Determining Similarity Between Rival Marks Part 1

Introduction

Section 15 and Section 17 of the Trade Marks Act, 1999 deal with the registration of parts of trademarks and the effect of registration of parts of a mark respectively. A bare perusal makes it clear that the intention behind these two provisions is that when a trademark consists of several matters, the proprietor of the trademark would only be conferred with an exclusive right to the use of the trademark as a whole and not any matter merely forming part of the whole of the registered trademark in case such part is not separately registered by the proprietor.

Anti-Dissection Rule

The Anti-dissection rule has its genesis in Section 15 and Section 17 of The Trade Marks Act, 1999. Section 15 of The Trade Marks Act, 1999 pertains to the registration of parts of trademarks and of trademarks as a series. With regards to the registration of parts of a trademark, Section 15 stipulates that where the proprietor of a trademark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trademarks. Each of such separate trademarks shall satisfy all the conditions applying to and have all the incidents of, an independent trademark.

Section 17 of The Trade Marks Act, 1999 pertains to the effect of registration of parts of a mark. It stipulates that when a trade mark consists of several matters, its registration shall confer on the proprietor an exclusive right to the use of such trademark taken as a whole. In case a trademark contains any part that is not the subject of a separate application by the proprietor for registration as a trademark or which is not separately registered by the proprietor as a trade mark or contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

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Determining Similarity Between Rival Marks

Essentially, the rule of anti-dissection is that two rival marks ought to be compared by looking at them as a whole, rather than dissecting the marks into different parts for the purposes of comparison. This is justified due to the simple reason that the overall commercial impression of a trademark rather than just its individual components is what makes the mark noticeable to a consumer of average intelligence and imperfect recollection. The basis of the anti-dissection rule is the point of view of such a consumer having average intelligence and imperfect recollection. The idea is that a typical consumer would not split a trademark into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words. Such a consumer would only evaluate the overall structural, visual and phonetic similarity between two conflicting composite trademarks. Thus, it is imperative that onflicting marks must be compared in their entireties in order to determine deceptive similarity.

Settled Legal Position

  1. Amritdhara Pharmacy v. Satya Deo Gupta:In this case, the Hon’ble Supreme Court on a consideration of all the facts and circumstances, concluded that the overall similarity between the two names ’Amritdhara’ and ’Lakshmandhara’ in respect of the same description of goods was likely to cause deception or confusion within the meaning of s. 10(1) of the Act. It is observed by the Hon’ble Supreme Court that two names as a whole should be considered for comparison and not merely the component words thereof separately. The trade mark is the whole thing the whole word has to be considered
  2. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.: It is important that marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.
  3. Cadila Laboratories Ltd. And Anr. Vs. Dabur India Limited: While ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. Further, meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered.
  4. Corn Products Refining Co. Vs. Shangrila Food Products Ltd.: The Hon’ble Supreme Court observed that it is well recognised that in deciding the question of similarity between two marks, the marks have to be considered as a whole.
  5. DurgaDutt Sharma v. Navaratna Pharmaceutical Laboratories: Deceptive similarity can be ascertained by a comparison of the two marks -the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived, that is, the subject of consideration. The resemblance maybe phonetic, visual or in the basic idea represented by the plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trademark are to be found in that used by the defendant. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
  6. M DyechemLtd. v Cadbury (India) Ltd.: The trade mark is the whole thing – the whole picture on each has to be considered. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar.

Conclusion

In conclusion, similarity between two conflicting marks has to be ascertained after comparing the marks in their entirety and as a whole without dissecting their component parts. This settled rule of anti-dissection has its genesis in Section 15 and Section 17 of The Trade Marks Act, 1999 and has been time and again asserted in the decisions of numerous courts across the country.

Author: Sonakshi Pandey, 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.

REFERENCES

  1. Explained: PhonePe v. BharatPe Trade Mark Dispute – “Pe”/Pay-as-you-go, 2021 SCC OnLine Blog Exp 36
  2. Amritdhara Pharmacy v. SatyaDeo Gupta (AIR 1963 SC 449)
  3. Cadila Laboratories Ltd. v. Dabur India Limited, 1997 SCC OnLine Del 360
  4. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73
  5. Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (AIR 1960 SC 142)
  6. DurgaDutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980)
  7. M Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
  8. https://www.lakshmisri.com/insights/articles/rule-of-anti-dissection-v-rule-of-dominant-feature-a-legal-conundrum/
  9. https://csipr.nliu.ac.in/trademark/rooh-afza-v-dil-afza-a-classic-case-of-deceptive-similarity/

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