Author: Mohini Chaturvedi, Sharda University
Trading in India has globalized at an extreme level with which trade names, marks, etc. have attained an immense value. Such marks and brand names are required to follow the standards of protection which have been witnessed under the Trade Related Aspects of Intellectual Property Rights (TRIPS) where efficient procedures for enforcement of protection mechanisms have been provided.
EMERGENCE OF INDIAN TRADEMARK LAW
The acknowledgment of the Trademark Law in India was in the year 1940. This was later on replaced with the Trademark and Merchandise Act, 1958. It was enacted for better protection of trademark and also preventing misuse of such marks on merchandise. The Act also provided the registration of the trademark to confer legal rights on the owners of the trademark for its exclusive use.
The aforementioned provisions were then repealed by the Government of India and the new and formative Trademark Act, 1999 came into force. It is significant as it complied with the TRIPS obligations that the World Trade Organization recommended. The objective of the Trademark Act is to grant protection to the trademark users and also to provide legal remedies for the implementation of trademark rights.
Trademark is one of the areas of intellectual property which is an identity that certain products or services are provided by a certain person or entity. The purpose of a trademark is to provide legal protection to marks of the trade like brand names, signs, or symbols. Trademark provides the owners of creative works with the legal right to restrict others from using a confusingly similar mark. It also aids in the generation of revenue. The Apex Court laid down certain criteria while determining trademark infringement in the case of Cadila Health Care v. Cadila Pharmaceutical Ltd.The same are as hereunder -
· the nature of the marks/labels used
· the degree of similarity by way of resemblance between the marks/labels
· the nature of goods for which the labels are used and
· the method of buying the goods
CONCEPT OF “DECEPTIVELY SIMILAR”
Trademark has vital importance as it is vulnerable to infringement. It is required for the trademark to be unique so that it is not misused. The similarity of the trademark with the existing trademark is one of the key hurdles in the registration of the trademark. Deceptively similar to the trademark is one of the critical grounds on which the trademark application is rejected. Under Section 11(1) of the Trademark Act, 1999, it is stated that a trademark cannot be registered if it is deceptively similar, or identical, with the existing trademark and goods and services as it is likely to create confusion in the minds of the public at large. The trademark must meet certain criteria such as distinctive character, non-identical, not prohibited by law, etc. to be registered as a trademark in India. Deceptively similar to the trademark is one of the critical grounds on which the trademark application is rejected.
It was held by the Apex Court in the cases of Laxmikant Patel v. Chetanbhai Shah and Midas Hygiene Industries v. Sudhir Bhatia, that if there is the existence of deceptive similarity and once trademark infringement is committed, it is the court’s duty to proceed to grant injunctions on the use of trademark and for the effective implementation of the injunction appropriate individuals are to be appointed.
In the case of M/S Lakme Ltd. v. M/S Subhash Trading, the plaintiff was dealing in the business of trading cosmetic items under the trademark name “Lakme”. The defendant was also selling identical products under the trademark name “LikeMe”. The plaintiff filed a case of trademark infringement. It was held by the Court held that the trademark names were not deceptively similar and were two distinct marks with differences in their spellings and appearances as well.
In SM Dyechem Ltd. v. Cadbury (India) Ltd.the plaintiff initiated a business of wafers and chips under the trademark “PIKNIK”. Later on, the business of chocolates under the trademark name “PICNIC” was established by the defendant. The Court observed the marks not to be deceptively similar as they were distinct in appearance and also in the composition of words.
The Indian legal system has widely recognized the concept of deceptive similarity as a ground for trademark infringement. Section 2(h) of the Trade Marks Act, 1999 defines deceptively similar as a mark that nearly resembles that of another mark which has the probability to deceive or cause confusion to the public at large.
Bigtree Entertainment v Brain Seed Sportainment
In this case, the plaintiffs were the owners of the website bookmyshow.com. The plaintiff asked for an interim injunction against the defendant’s use of the domain ‘BOOKMY’ in bookmysports.com. The plaintiff failed to prove that ‘BOOKMY’ has attained distinctiveness or secondary meaning led to the denial of interim injunction.
The Indian Courts have therefore dealt with a number of matters that have identified the relevant standards and guidelines for deceptive similarities as there are no fixed criteria for identifying the deceptive similarity in the Trade Marks Act, 1999.
RECENT CASES RELEVANT TO “DECEPTIVELY SIMILAR”
N.V. NUTRICIA V. NUTRICA INTERNATIONAL PVT. LIMITED[i] (DELHI HC, 2021)
In this matter, the plaintiff had its adopted trademark of ‘NUTRICIA’ in the year 1901 and since then it was used extensively as a brand and dominant part of its corporate affairs. The defendant company named Nivisa Healthcare Pvt. Limited earlier known as Nutrica International Private Limited was dealing in the business of manufacturing, supplying, and selling infant foods in the form of health supplements powder under the trademark and trade name ‘NUTRICA’. The plaintiff in this suit asked for the relief of granting a permanent injunction restraining defendants from the use of the trade name ‘NUTRICA’ as it constitutes deceptively similar to the trademark of the plaintiff. Thus, in this case, the parties settled the dispute amicably by the mediation process, and the court entitled the plaintiff to refund the court fees.
CUTIS BIOTECH V. SERUM INSTITUTE OF INDIA[ii]
In this matter, the plaintiff coined the word ‘COVISHIELD’ respectively for the pharmaceutical and its other related products as mentioned by the trademark register. The defendant had also coined the similar trademark ‘COVISHIELD’ used for manufacturing a vaccine for controlling the spread of COVID-19. The court observed that-
· Visual appearance when compared as a whole, the product is entirely varied.
· There is the absence of prima facie intention on the part of the defendant in order to create confusion in the mind of the public.
· There seems no likelihood to cause injury to the business of the plaintiff or to harm the reputation or goodwill of the plaintiff.
· Plaintiff without clean hands approached the court.
AAS REGINA LEGAL LLP V. REINA LEGAL LLP
In this case, the appellants AAS REGINA LEGAL was earlier restricted to the use of the term ‘REGINA’ or other deceptively similar marks which are registered with respondent Reina Legal Advocates. Later, the parties settled the matter.
ARUDRA ENGINEERING PRIVATE LIMITED V. PATANJALI AYURVED LIMITED
In this case, Madras High Court restrained Patanjali Ayurved Ltd, the defendants from the use of the mark ‘CORONIL’ as medicine for coronavirus. It was deceptively similar to the mark ‘CORONIL-92B’ which was used since 1993 and was registered by the plaintiffs.
SUN PHARMA LABORATORIES LIMITED v. BDR PHARMACEUTICALS
In this case, Sun Pharma filed a suit for infringement, and passing off as their mark ‘LABEBET’ was likely to be confused with the mark ‘LULIBET’ used by BDR Pharmaceuticals. The High Court held that both marks in dispute were phonetically and structurally same. It has the tendency to give rise to the possibility of perplexity.
Hence, the concept of ‘deceptive similarity’ as under Section 2(h) is very wide in terms of interpretation. It does not provide any stiff criteria which widen the scope of adjudication by the judiciary. Through judicial pronouncements, the courts are defining the term ‘deceptively similar’ more precisely and reasonable decisions leads to prevent individuals from sufferings caused to one’s goodwill.
 2001 (2) PTC 541 SC  AIR 2002 SC 275  (2004) 3 SCC 90]  1996 (64) DLT 251  (2000) 5 SCC 573  2017 SCC Online Del 12166  https://www.casemine.com/judgement/in/60007bcb9fca192034fd93bd  http://www.scconline.com/DocumentLink/x9E4bXJY  2020(83) PTC 101(Del)
[i] https://www.casemine.com/judgement/in/60fe4e489fca1955c6528710 [ii] https://iprlawindia.org/covishield-is-a-vaccine-to-counter-coronavirus-is-now-widely-known-grant-of-an-injunction-would-have-large-scale-ramifications-traversing-beyond-the-parties-to-the-suit-cutis-biotech-vs-serum-in/ http://trademarkblog.kluweriplaw.com/2019/02/23/india-deceptive-similarity-of-trademarks/ https://www.casemine.com/search/in/deceptively%20similar%202021%20cases https://www.khuranaandkhurana.com/2021/03/18/deceptive-similarity-in-trademark/ https://www.khuranaandkhurana.com/tag/laxmikant-v-patel-vs-chetanbhai-shah/