How Much Do Phonetic Similarities Matter in Trademark Disputes?

Determination of the distinctiveness of marks, despite the standard set by the Trade Marks Act, 1999 under provisions such as Section 9 and Section 11, is a difficult task and often requires judicial insight. As a matter of principle, the examiner/court will have look at the mark in its totality. In recent years, a comparison of phonetic similarities has seen an upward trend in comparison of marks.

The provision dealing with infringement of a registered mark as a result phonetic similarity is incorporated under Section 29(9) of the Trade Marks Act, 1999 which states that a mark may be infringed by the spoken use as well as visual representation of words. The Supreme Court has on several occasions affirmed that comparison of trademarks must be done with reference to both ear as well as the eye.

Phonetic similarity as one of the fundamental tests of comparison was cemented in the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. where the Supreme Court observed that it was not correct in law to hold that the principle of phonetic similarity cannot be used when the manner in which the conflicting words are written is different. An important application of this principle in this regard can be seen in Consitex SA v. Kamini Jain and Ors. where the Delhi High Court was tasked with the decision on two similar sounding marks ‘Zegna’, an Italian luxury fashion brand, (pronounced Zen-Yah) and ‘Jenya’. The court here leaned in favour of the plaintiff to hold that Jenya was a deceptively similar trademark. The importance of the pronunciation here is such that had Zegna not adduced documents in support of the pronunciation of Zegna as ‘Zen-Yah’, the Court may not have decided in their favour as the two marks otherwise differ significantly.

The decision in Consitex SA was then referred to in the case of Imagine Marketing Pvt. Ltd. v. Exotic Mile. The court, inter alia, held the mark Boult to be phonetically similar to Boat due to similar opening and closing syllables of the words.

In case of composite marks, it may sometimes happen that some part or word of that mark has more popularity than the others. This was argued at length in the case of General Mills Marketing (GMM) v. South India Beverages (SIB). Here, the plaintiff had brought an action against the defendant’s mark ‘D’DAAZS’ for being phonetically similar to plaintiff’s mark ‘Haagen-Dazs’. The defendant argued that the word ‘Haagen’ alone forms the dominant or essential part of the plaintiff’s mark due to which defendant’s mark cannot be similar. However, as SIB did not adduce any documents proving Haagen to be the dominant word, ‘D’DAAZS’ was held to be phonetically similar to ‘Dazs’.

Usually, dissection of marks into dominant and non-dominant parts as can be seen in cases involving composite marks may be conflicting with the general principle of considering marks in their totality. However, there may be cases where this may be used when two composite marks with certain common elements are in question. For example, the Draft Manual of Trade Marks Practice and Procedure in Para 11.2 (Concept) illustrates CROCIN PLUS and CROCIN FORTE may be conflicting for medicines due to the dominant element ‘CROCIN’. An application of this can be seen in the Bombay High Court judgement Pidilite Industries Limited vs. Poma-Ex Products where the court, while ruling in favour of the plaintiff, held there to be a high degree of phonetic similarity between the ‘FEVIKWIK’ and ‘KWIKHEAL’ due to the dominant word ‘KWIK’ in FEVIKWIK. As dissection of marks refuses protection to the mark as a whole, it should only be done on a case-to-case basis.

Conclusion

While the test of phonetic similarity has gained widespread recognition and application in the Indian trademark landscape, courts have often been wary of applying it as an exclusive test of comparison. This is because mere phonetic dissimilarity may not be enough to preclude likelihood of confusion. Along the same lines, the Bombay High Court in Franco Indian Pharmaceutical v. Corona Remedies, was tasked with comparing phonetic similarities in ‘STIMULIV’ and ‘STIMU-LET’. The court observed that in a country where pronunciation in English is seldom optimal and frequently much less than that, I do not think this is a sufficient phonetic distinction or distinctiveness to tell one from the other.” Therefore, the test of phonetic similarity must not be used as an exclusive test and a trademark’s distinctiveness can only be established by considering it in totality.

Author: Tamish Kumar- a student of  Symbiosis Law School, currently an intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at sudhanshu@khuranaandkhurana.com.

Leave a Reply

Archives

  • October 2021
  • 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