Visual and Phonetic similarity of Trademarks-study of judicial trends in India.

1. VISUAL AND PHONETIC
SIMILARITY OF
TRADEMARKS-
STUDY OF JUDICIAL TRENDS
IN INDIA

2. Definition of Trademark
The Trade Marks Act, 1999, Section. 2 (zb) defines trade mark as “a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and colours”.
A trademark or trade mark is a distinctive sign or indicator of some kind which is used by an
individual, business organization or other legal entity to uniquely identify the source of its
products and/or services to consumers, and to distinguish its products or services from those
of other entities.

3. Trademark Law in India
In India, prior to 1940, no specific legislation for protection of trademarks had been enacted
and common law principles of equity and passing off were followed for protecting them.
Major milestones that can be enlisted to be elementary in evolving Trademark Law in India
are:
◦ The Indian Trademark Act, 1940
◦ The Trademark and Merchandise Act, 1958
◦ Trademark Act, 1999
◦ Trademark (Amendment) Act, 2010

4. Who can use a trade mark ?
• The right to use a mark can be exercised either by the registered
proprietor or a registered user or anybody else who has been duly
authorized by the registered proprietor or a registered user.
• The objective of the Trade Marks Act, 1999 is to register trade marks
applied for in the country and to provide for better protection of trade
mark for goods and services and also to prevent fraudulent use of the
mark.

5. Who can make an application ?
• Any person who claims to be the proprietor of a trademark used or proposed to be used by
him can apply for the registration of the mark for goods as well services.
• The application for registration has to be made in writing to the Registrar of Trade Marks and
it has to be filed in the office of the Trade Mark Registry under whose jurisdiction the principal
place of the business of the applicant in India falls.
• In case the principal place of business is outside India, then the application can be filed in the
office of the Trade Mark Registry, under whose jurisdiction the place that has been mentioned
in the ‘address for service’ section of the application (usually office of the lawyer appointed by
the person) is located.
• In case of a company about to be formed, anyone may apply for a trademark registration in
his name for subsequent assignment of the registration in the company's favor.

6. WHAT ARE THE ESSENTIAL FEATURES
OF A TRADEMARK?
◦ Distinctive: A trade mark like ‘Apple’ for computers may be regarded as distinctive because it
has nothing to do with apples, and similarly it would not be distinctive for actual apples and
someone who is growing or selling apples may not use it as a trademark. So in general a
trademark is not distinctive if it is descriptive.
◦ Deceptive: trade mark would be the goods for which it is used have certain qualities when
they don’t have them in reality. For instance, a trade mark ‘Real Leather’ for goods that are not
made of genuine leather.

7. Cont…
◦ It must be a mark, that is, a device, brand, heading, label, name or an abbreviation of a name,
signature, word, letter or numeral shape of goods, packaging or combination of colours or
any combination there of
◦ It must be capable of being represented graphically.
◦ It must be distinctive capable of distinguishing the goods or services of one person from
those of another.
◦ It must be used or proposed to be used for trade in relation to goods or services.

8. The Factors for Identifying Trademark
Likelihood of Confusion:
1) Relatedness of Goods or Services: In regards to the relatedness of good or services, the
more similar the marks at hand, the less similar the goods or services need to be to support
a finding of likelihood of confusion. For example, if someone were selling a soap labeled
"Ole' Spice" it would likely be confused with "Old Spice.
2) Similarity of Marks: Appearance, sound, connotation and commercial impression are all
evaluated. As you can imagine, such comparisons leave room for a fair amount of
subjectivity.
3) Similarity In Appearance: Marks may be confusingly similar in appearance despite the
addition, deletion, or substitution of letters or words.

9. CONT…
4) Similarity In Sound:
◦ The similarity of sound, or phonetic equivalence, is another factor in determining the likelihood of
confusion. Unfortunately, predicting how the public will pronounce any mark is nearly impossible.
Which means "correct pronunciation" cannot be relied upon in and of itself.
Thus, if any two marks can possibly be interpreted as phonetically similar, there is probably a case
for likelihood of confusion.
The following marks too similar in sound:
◦ SEYCOS vs. SEIKO
◦ CANYA vs. CANA
◦ CRESCO vs. KRESSCO
◦ ENTELEC vs. INTELECT

10. CONT..
5) Similarity In Meaning
◦ Another important factor is the similarity in meaning or connotation in relation to the named
goods or services. Even if two marks are identical in sound and appearance, they may create
significantly different commercial impressions so that there is no likelihood of confusion.
For example: CROSS-OVER vs. CROSSOVER

11. Deceptive Similarity
◦ Definition of Deceptive Similarity Section 2 (1) (h) :
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.
The Hon’ble Supreme Court has held in S.M. Dyechem Ltd. V/s Cadbury India Ltd. (AIR 2000 SC
2114) that it is the duty of the plaintiff to establish that the essential features of trade mark have
been infringed and the burden to prove it is on the plaintiff who alleges infringement that such
infringement has occurred on account of deception.

12. Test For Deceptive Similarity Of Trade
Marks:
• The test for deciding the deceptive similarity of the competing mark in an action for
infringement or in an action of passing off are similar. In the case PARLE PRODUCTS (P) LTD. V
J.P. & CO. MYSORE it was held that "the test for determination of a trade mark to be
deceptively similar to the registered one would be, if a person would be likely to accept the
another one, if offered, instead of original one".

13. The factors to be taken in consideration for the
deceptive similarity are as follows:
• The nature of the marks i.e. whether coined/ descriptive/ non-descriptive/ surname/
geographical origin/ device/ letters/ numerals/ combination of two or more of the above
• The degree of resemblance between the competing marks and essential features thereof i.e.
phonetic, visual or structural.
• The nature of the goods in respect of which they are used or likely to be used as trade marks.
• The similarity of the nature, character, and purpose of the goods of the rival traders.
• The class of purchasers who are likely to buy the goods bearing the marks.
• The mode of purchase of the goods or of placing orders for the goods.

14. Trademarks: Phonetic Justice
◦ The issue of trademark infringement due to phonetic similarity is embodied in Section 29(9) of
the Trademark Act of 1999, the basis for which is “deceptive similarity”. The Delhi High Court
held ‘Jenya’ to be deceptively similar to ‘Zenga’ because the latter, a registered mark, was
pronounced as zen-yah. Similar judgments have been held in relation to ‘Encore’ and
‘Anchor’, considering the phonetic structure and the “ring in the ear”. Thus the test has boiled
down to whether the confusion can make a consumer buy one’s product imagining it to be
the other’s.

15. Phonetic Similarity
◦ The phonetic similarity is another important issue that was dealt by the Indian Courts as it was
a very important factor that was likely to result in infringement.
◦ Phonetic similarity in trade marks is a very important issue as the common man with average
intelligence and an imperfect memory is likely to make a wrong decision owing to phonetic
similarity on account of deception and confusion caused.
◦ The user is likely to recognize the medicines primarily by looking at the trade dress and colour
of packaging.

16. Indo-Pharma Pharmaceutical ... vs
Citadel Fine Pharmaceuticals ... on 19
June, 1998
◦ Fact: The plaintiff is the manufacturer of the infants and invalid food products and the said
products are sold under the trade mark 'ENERJEX'. The trade mark 'ENERJEX' is associated
with the plaintiff for the past 15 years. The defendant is using the trade mark 'ENERJASE' for
manufacturing and marketing a similar product of medicinal preparation
◦ The defendant's mark is an imitation of the plaintiff's mark. The same is confusingly and
deceptively similar to the trade mark used by the plaintiff. The adoption of the mark
'ENERJASE' by the defendant is neither accidental nor coincidental, but a deliberate act.
◦ Finding: The word 'ENERJ' is an abbreviation of a generic name 'energy'. The word 'energy' is
a commonly used word and would be the description of energising product. A generic name
of a product cannot be treated as a trade mark to indicate the origin. The prefix for both the
marks, viz., 'ENERJ' is common to the trade and cannot be a proprietary name. Nobody can
claim exclusive right to use such an abbreviation.

17. Amritdhara Pharmacy v/s Satyadeo
Gupta Case
◦ The issue of phonetic similarity was dealt with in The Supreme Court in Amritdhara v. Satya
Deo observed that the ordinary purchaser would go more by the overall structure and
phonetic similarity and the nature of medicine he has previously purchased or has been told
about, or about which he has otherwise learnt and which he want to purchase. The word
‘Amritdhara’ were held deceptively similar through registration of ‘LAKSHMANDHARA’ was
allowed on the basis of honest concurrent user (AIR1963SC453).

18. K. R. Chinna Krishna Chettiar vs Sri
Ambal & Co.Madras& Anr
◦ In K. R. Chinna Krishna Chettiarvs Sri Ambal & Co.Madras & Anr the Supreme Court held that
there was no visual resemblance between the two marks but ocular comparison is not always
the decisive test. The resemblance between the two marks must be considered with reference
to the ear as well as the eye. There is a striking similarity and affinity of sound between the
words “Andal” and “Ambal” and a real danger of confusion between the two marks.

19. International Foodstuffs Co LLC v. Parle
Products Private Limited and Anr.
◦ The Plaintiff, International Foodstuff Co. LLC is a Dubai-based company which sells various flavors of
ice-cream under the mark "LONDON DAIRY".
◦ The mark is used only in respect of, and only of, ice-cream. The Plaintiff is the registrant of the mark
"LONDON DAIRY" since 2001 and in 2007 the Plaintiff obtained registration for the label mark which
are both registered in Class 30.
◦ The Defendant, Parle Products Private Limited, started selling boiled confectionery sweets under the
mark "LONDONDERRY" in 2011. The Defendants have used the mark continuously since then and
have also applied for registration of the mark, with the application currently pending.

20. CONT…
◦ Held: In view of the above, the Bombay High Court vide it's order dated April 11, 2016 held that
there is no law that says that a solitary test of pronunciation will suffice to defeat all else that weighs
against or the visual, structural similarity, the attendant circumstances, lack of meaningful reputation
or goodwill, the want of demonstration of deceit or misrepresentation or differences in color, trade
dress, the goods and their pricing should be ignored only because of phonetic similarity.
◦ Since the Plaintiff has sought injunction only on the basis of this phonetic similarity and there is no
other basis for this action at all, the Bombay High Court held that there is not sufficient warrant for
grant of injunction and dismissed the Notice of Motion without costs.

21. Ranbaxy Laboratories v/s Anand Prasad
and 4 others
◦ In the case of Ranbaxy Laboratories v/s Anand Prasad and 4 others (2008 (28) PTC 438 IPAB),
the Intellectual Property Appellate Board held that in the marks ‘Frowin’ and ‘Ostwin’ though
the prefixes were different, the suffix ‘Win’ was common and that was likely to cause
deception and confusion.
◦ In Win Medicare Pvt. Ltd. v/s Galpha Laboratories Ltd. and others 2016 (65) PTC 506, in the
marks concerning ‘Betadine’ and ‘Bectadine –M’, the Delhi High Court held that the trade
dress and colour of packaging were similar. The defendants knowingly adopted a deceptively
similar mark and the injunction was allowed on the ground of ‘likelihood of confusion’. The
Court held that there was a risk of confusion.

22. Cadilla Pharmaceutical Ltd.
◦ Fact: Court had emphasized the need for a stricter standard in matters of infringement
involving pharmaceutical products.
◦ OXETOL case suggested that the marks must be seen as a whole and by marks the Judges
meant not just the two words OXETOL and EXITOL.
◦ In the OXETOL/EXITOL case, the two visual representations: (i) the word OXETOL written in an
orange script in white background on a brown blister pack/having the graphics with a man
and a brain, and (ii) the word EXITOL written in blue on a yellow and white label on a sachet
having the picture of intestines as a graphic were not deemed to be deceptively similar so as
to nearly resemble each other and therefore not likely to deceive or cause confusion.
◦ Therefore, rather than considering the marks to be words per se, the Judges considered the
marks to be the entire visual representation of the two products which included the two word
marks.

23. Mahendra and Mahendra Paper Mills
limited vs. Mahindra and Mahindra
limited
• According to Mahindra and Mahindra Ltd, it came to know the existence of a company
named Mahendra and Mahendra paper mills ltd in august 1996, after it came across a
prospectus in respect of the latter's public issue and contended that the words used by the
paper mill were phonetically, visually and structurally almost identical and in any event
deceptively similar.
• 'Mahindra' is not only a registered trade mark but forms the dominant and significant part of
the plaintiff and other companies of the group carrying the name 'Mahindra' are engaged in
industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors,
motor spare parts, farming equipments, chemicals, hotels, real estate, exports, computer
software and computer systems, etc.
◦ Considering both the sides the Bombay High Court held that the plaintiff has established a
prima facie case and irreparable prejudice in its favor and passed an order of injunction
restraining the defendant-company.

24. Illustrative case laws
◦ Plaintiff was selling cosmetic products under the registered Trade Mark “Lakme”. Defended
was using the Trade Mark “Like-Me” for the same class of products. It was held that there was
striking resemblance between the two wards. The two words are also phonetically similar.
There is every possibility of deception and confusion being caused in the mind of the
prospective buyer of the plaintiff’s products. injunction was made permanent (PTC 1996,567)

25. ◦ The plaintiffs are registered proprietors of trade marks ‘CASTROL’ ’INDROL’ ‘INDROL’
‘MONOGRAME’ in respect of industrial oils and greases and also held copyright in INDROL
device. Infringement was alleged on ground of deceptive similarity by the use of trade mark
INDROL with similar colour combination, get up and lay out in connection with similar
product, i.e. brake fluids. Interim injunction granted in favour of the plaintiff and the same was
confirmed by the High Court (PTC 1995, 37).
Illustrative case laws

26. • Plaintiff were registered proprietors of the trade mark ‘MITASO’, the defendants used the
marks ‘META-SHOW’. Infringement was alleged on the ground that the two mark on the face of
it were deceptively similar phonetically and any ordinary customer could be easily misled in
treating the goods of one as coming from the source of another, injunction restraining the
defendants from using the trade mark ‘META-SHOW’ was granted(PTC1995,105).
Illustrative case laws

27. ◦ The party in the trade mark registry made an application for registration of trade mark “FIXACOL”.
The opponents were registered proprietors of trade mark ‘FEVICAL’ who pleaded rejection of the
application on the grounds of deceptive similarity and confusion. The application was refused
registration on the above grounds (PTC 1995, 105).
◦ The plaintiffs were a reputed manufacturer of dental cream COLGATE. Defendants use the mark
COLGATE with is phonetically similar to the plaintiff’s mark with the deceptively similar latter in
with red background so as to cause confusion in the minds of the customer and to pass off its
products as COLGATE. Hence the mark was restrained through injunction (PTC 1995, 389).
Illustrative case laws

28. Infringement of Trademark
◦ Section 29 of The Trade marks Act, 1999, deals with Infringement of Trade marks. In order to
establish an Infringement, a registered owner needs to just establish that there has been a
deception as to source and quality of goods and owing to such deception a loss has occurred.
◦ In such a case, the burden of proof is on the plaintiff who alleges that his mark has been
infringed. It is well settled position in law that the plaintiff has a responsibility to establish that
there is a deception and such deception led the user to make a decision to purchase such
deceptively similar goods.
◦ The Courts are of the view that the confusion must be seen from the context of a general
rational consumer who is neither careful nor careless and has an imperfect memory and is
unable to distinguish between goods which are similar or deceptively similar.

29. ◦ Section 30 of the Trademark Act infringement of a trade mark occurs if a person other than
the registered proprietor in the course of trade, in relation to the same good or services for
which the mark is registered.
Essential of Infringement:
1. The person must have registered the Brand (whether in form of words, name, logo, design,
tag line etc.) under its name as per the applicable provisions of Trademark Act 1999 to be
entitled to file the suit.
2. The suit for infringement can be brought for unauthorized use of registered brand or even
for intended or threatened use.
3. The infringement must be of a nature as it would actually amount to infringement due to
the similarity of the mark used with the registered mark or due the mark being identical to
the registered mark.
Infringement of Trademark

30. CONT…
4. It is also essential to prove that the person being alleged for Infringement, knew or had
reason to believe that the application of the mark was not duly authorized by the
proprietor or a licensee of the mark.
5. Existence of huge and natural likelihood of confusion, between the genuine trademark of
the registered proprietor and the mark used by the alleged infringer. For Example, a
company dealing in same business using the mark "Samsang", even though the spelling
and way of presentation is different from the famous "Samsung" trademark
6. Prominence, Popularity, and Convincing strength of the infringer's trademark by showing
similarity in the overall impression caused by both the trademarks. Example: In the
pronunciation of mark, overall commercial impression, etc.

31. WHO CAN BRING A SUIT
OF INFRINGEMENT
1. The owner/proprietor of the registered Brand/Trademark
2. A registered user of a trade mark subject to a prior notice to the registered proprietor
and consequent failure of the registered proprietor to take any action against the
infringer
3. Legal heir and legal successor of the proprietor of registered trademark
4. Legal heirs of the deceased proprietor of a trade mark
5. Joint proprietors of a trade mark.

32. Thank You