Deceptive similarity in trademark law

By

Sakshi Shairwal

Diya Dave

Intellectual Property Rights (IPR) is primarily awarded to creators of intellectual properties in order to protect their rights over their creations. Unlike other IPs, the main purpose of granting a monopoly over a brand name or symbol to a particular entity is for the benefit of the general public. A trademark can be any word, phrase, symbol, or design that becomes an identifier for a business in a marketplace, setting it apart from its competitors. Therefore, the primary objective behind granting trademarks is for the convenience of consumers, to prevent them from getting misguided by the huge number of players in a marketplace. In that light, it becomes more important to protect consumers from getting misled due to similar looking/sounding identifiers. Thus, the concept of “Deceptive Similarity” comes as a boon in the trademark law.

Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” as “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”. It means that if an identifier of a business is so similar to an already established trademark that it will result in the consumers getting confused between the two brands, then it will be termed deceptively similar. For instance, in the case of M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, the logos of both the spice producing companies were the same with the only difference being that the plaintiff’s logo said “MDH” and that of the respondent said “MHS”. Delhi High Court, while passing an infringement order against the defendant’s use of the logo, said that both the logos were deceptively similar. Despite the similarity in the name or logo, what is an important criterion for holding something deceptively similar is the industry or the consumer base in which both the businesses function. The trademarks are assessed on the basis of whether the similarity is such that the consumers can get confused between the two.

This article studies the concept of deceptively similar trademarks with the help of a recent Bombay High Court judgment of Meher Distilleries Pvt.Ltd vs Sg Worldwide Inc. And Anr.

Background

The plaintiff, Meher Distilleries sued the defendant, Radico Khaitan on grounds of selling its single malt whiskey under the name “RAMPUR ASĀVA” which (as it claims) is similar to its own trademark, “THE ASWA”. The defendants argued that their trademark is taken from the Sanskrit term for any alcoholic beverage or fermented drink as opposed to the plaintiff’s trademark which is derived from the name of a village in Maharashtra, named Aswa. After listening to both sides, a single judge bench held that they are not deceptively similar and refused to grant an interim injunction.

The judge refused to grant the interim order primarily on the ground that “ASWA” and “ASĀVA” are not visually or phonetically similar because of the defendant’s use of the word “RAMPUR”. The primary argument of the defendant was that “RAMPUR” is the main brand under which it sells its products and “ASĀVA” is only a sub-brand. Therefore, if read together, “RAMPUR ASĀVA” could not be considered as deceptively similar to “ASWA”. However, the decision was challenged by the plaintiff’s and the Division Bench set aside the previous order and referred the case back for reconsideration.

Rationale of the Court

I.) “ASĀVA” is a Trademark

The reasoning of the Single Judge Bench was extremely flawed and narrow in understanding the concept of the trademark. As explained above, trademarks are assessed on the basis of how consumers view them. The single judge said that “ASĀVA” does not qualify for a trademark because it is coupled with the word “RAMPUR”. On the contrary, the division bench rightly looked at it from the lens of consumers in saying that even if the word “ASĀVA” was being used to indicate the sub-brand, it was a trademark because it distinguished that particular product from the others sold by the defendants. In that case, as observed in Hem Corporation v. ITC, the seller’s intention does not matter as long as the mark is practically functioning as a trademark in the sense that consumers are distinguishing the product on the basis of that mark. Therefore, “ASĀVA” was held to be a trademark.

Division bench furthered that reasoning by saying that even though the word “ASĀVA” is taken from the Sanskrit language and means an alcoholic or fermented drink, it cannot be considered a generic descriptive word. This is because the consumer’s perception of that word is not the same as that of the seller’s in the case of lesser-known archaic words. Most people who purchase that single malt do not read “ASĀVA” as “fermented alcoholic beverage”. Instead, they look at it as a word descriptive of that particular whiskey, which makes it an even stronger assertion of the trademark.

II.) “ASĀVA” and “ASWA” are Deceptively Similar

The Single Judge bench held that the words “ASĀVA” and “ASWA” are not phonetically similar because of the diacritical mark which brings a difference in pronunciation. It is said that “ASWA” is disyllabic while “ASĀVA” has three syllables and is pronounced like “Ahs-AH-VA”, therefore, it is not a deceptive similarity. However, the division bench corrected its position on it by pointing out the similarity from the perspective of the consumers. It said that the phonetic impact of the mark must be assessed by the first impression it makes on the mind of the consumer. As it was established that the average consumer would be unaware of the meaning or pronunciation of the word “ASĀVA” and thus, will pronounce it in a manner that sounds very similar to the word “ASWA”. Hence, both the words being phonetically similar, create confusion in the mind of the consumer between both the brands.

The Single Judge applied a rationale that the purchasers of single malt whiskey are largely aware of different brands and have firm preferences, thereby, eliminating confusion in this class of luxury products. However, the division bench clarified that this standard does not apply on a consumer base like the one in India. The attribute of gullibility cannot be wiped out from a particular social or financial class. Thus, the likelihood of confusion still remains and a decision must be taken on the basis of the consumption patterns of the product in question. In the context of this case, both the words “ASĀVA” and “ASWA” were found to be deceptively similar because of the phonetic proximity which increases the likelihood of consumers getting confused between both the products.

Standards for Determination of Deceptive Similarity

The Hon’ble Supreme Court has long ago set the standards for determining deceptive similarity in 2001 in the case of Cadila Healthcare Ltd v. Cadila Pharmaceutical Limited. In this case, the court laid out certain rules for this purpose. The court said that while deciding if the marks are misleading, one should consider the following points-

i.) The nature of goods or services that the mark is concerned with.

ii.) The level of similarity that both the marks have.

iiii.) The consumer base that the business serves.

iv.) The nature of the mark- whether it is a word, symbol, or phrase.

In another case of Parle Products (P) Ltd. v. JP Co. Mysore, the Hon’ble court gave the test to determine the deceptive similarity between two trademarks. It said that a detailed analysis of both marks is not necessary. Instead, an overall similarity should be judged on the basis of the

likelihood of confusion that it can cause from the perspective of the consumer. It said that the similarity should be judged as a whole from the intellect of an average person with the imperfect collection.

Applying the standards of similarity from both the above cases, “ASĀVA” and “ASWA” are deceptively very similar. Both the parties to the case function in the same industry of alcoholic beverages and are likely to serve a similar consumer base. Both the marks are simple words that are overall very similar. The division bench rightfully looked at them from the point of view of the consumers and determined the outcome of the dispute. Following the Bombay High Court judgment, the defendants filed an appeal to the Supreme Court. The court remanded the matter to the Commercial court, the final decision of which is yet to come. It is hopeful that the outcome of the hearing would strengthen its position on it by establishing a better standard to determine similarities between the two trademarks.

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