Gavin Howe
In India, trademarks are protected by the Trademarks Act, 1999, which provides a robust legal framework to safeguard businesses from infringement or misuse. A key aspect of this law is the concept of deceptively similar trademarks, which refers to marks so similar to existing trademarks that they are likely to deceive or confuse consumers. This idea of deceptive similarity is crucial in trademark law, serving as grounds for both infringement and rejection of trademark registration. When assessing similarity, examiners consider the distinctiveness of the registered mark, scrutinising it as a whole and taking into account the average intelligence and recall ability of the public. The defence of honest concurrent use, provided under Section 12 of the Act, allows for the registration of similar or identical trademarks, but the decision is up to the Registrar's discretion. This defence has been detailed in landmark judgements and case laws in India, such as Kores (India) Ltd. v. M/s Eshwarsa and Sons in 1958, setting important precedents for interpreting and applying trademark law in the country.
| Characteristics | Values |
|---|---|
| Legal basis | Trademarks Act, 1999 |
| Definition of deceptive similarity | "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" |
| Grounds for infringement | A mark is deceptively similar to an existing registered trademark |
| Defences | Honest concurrent use, distinct industries, delay in taking legal action, differences in marks |
| Penalties | Injunction, damages, accounts of profits, imprisonment |
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What You'll Learn
The defence of honest concurrent use
To establish honest concurrent use, an applicant must demonstrate that they have been using the mark in good faith and were unaware of the prior registered trademark. They must also show that relevant customers associate their mark with their goods or services. The defence of honest concurrent use can be used as a strategy to register similar trademarks and protect entities that have been honestly using such marks.
It is important to note that honest concurrent use does not apply if the trademark is being used merely as an acronym or abbreviation rather than a true indication of the origin of goods or services. For example, in the case of ITM Trust v. Educate India Society, the defendant was unable to claim honest concurrent use of the mark "ITM" because they could not demonstrate that it was being used as a trademark rather than an acronym for "Institute of Technology and Management".
In summary, the defence of honest concurrent use in Indian trademark law allows for the coexistence of similar trademarks as long as it can be shown that the similarity is unintentional and has not caused significant confusion or harm to consumers. The defence provides a way to protect entities that have been honestly using similar marks and prevents the monopolisation of trademarks by a single entity.
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Differences in industries and consumer base
For example, in a case involving Sony Corporation and a tours and travel business named Sony Tours and Travels, the court ruled in favour of the defendant, stating that the businesses were distinctly different, and consumers weren't likely to be confused.
In another case, the court ruled that the use of the trademark 'CHARMINAR' for different products was distinct enough to warrant separate trademark registrations, despite both products being tobacco-related.
However, it is important to note that even well-known trademarks cannot claim a monopoly across all industries. For example, in a case involving Proctor and Gamble's "OLAY TOTAL EFFECT" anti-aging cream and Joy Creators' "JOY ULTRA LOOKS TOTAL EFFECTS", the court ruled in favour of Proctor and Gamble, emphasising the substantial resemblance and the likelihood of consumer confusion, despite the products being in different sectors.
Additionally, in a case involving pharmaceutical products, the court held that even slight similarities in trademarks in the pharmaceutical industry require stricter scrutiny due to the potential health risks involved. This case established higher standards for industries where consumer safety is paramount.
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Likelihood of reasonable confusion
The concept of "likelihood of reasonable confusion" is a crucial aspect of trademark law in India. This concept addresses situations where a trademark is so similar to an existing registered trademark that it is likely to deceive or confuse consumers. Such deceptive similarity can lead to infringement of trademark rights, affecting brand identity, misleading consumers, and damaging business reputation and revenue.
To determine the likelihood of reasonable confusion, courts in India consider various factors, including those laid out in the Evershed formula from Smith Hayden's Application: "Assuming user by the opponent of his registered trademark in a normal and fair manner for any of the goods covered by the registration of the mark (and including particularly goods also covered by the proposed registration of the mark), is the court satisfied that there will be no reasonable likelihood of deception or confusion amongst a substantial number of persons if the applicant also uses his mark applied for normally and fairly in respect of any goods covered by their proposed registration."
The European Court of Justice has identified three circumstances under which the likelihood of association or confusion may arise:
- Likelihood of direct confusion: Where the public confuses the sign and the trademark in question.
- Likelihood of indirect confusion or association: Where the public connects the proprietor of the sign with that of the trademark and confuses them.
- Likelihood of association in the strict sense: Where the public considers the sign similar to the trademark, and the perception of the sign calls to mind the memorable trademark, even though they are not confused.
Additionally, the Indian judiciary has provided further insights through case laws on deceptively similar trademarks. For example, in the case of Cadila Healthcare, the court emphasised that even slight similarities in trademarks within the pharmaceutical industry require stricter scrutiny due to potential health risks associated with consumer confusion.
To avoid potential issues with trademark registration and infringement, it is advisable to consult a trademark lawyer who can conduct a trademark search and identify any potential conflicts. They can also assist in assessing and overcoming any likelihood of confusion refusals during the trademark registration process.
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Delay in taking legal action
In the case of Essel Propack v. Essel Kitchenware (Bombay HC), the plaintiff was found guilty of not only delay but also acquiescence. The plaintiff was a registered proprietor of the trademark "ESSEL" in various classes for goods and had opposed the defendant's application for a similar trademark in 2003. Despite this early opposition, it was only in 2010, seven years later, that the plaintiff filed a trademark infringement suit. The court held that the plaintiff's conduct amounted to "assent to an infringement of rights, either express or implied", resulting in the loss of their right to equitable relief.
In another case, Hindustan Pencils v Indian Stationery, the plaintiff was aware of the defendant's use of its "Nataraj" trademark since 1982 but only instituted an infringement suit more than six years later in 1989. The defendant claimed that the plaintiff was not entitled to interim relief due to the delay in filing the suit and had acquiesced to the use of the mark. The court held that delay by itself was not a sufficient defence to an action of interim injunction, but the plaintiff's conduct was still a factor in the case.
It is important to note that the defence of delay and acquiescence may not always be successful, as demonstrated in the case of Starbucks objecting to Sardarbuksh Coffee & Co's logo and name. Despite Starbucks' delay in taking legal action, the Delhi High Court still ruled in their favour, granting an injunction and damages due to the likelihood of consumer confusion.
To summarise, while delay in taking legal action can be a defence against trademark infringement in India, it is not an absolute defence and the success of such a defence will depend on the specific circumstances of each case. Trademark owners should be mindful of any potential infringement and take timely action to enforce their rights effectively.
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Differences in marks when seen in totality
In India, trademarks are protected by the Trademarks Act, 1999. This Act provides a robust legal framework to protect trademarks and service marks. Service marks are symbols, signs, or words used by market entities to differentiate their services.
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. Deceptively similar trademarks can lead to negative consequences and penalties, both civil and criminal.
When comparing two marks in a case of trademark infringement, the marks in question must be considered in totality and not in parts. This means that the marks must be scrutinised as a whole, taking into account the average intelligence and recall ability of the public. The examiner for the application will consider the 'probability' of confusion, and the question of whether it amounts to reasonable confusion may arise.
For example, in the case of Proctor and Gamble's "OLAY TOTAL EFFECT" anti-ageing cream and Joy Creators' "JOY ULTRA LOOKS TOTAL EFFECTS", the Supreme Court decided that despite minor differences, the resemblance was enough to cause confusion. Similarly, in the case of Sun Pharma Laboratories Ltd v. Lupin Ltd & Anr, the Delhi High Court held that the trademarks must be taken as a whole and that prior use of a part of the mark cannot be a ground for trademark infringement.
In another case, the Delhi High Court ruled in favour of Cadbury India Pvt. Ltd in an infringement suit against a defendant selling products using the trademark "James Bond". The court held that this mark was deceptively similar to Cadbury's recognised trademark "GEMS BOND" and was likely to confuse consumers.
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