Reinforcing The Test of Deceptive Similarity Under Trademark Law- Cadbury Gems VS Jamesbond

Trademark is one of the intellectual property which can be created by any person with his labor and intellect. Basically, a trademark can be any word, phrase, symbol, design or a combination of all these things which helps to identify any goods or services. Whenever a goods or services is associated with any mark, it helps the other people to recognize the owner or provider of such goods or services and it makes your good or services distinguishable from other’s goods or services.

Trademark[Image source: gettyimages]

DECEPTIVE SIMILARITY UNDER TRADEMARK LAW

The Section 2 (zb) of the Trade Marks Act, 1999 defines trademarks. A trademark must comply with the essential criteria of being a distinctive character, non-similar to other mark and not barred by any law for time being in force to be registered in India under the Trademark Act, 1999. A trademark is created in order to stand out from the crowd and be recognized easily. A trademark is an essential element in developing a brand name and goodwill of any organization/company and generates revenue. However, any trademark, is vulnerable to being copied by another person to attract one’s audience toward himself for economic benefits. Hence, any trademark can be misused, and one of the way is to make a deceptively similar trademark.

The term “deceptive similarity” has been defined under Section 2 (h) of the Trademark Act, 1999. Meaning, a kind of similarity between the marks which deceives general public that such mark is somehow related to the well-known trademark.
When a person copies a well-known or a registered trademark to create confusion in the minds of people and people believe that such copied mark is somehow connected with the well-known trademark, the person said to have deceived the people.

There’s been a lot of confusion as how to determine the deceptive similarity between the marks. The rules for comparing two mark(s) has been evolved over the years which is based on an English case of Parker J. in the Pianotist Case , which was postulated over a century ago and repeatedly cited by various courts in India, including the Apex Court as the definitive test to be adopted while comparing two rival trademarks.
The criteria for the determination of deceptive similarity of marks in India had been decided in the case of Cadilia Healthcase Ltd v. Cadilia Pharmaceutical Ltd , where the Hon’ble Supreme Court laid down some specific norms for deciding the nature of similar or misleading marks.

The case is a landmark where the Supreme Court by taking references from the various English case laws, finally established certain principles to be consider to decide the existence of deceptive similarity.

The principles are as follows:-

  • “The nature of the marks
  • The degree of resemblances between the marks, phonetically or ideally similar
  • The nature of the goods in respect of which they are used as trademarks.
  • The similarity in the nature, character and performance of the goods of the rival traders.
  • The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
  • The mode of purchasing the goods or placing orders for the goods and
  • Any other surrounding circumstances which may be relevant.”

Author: Anjali Maurya -BBA-LLB(H), 4th Year, ICFAI University, Dehradun, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Archives

  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • 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