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Article contains Definition of Deceptively similar Trademark, Interpretation and Scope of ‘Deceptively Similar’ and Case Studies on Deceptively Similar Trademark  of ITC v. NESTLE, M/S Lakme Ltd. v. M/S Subhash Trading,  SM Dyechem Ltd. v. Cadbury (India) Ltd, Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd, M/s Surya Roshini Ltd. v. M/s Electronic Sound Components Co, Hindustan Lever Ltd. v. Pioneer Soap Factory and M/s Bhatia Plastics v. M/s Peacock Industries Ltd.

Definition of Deceptively similar Trademark

As per Sec 2 (h) of Trademark Act, 1999-

 “Deceptively similar”- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;

Interpretation and Scope of ‘Deceptively Similar’

The concept of trademark infringement basically arises from the necessity to safeguard the original trader’s mark’s distinctiveness and goodwill among its customers and the general public, as well as from the potential of confusion regarding its origin. However, it is crucial to highlight that the Trademark Act does not include a strict standard for the ambit and range of misleading likeness, necessitating the need for judicial rulings to fill this gap. As a result, various case laws pertaining to trademark infringement have been established over the past few decades, which provide significant clarification regarding the acceptable interpretation of this idea.

The extensive body of landmark decisions has paved the way for the development of guiding principles that will aid in the enforcement of the law, including the tests of likelihood and confusion, visual and phonetic similarity, rule of entirety, rule of disinterring section, goodwill, and recognizable reputation. These principles provide a clear understanding of the idea and help resolve such disagreements.

Case Studies on Deceptively Similar Trademark

1. ITC Vs. NESTLE

The mark “MAGICAL MASALA” was initially used by ITC Ltd. in 2010 for Sunfeast Yippee Noodles and then by Nestle in 2013 for their noodles, leading to action for injunction being brought by ITC for “passing off” in the case of ITC v. NESTLE, also known as “the Curious Case of The Magic Masala.” The court ruled that the mark could not be protected as a “descriptive mark” because it was just a laudatory expression and not a description of the product. The court further noted that granting a monopoly over the two names would be unfair because they are widely used terminology. The case was dismissed after it was further stated clearly that the two had no potential to confuse consumers because they were not product descriptors.

 2. M/S Lakme Ltd. Vs. M/S Subhash Trading

In this instance, the defendant was also selling comparable goods under the name “LikeMe” as the plaintiff was using the trademark “Lakme” to market cosmetic products. The plaintiff filed a lawsuit alleging trademark infringement against the defendant. The Court determined that the names are two separate marks with different spellings and appearances and are not deceptively similar to one another.

3. SM Dyechem Ltd. Vs. Cadbury (India) Ltd

In this case, the plaintiff started a business selling chips and wafers under the name “PIKNIK.” Later, the defendant launched a chocolate business under the name “PICNIC“. Following that, a trademark infringement lawsuit was filed. The Court determined that the marks are no longer confusingly similar since they are distinctive in both appearance and wording.

4. Cadila Health Care Ltd. Vs. Cadila Pharmaceutical Ltd

The Supreme Court has established several rules in this decision for managing matters involving comparable trademarks and other issues. It is crucial to strictly avoid confusing pharmaceuticals with drugs due to the danger of medical misconduct. As a result, the Court determined that as clinical products require particular caution and diligence, their phonetically similar brand names also qualify as deceptively similar.

Deceptively Similar Trademark

5. M/s Surya Roshini Ltd. Vs. M/s Electronic Sound Components Co

The plaintiff further cited M/s Surya Roshini Ltd. v. M/s Electronic Sound Components Co., in which the court found a misleading resemblance between the marks “Surya” and “Bhaskar” on the grounds that both are distinct names for the Sun and are likely to cause confusion.

6. Hindustan Lever Ltd. Vs. Pioneer Soap Factory

The marks “Sun” and “Suraj” were deemed to be confusingly similar by the court in Hindustan Lever Ltd. v. Pioneer Soap Factory on the grounds that “Suraj” is the translation of the term “Sun” and is likely to cause misunderstanding.

7. M/s Bhatia Plastics v. M/s Peacock Industries Ltd.

“A decision’s ratio, not every observation it contains or what logically follows from its different observations, is what matters most. It must be kept in mind that a decision only serves as authority for the matters it decides. It is well established that even a small difference in the facts or the addition of new facts can have a significant impact on a decision’s precedential status. Without taking into account the factual situation and circumstances of the two cases, the ratio of one case cannot be mechanically applied to another.”

According to the plaintiff, the court cases M/s Allied Blender and Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd. and Shree Nath Heritage Liquor Pvt. Ltd. v. M/s Allied Blender and Distillers Pvt. Ltd., in which the defendant used the mark “Collectors Choice,” which was found to be confusingly similar to “Officer’s Choice,” on the grounds in the present matter, there was no similarity or likelihood.

IN SIMPLE TERMS-

The principle of entirety must be applied in all cases, which means that all aspects of the aforementioned criteria must be taken into account as a whole and that the mark or any of its components cannot be broken down and evaluated separately. This is an important point that courts have repeatedly emphasised. The marks must be viewed as a whole, and only a clear likeness would be considered an infringement.

Conclusion

Trademarks are essential to a company’s reputation building and brand recognition. It not only aids in establishing brand value but also in earning income. Due of its significance, the trademark is open to misuse or infringement. Making trademarks that are “deceptively identical” is one such method of trademarking. So, stay away from confusing similarity and register your trademark with a distinctive name.

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For any type of assistance feel free to contact or reach us at: – MG Associates (Company Secretaries)- CS Manisha Mittal – 70152-77705

Disclaimer: The information presented here is only meant to be informative. Although this article was carefully crafted, it should only be regarded as general advice because it has been expressed in general terms. You should not act on the information provided in this article or refrain from acting upon it without first seeking professional advice since it cannot be relied upon to address your unique situation

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Manisha's potential cannot be elucidated in words. Her passion for writing knows no bounds. Associate Member of the Institute of Company Secretary of India and also holds a bachelor’s degree in Law. Having experience of more than 4 years of Forming Producer companies, Public and private companies View Full Profile

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