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

Leave a Reply

Archives

  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010