Deceptive Similarity In Trademark

Trademarks play an important role in creating the brand name and goodwill of any business. It not only helps in creating a brand value but also helps in revenue generation. Being of such vital importance, a trademark is susceptible to getting infringed and/or tainted. One such way of misusing trademark is making “deceptively similar” trademarks. “Deceptively similar” trademarks can be considered as a trademark that has been created and is to a great extent similar or a copy of an already existing trademark in order to cheat and confuse the consumers. Deceptive Similarity has been described under section 2(h) of the Trademarks Act, 1999 whereby it is stated that a mark will be considered to be deceptively similar to another mark if there is a close resemblance present between them which would likely cause confusion.

The concept of deceptive similarity has been provided clarity by various judicial precedents passed by the various High Courts as well as the Apex Court. In the case of M/S Lakme Ltd. v. M/S Subhash Trading1, the plaintiff was trading cosmetic items under the trademark name “Lakme” and the defendant was also selling analogous products under the name “LikeMe”. Thus, a case of trademark infringement was filed by the plaintiff. It was held by the Court that the names were not deceptively similar and they were two separate marks with differences in their spelling and appearance. In SM Dyechem Ltd. v. Cadbury (India) Ltd.2the plaintiff started a business of chips and wafers under the trademark “PIKNIK”. Later, the defendant started the business of chocolates under the name “PICNIC”. Therefore, a suit alleging infringement of trademark was filed. The Court held the marks not to be deceptively similar as they are different in appearance and composition of words. In Shreya Life Sciences Pvt Ltd v. Magna Biochem Pvt Ltd.3, the Delhi High Court held that an overall comparison of both the marks, without undue emphasis on points of similarity and dissimilarity should be first undertaken. A mark should not be dissected or split into its component parts and each part that compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. The conflicting marks therefore should be compared in their entireties. In Blackwell v Crabb4, it was held that Crabbs’ Pickles on a label resembling Blackwell’s Pickles on a label was not an infringement of the plaintiff label as the customers would identify the goods by the name of the manufacturer. The elements of the labels were common to the trade.

Therefore, if a proprietor of a trademark wants to take the plea that a deceptively similar mark is being used by someone else, the mark needs to be a coined work having a secondary meaning since trademark protection cannot be claimed on generic words. In 2018, in Bigtree Entertainment v Brain Seed Sportainment5, the Delhi High Court recently denied the Plaintiffs, proprietors, and owners of the website bookmyshow.com, an interim injunction against the Defendant’s use of the domain bookmysports.com. The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark BOOKMYSHOW was descriptive in nature and not an arbitrary coupling of words and the Plaintiff’s failure to prove that ‘BOOKMY’ has attained distinctiveness or secondary meaning, led to the dismissal of the application for interim injunction led by the Plaintiffs.

Author: Shreya Das, a student of BA LL.B(H), Amity Law School, an intern at Khurana And Khurana, IP Attorney and Advocates.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 1996 (64) DLT 251

[2] (2000) 5 SCC 573

[3] 32008 (38) PTC 331

[4] (1867)36 LJ Ch 504

[5] 2017 SCC OnLine Del 12166

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