What is the concept of ‘Deceptive Similarity’ in Trademark Law?

What is Deceptive Similarity Under Trademarks Law?

• Deceptive similarity in trademark law refers to a situation where two trademarks, while not identical, resemble each other closely enough to potentially cause confusion among consumers. This confusion could lead people to mistakenly associate the later mark with the earlier one, thereby affecting their purchasing decisions. The essence of deceptive similarity lies in the ability of the newer mark to capitalize on the goodwill and reputation of the original mark holder.
• The term “deceptively similar” is defined under Section 2(1)(h) of the Trade Marks Act, 1999[1] as a mark that so closely resembles another that it is likely to deceive or cause confusion. This definition forms the foundation for assessing whether a trademark can be registered or whether its use infringes an existing trademark.
• Additionally, Section 11(1)[2] of the Act prohibits the registration of trademarks that are deceptively similar or identical to an existing mark, as it could cause confusion in the minds of the public.

Different Types of Similarity Found in Marks

When assessing trademark similarities, it is essential to evaluate various types of similarities that could lead to consumer confusion. These types of similarities help in determining whether two trademarks are deceptively similar. The primary types include:

1. Visual Similarity

Visual similarity refers to how trademarks appear to consumers. This type of similarity focuses on the overall visual elements of the marks, such as common syllables, prefixes, suffixes, shapes, and design. The length of the marks, color schemes, fonts, and graphical elements are also considered. Marks that resemble each other in these visual aspects can easily confuse consumers, especially if encountered in a fast-paced shopping environment.

Example: In the case of Starbucks Corporation v. Sardarbuksh Coffee & Co.[3], the logos were visually similar as both included a circular design with intricate details, leading to a likelihood of consumer confusion.

2. Phonetic (Aural) Similarity

Phonetic similarity arises when trademarks sound alike when spoken aloud. This similarity is particularly significant in oral communication or advertising where consumers rely on hearing rather than seeing the mark. Similar pronunciation, enunciation, or the number of syllables can lead consumers to mistakenly believe two products are associated.

Example: The marks “Zegna” and “Zenya” or “Fevikwik” and “Kwikheal” sound similar when spoken, leading to a high risk of confusion based on phonetics.

3. Conceptual Similarity

Conceptual similarity evaluates the underlying idea or meaning conveyed by the trademarks. Even if the marks differ visually or phonetically, if they evoke a similar idea, image, or concept in the consumer’s mind, it can cause confusion. Marks with similar themes or messages may lead consumers to believe that the goods or services are related, despite their differences in appearance or sound.

Example: Trademarks like “Gluvita” and “Glucovita” or “Lakme” and “Likeme” convey a similar concept related to health or beauty products, increasing the likelihood of consumer confusion.

4. Phonetic and Visual Similarity (Combined)

In some cases, trademarks may exhibit both phonetic and visual similarities, which significantly increase the likelihood of confusion. When a mark looks and sounds similar to another, it becomes challenging for consumers to distinguish between the two, especially during quick or casual purchases.

Example: The marks “Wipro” and “Epro” or “Gluvita” and “Glucovita” not only resemble each other visually but also share phonetic similarities, creating a compounded risk of confusion.

Criteria for Determining Deceptive Similarity

In Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd.[4], the Supreme Court of India laid down the specific factors that need to be considered in determining deceptive similarity. These criteria include:

1. Nature of the Marks

Whether the marks are words, labels, or composite marks must be taken into account. A mark may consist of words or graphical elements, and the interplay of these elements influences the level of similarity between the two marks.

2. Degree of Resemblance

The degree of phonetic, visual, and conceptual resemblance is critical. The court examines how the marks sound, look, and what they convey. Even if the marks are not identical, significant resemblance in one or more of these aspects may be enough to cause confusion.

3. Nature of Goods or Services

The nature of the goods or services for which the marks are used is another key factor. If the trademarks are used for similar or related goods/services, there is a greater likelihood of confusion compared to when the goods/services are entirely unrelated.

4. Class of Purchasers

The class of consumers who are likely to purchase the goods or services must be considered. This involves assessing their level of education, intelligence, and the degree of care they exercise during the purchase. Different consumer profiles react differently to potentially confusing marks.

5. Mode of Purchasing

The mode of purchasing, including the channels through which goods or services are bought, is also a factor. Whether the goods are bought online, over-the-counter, or through more formal means can affect the potential for confusion. The easier and quicker the purchase, the higher the risk of deceptive similarity.

6. Similarity in Goods

The performance, character, and nature of the goods or services provided by the rival traders also matter. If the goods or services are similar in their purpose or function, consumers are more likely to be misled.

Is Intention to Deceive Necessary for Proving Deceptive Similarity in Trademark Law?

In trademark law, the intention to deceive is not a critical factor in determining whether a mark is likely to confuse or deceive the public. The primary concern is the effect the mark has on consumers, whether it causes confusion regarding the goods, their origin, or their trade connection. It is irrelevant whether the user of the mark intended to mislead; the focus remains on the likelihood of confusion caused by the mark itself. Even if there is no intention to deceive, the defendant is not absolved of liability if the mark misleads consumers.

This principle was clearly established in Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd.[5], where the Bombay High Court held that once the plaintiff’s reputation and goodwill are proven, the plaintiff is not required to demonstrate the defendant’s fraudulent intent. The court concluded that proving deceptive similarity is sufficient, and the defendant’s intent to deceive is not a necessary element in such cases.

Similarly, the Supreme Court in Mahendra and Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.[6] reinforced this principle by emphasizing that the focus should be on the likelihood of deception rather than the defendant’s intent. The potential for confusion among consumers is the determining factor in trademark infringement cases, not whether the defendant intended to cause that confusion.

Further supporting this view, the Supreme Court in K. R. Chinna Krishna Chettiar v. Sri Ambal & Co., Madras and Anr.[7] ruled that a trademark can be deemed deceptively similar without any requirement to prove intent to deceive or confuse. The court stressed that the probable impact on the ordinary consumer is what matters in evaluating deceptive similarity.

In conclusion, the intention to deceive is not necessary to prove deceptive similarity in trademark cases. What matters is whether the mark could cause confusion, and once this is established, the defendant’s intent becomes secondary.

[1] Section 2(1)(h) of the Trade Marks Act, 1999, s. 2(1)(h).

[2] Id. at s. 11(1).

[3] CS (COMM) 1007/2018.

[4] AIR 2001 SC 1952.

[5] AIR 1996 BOM 149.

[6] AIR 2002 SC 117.

[7] 1970 AIR 146.