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Concept Of ‘Deceptive Similarity’ Under Trademarks Law
"Deceptive similar" is referred to as those trade marks who are similar or a look alike to an existing trade mark to deceive or to cause confusion to the consumers.
According to section 2(h)of the trade marks act,1999 "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."
In simple words, deceptive similarity can also be defined as similarity between the trademarks which can likely deceive the general public of average intellect to believe that the mark in question is in some way or the other linked to the registered or a well-known trademark.
According to the various judgments given by the supreme court and high court there are several conditions which needs to be considered for Deceptive similar marks:
1.Principle of phonetic and visual similarity.
2. Rule of entirety
3.Test of likelihood and confusion 4.Goodwill
For instance, a famous case of Starbucks V. Sardarbaksh-
As Starbucks is a very famous brand which is recognized globally and has chain all over the world.It would be really unfair on Starbucks if such a trademark is allowed.
As sardarkbaksh has already opened it's five outlets in delhi.It will have to pull out and change it to Sardarji-buksh and make it distinct from the trademark of starbucks as per an interim order of Delhi high court.
However the act does not give any criteria or conditions for "Deceptive similarity" there are some guidelines and principles which needs to be followed or considered in matters of Deceptive similarity.
In another case:-
Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.
In this case the parties were the successor of Cadilla group.The dispute arose on selling of medicines by the defendant's named "FALCITAB"
which was similar to medicines sold by the plaintiff's "FALCIGO".
Both the drugs were used to cure the same disease and hence, the contention was that the defendant's brand name is creating confusion between the consumers. Injunction was demanded by the plaintiff. As a defense, the defendant claimed that the prefix "Falci" has been derived from the name of the disease, i.e., Falcipharam malaria.
In addition to this, the defendants also claimed that the products in question were Schedule L drugs which can be sold only to the hospitals and clinics only and therefore there could not even be a remote chance of confusion and deception as the drug dealers and medical practioners are experts in the field to distinguish between diverse drugs.
The lower court’s judgment favoured the defendant on the ground that the two products in question differed in appearance, preparation formula and price and in addition to these, could be sold only to hospitals and institutions and there was no chance of deception or/of confusion specially as the drug was not meant to be sold to any individual.
The Court observed that although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken. The Court also observed that the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same.
