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  • Writer's pictureIRALR


This article has been authored by Winnie Mathew, a third-year student at Symbiosis Law School, Hyderabad.

Understanding the Concept of Deceptive Similarity

Trademarks play a crucial role in creating and establishing a sense of standard, goodwill and recognition of a product or enterprise. It is an indispensable instrument in creating a brand name, value, and enhancing revenue generation of an enterprise. Considering the significant role, it plays in helping build the brand value and brand name of a business, it is important to realize and recognize the loopholes and various ways it can be susceptible to infringement and misuse. One such menace that businesses face is ‘deceptively similar’ trademarks, i.e., trademarks that are quite similar or look alike a trademark that already exists, for the purpose of deceiving and confusing the consumers and other interested parties.

A mark shall be considered to be deceptively similar to another mark if it closely resembles that other mark in such a manner that it is likely to deceive or cause confusion. This concept has been considered as a ground for trademark infringement under numerous trademark authorities. This is also considered a ground for not granting, to an applicant, the registration of a trademark, by the Registrar of Trademarks, under the Indian intellectual property laws and legal system. Intellectual Property law and its associated statutes do not establish the standard that helps determine the ambit and scope of the expression ‘Deceptive Similarity’, which thereby creates a vacuum.

This concept and its exposition profoundly rely on the various judicial interpretations of trademark infringement cases. It has been observed that these judicial interpretations are adjudicated on certain basis such as the principles of phonetic and visual similarity, reputation, rule of entirety, goodwill, and the test of likelihood and confusion.

Judicial interpretation of Deceptive Similarity

The case of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors. raises the question of whether the trademark of the defendant company was deceptively similar to the international coffee chain either phonetically or visually. After considering how a consumer would perceive the trademark of the defendant and whether the identification of the two brands in question would create confusion, the Delhi High Court by way of an interim order issued the changing of the defendant’s trademark to ‘Sardarji-Buksh’ to ensure adequate distinction from Starbucks.

What is important to consider is the perception of the consumer or purchaser who is considered to be a man with ordinary intelligence, as held in the cases of National Sewing Thread Co. Ltd. v. James Chadwick and Bros andPolaroid Corporation v. Polarad Electronics Corporation in 1961.

In the case of Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd, the Apex Court decided that the name ‘Mahendra and Mahendra’ caused trademark infringement by being deceptively similar to the name ‘Mahindra and Mahindra’ which was in use for more than five decades and had established a brand name, value and had acquired distinctiveness. This decision was made on the basis of phonetic similarity.

However, in the case of M/S. Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd, phonetic similarity did not hold good with the Apex Court since the logos adopted by the two parties were different altogether. Therefore, even though the adopted names in question were undeniably similar, a bare perusal of the two trademarks with regards to their font, colour, logo, slogan, etc., would indicate hardly any similarity notable substantial enough to amount to trademark infringement. Additionally, the two companies dealt with different classes of goods which created no room for doubt or confusion in the minds of consumers.

Similarly, in the case of SM Dyechem Ltd. v. Cadbury (India) Ltd, it was held that the trademarks ‘PIKNIK’ and ‘PICNIC’ were not deceptively similar since they differed in appearance and composition of words. This was also decided on the fact that they were engaged in the business of different goods- the former in the business of chips and wafers and the later in the business of chocolates.

In M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr which dealt with trademark infringement for the same class of goods (alcoholic beverages), the court held that the concerned trademarks i.e., “Officer’s Choice” and “Fauji’s” were not deceptively similar. Despite similarity in the red italic font style, white background, product and even consumer base, the Delhi High Court held that the trademarks weren’t similar since the words were phonetically different, i.e., the word ‘officer’ referred to ‘a person in power’ and the word ‘fauji’ referred to a simple soldier or military man.

Conclusion and Suggestions

The study of the different case laws discussed establishes the relevance of the doctrine of deceptive similarity in trademark infringement cases under the Indian intellectual property law and legal system. In the absence of a statutory definition and ascertained scope of this doctrine, its understanding solely relies on the various judicial interpretations based on different principles and the varying facts of cases. The trademark of a company is what sets it apart from its competition in its respective class of goods and is often subject to infringement and misuse which can severely damage the reputation, brand value and revenue generation of the business.

When compared to laws of other jurisdictions such as that of the United States of America, the trademark laws of the latter are far more descriptive and effective with regards to the issue of deceptive similarity. Modification, better enforcement and the creation of a more effective system of intellectual property laws is the solution to combat such kind of infringement. What business owners and other concerned parties must ensure is the timely registration of their trademark to seek preliminary protection.

The scope and ambit of deceptive similarity is ever changing and evolving in the better attempt of safeguarding the rights of traders and protecting interests of consumers. This also paves way for the realization of the importance of the awareness of intellectual property laws, trends and practices among aspiring entrepreneurs, businessmen and other parties whose interests and inclinations may lie in this field.

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