial decision help to understand the concept of the deceptive
similarity in Much better understanding.

1. In the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd. Air 1960
SC142, 19601 SCR 968, in a court ruling, it was stated that when determining whether
two Goods are similar or dissimilar, one must take into account the characteristics of
the Customers who are likely to purchase those goods. It is important to keep in mind
that an Average person with reasonable intelligence should not confuse the goods of
the two Corporations. This means that while assessing similarity, the court should
consider the type Of consumers who are likely to purchase the goods and whether
such consumers are likely To be misled or confused by the similarity between the two
goods.
2. Prem N. Mayor & Ors. Vs. Registrar Of Trademark And Ors. Air [(1969) Cal 80] An
Observation was made that there are no fixed or restrictive guidelines for determining
Distinctiveness in trademarks. This distinctiveness could be present in the individual
Elements of the trademark or in the overall design or arrangement of the trademark.
 In other Words, there are no specific or inflexible criteria for determining whether a
trademark is Distinctive or not. It could be based on certain unique and identifiable
features of the Trademark or the way these features are arranged. A mark should
therefore be considered as a whole on its total impression and as a general rule,
attempts to dissect a mark in order To destroy distinctiveness have been
disapproved…”.
3. It is respectfully submitted that the mark should not be split up but looked at as whole
mark In its entirety. In the case of S. M. Dyechem Ltd. V. Cadbury India Ltd. Air (2000)
Sc 2114, the Supreme Court held that “the trademark is the whole thing-the whole
picture on Each to be considered. The marks, names or get-up concerned must
always be considered As the whole thing, as the true test is the key factor in
determining whether a trademark is Likely to cause confusion, deception, or mistake
is to evaluate the overall impression created By both the visual and oral aspects of
the trademark.
4. In Dubai Islamic Bank v. Union of India, Judgment dated 04.12.2019 in W.P. ©
12749/2019, it was stated that “the distinctive nature of a mark can be established
based on The character of the mark, the extent of use of the mark, the global priority
in adoption of The mark the well-known status of the mark the advertising and
promotional investment in The mark, judicial decisions upholding the distinctiveness
of the mark and the localized Reputation of the mark. Thus, Registrar would have to
consider all these factors before Rejecting a mark”
5. Also in the case of Cadila Health Care Ltd. Vs. Cadila Pharmaceutical Ltd. [2001 SCC
73]A ruling stated that when evaluating trademarks for similarity or dissimilarity, it Is
essential to consider the trademark as a whole and not focus on individual
components. Comparing a part of one trademark with a part of another trademark is
not the correct Approach. Instead, the trademark should be evaluated as a complete
entity, and the overall Impression it creates should be considered. In simpler terms,
the entire trademark should Be assessed and compared with the entire other
trademark, rather than focusing on Individual parts.
6. The coexistence would not cause any confusion or deception amongst public. The
Courts In Kehsav Kumar Aggarwal vs M/s NIIT Ltd. [2013 (199) DLT 242] have stated
that “the two competing marks must be judged both by their look and by their sound.
All the Surrounding circumstances must be considered”.
7. It is further submitted that while comparing the marks the test of totality must be
considered In regard of words, visual appearance, and phonetics of the marks.
Reliance is placed on the decision in F. Hoffmann La Roche and Co. Ltd Vs. Geoffrey
Manners and Co. Pvt. Ltd, Air (1970) SC 2062In a court ruling, it was established that
the key criterion for Determining the acceptability of a proposed trademark is whether
 the overall impression Created by the trademark is likely to mislead, deceive, or cause
confusion among consumers Who are familiar with the existing trademark. In other
words, the court emphasized that it Is necessary to consider the trademark as a
whole and assess its potential to create confusion Or mistake in the minds of
consumers who are accustomed to the existing trademark. This Means that the
overall impression created by the proposed trademark should be evaluated To
determine its potential to mislead or confuse consumers.
8. Also, it is submitted that the mark to be considered as whole in regards to words,
visualand Phonetics in case of the court in Hindustan Unilever Limited v. Ashique
Chemicals [2011 (47) PTC 209 (Bom)], while comparing the mark Sunlight with
Sunplus, held that the Mere fact that the marks are prefixed by the letters & “Sun”
would not indicatedeceptive Similarity.
9. In Nandini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd. Air
(2018) SC 3516the Supreme Court of India refused to declare ‘Nandhini Deluxe’ and
‘Nandini’ as deceptively or confusingly similar within the same class of goods. While
there May be a similarity in the pronunciation of the words “Nandhini” and “Nandini,”
it was Determined that the trademarks used by the two parties are distinct from each
other. The Appellant and Respondent have used completely different fonts to write
their respective Trademarks “Nandhini” and “Nandini,” resulting in a significant
difference in their Appearance. Therefore, despite the phonetic similarity between
the words, the overall visual Impression created by the trademarks used by the two
parties is distinct from each other.

CONCLUSION

Deceptive similarity is one of the most important aspect of the trademark law that help to
refuse The mark to be registered. Therefore, as a result the proprietor of the registered
trademark Cannot use and utilise the other proprietor’s mark at any point of a time of well
established, Renowned and goodwill in the market which will creates the confusion to the
consumer and to The general public.

SUGGESTIONS

As the new businesses growing in market, the challenging it is has become to prove its
Distinctiveness of the brand of goods and services to the consumers

My suggestion for the mark to be distinctive in respect to the ‘deceptive similarity’ that is to
Have –
1. A proper trademark search report which is also known as (TSR) before applying for the
Registration of the mark, may the mark it be ‘logo’ or ‘word’ as research for the
Similarity of the existing mark that are already registered under IP India and the mark
Which is not register but famous by its consumers, it is required to have proper search
Before applying for the mark to be distinctive in nature by its visuals, colours, artistic
Similarity, of the mark, as this reduce the chances of the deceptive of similarity of the
Mark. Therefore, there must a thorough analysis of registered trademark so in order
to Limit the possibility of deceptive similarity.
2. To have research on the fraudulently use of the registered mark, so that it doesn’t
Infringe the rights of the proprietor of trademark and grant the injunction for the
Unauthorized user.
3. Taking into account the business’s invoices for passing off.
4. Consider the consumer and the general public while creating a mark so that it doesn’t
Create a confusion among the public for its goods and services of the mark, that
creates Loss to the business.