Trademarks are those marks for businesses which is used to distinguish their goods and services in a competitive market. In India, the Trade Marks Act, 1999 provides a robust legal framework to protect these identifiers. A key aspect of this law is the concept of "deceptively similar" trademarks which refers to marks so similar to an existing registered trademark that they are likely to deceive or confuse consumers. This article explores the concept of deceptively similar trademarks in India, delving into landmark case laws that have shaped this area of law and by examining these cases, we gain insight into how courts interpret and apply the law to safeguard trademark owners and consumers.

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What are Deceptively Similar Trademarks

Section 2(1)(h) of the Trade Marks Act, 1999 says that a trademark is deceptively similar if it looks a lot like another mark.  It must look like the other thing so much that it could fool or confuse someone.  In other words, two marks don't have to be exact to be thought of as misleadingly similar.  If they look, sound or mean the same in a way that could fool people, they may be treated as misleadingly similar. The determination involves assessing visual, phonetic and conceptual similarities as well as the nature of the goods or services and the target consumer base.

The Indian judiciary has played a pivotal role in interpreting this concept through various landmark judgments. These case laws on deceptively similar trademarks have clarified how courts evaluate similarity and set important precedents for resolving disputes.

Also, Get to Know About Infringement of Geographical Indication.

Key Case Laws on Deceptively Similar Trademarks in India

The table below lists some of the most important case laws in India about misleadingly similar trademarks, highlighting the most important facts and outcomes of those cases.

1. Parle Products Pvt. Ltd. v JP & Co (1972)

In this case, Parle Products which is a renowned biscuit manufacturer, sued JP & Co for using a wrapper that closely resembled their registered trademark for "Glucose Biscuits." The Supreme Court of India established the "test of deception," emphasizing that courts should assess trademarks from the perspective of an average consumer with imperfect recollection. The court found that despite minor differences, the wrappers were deceptively similar and likely to confuse consumers and so it granted an injunction in Parle’s favor. This case law on deceptively similar trademarks set a foundational precedent for evaluating overall impression over detailed comparison.

2. Proctor and Gamble v Joy Creators (2008)

Proctor and Gamble (P&G) sued Joy Creators for using the trademark "JOY ULTRA LOOKS TOTAL EFFECTS" for anti-ageing creams and alleged that it was deceptively similar to their registered trademark "OLAY TOTAL EFFECTS." The Delhi High Court ruled in P&G’s favor, permanently enjoining Joy Creators from using the mark. The court noted substantial similarity, particularly in the use of "TOTAL EFFECTS" which could confuse consumers along with punitive damages of Rs 100,000 were imposed due to Joy Creators’ deliberate avoidance of court proceedings, highlighting the judiciary’s stance on bad faith in deceptively similar trademarks cases.

3. Sony Corporation v. K. Selvamurthy (2018)

Sony Corporation filed a trademark infringement suit against K. Selvamurthy who operated a tours and travels business under the name "Sony Tours and Travels." Sony argued that the use of "Sony" diluted their well-known trademark. The District Court in Bengaluru ruled in favor of the defendant, finding no infringement or dilution because the businesses operated in unrelated sectors (electronics vs. travel). The court also criticized Sony’s delay in filing the suit, awarding costs to the defendant. This case law on deceptively similar trademarks illustrates that even well-known trademarks cannot claim monopoly across all industries.

4. Starbucks Corporation v. Sardarbuksh Coffee & Co. (2018)

Starbucks sued Sardarbuksh Coffee & Co. because they used a name and logo that looked too much like their registered trademark. According to the Delhi High Court Sardarbuksh had to change its name to "Sardarji-Bakhsh" for new stores when it first got help. In the end Sardarbuksh agreed to change their brand and stop using the same logo. The decision put a lot of weight on protecting well-known trademarks and keeping customers from getting confused. This case law on misleadingly similar trademarks is important.

5. Cadila Healthcare Ltd. v. Cadila Pharmaceutical Limited (2001)

This case involved a dispute over deceptively similar trademarks of pharmaceutical products where Cadila Healthcare argued that the defendant’s trademark could cause confusion among consumers and also possess health risks. The court held that in the pharmaceutical industry, even slight similarities require stricter scrutiny due to potential consequences and this case law on deceptively similar trademarks established higher standards for industries where consumer safety is paramount.

6. M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas

A well-known spice brand called Mahashian Di Hatti (MDH) sued Raj Niwas for using a logo that looked too much like their "MDH" trademark. An injunction was issued by the Delhi High Court because it thought that the logos ("MDH" vs. "MHS") would cause confusion among customers. In case law about confusingly similar trademarks, this case shows how important it is to protect logos as part of trademark rights.

7. Meher Distilleries Pvt. Ltd. v. Sg Worldwide Inc.

In this case, Meher Distilleries sued Sg Worldwide for using the trademark "RAMPUR ASĀVA" which was phonetically similar to their "THE ASWA." The Bombay High Court’s Division Bench overturned an initial ruling, finding that the phonetic similarity could confuse consumers. This case law on deceptively similar trademarks showcase the significance of phonetic resemblance in trademark disputes.

Summary

To protect brand identity and keep customers from getting confused, it's important to understand the idea of deceptively similar trademarks.  Courts have made it clear how to judge similarity by focusing on the consumer's point of view, the industry context and the harm that could happen through landmark cases involving deceptively similar trademarks.  From Parle Products to Starbucks, these decisions show how the courts protect trademarks and make sure that fair market practices are followed.  To stay out of legal trouble, businesses must carefully choose unique trademarks. To get around India's trademark system, you need to know these case laws on deceptively similar trademarks. 

Related Posts

• Violation of Layout Design

• Digital Intellectual Property

• Infringement of Design under the Designs Act, 2000

• Kendrapara Rasabali

• Geographical Indication Infringement Cases

Case Law on Deceptively Similar Trademarks: FAQs

Q1. What is deceptive similarity under trademark case law?

Deceptive similarity occurs when a trademark is so similar to another that it may confuse consumers about the source of goods or services. Courts assess visual, phonetic and conceptual similarities to determine this.

Q2. What is Section 124 of the Trademark Act case law?

Section 124 allows a court to stay a trademark infringement suit if the defendant’s mark is under a pending validity challenge.

Q3. What is Section 57 of the Trademark Act case law?

Section 57 permits the correction or cancellation of a registered trademark if it was wrongly registered or violates the Act. Applications for such changes can be made to the Registrar or Appellate Board.

Q4. What is Section 47 of the Trademark Act case law?

Section 47 allows removal of a trademark from the register if it’s not used for five years or more. Non-use must be proven, and the mark can be removed to avoid cluttering the register.