Visual and Phonetic similarity of Trademarks
The term ‘Trademarks’ is defined under the Section-2 (zb) of the Trademarks Act, 1999 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.” In simple words a trademark is a distinctive mark of any kind which is used by any legal entity, organisation, and individual to make their product easily identifiable to their customers and also to distinguish their product from any other similar product of the competitor.
The marks can be similar to each other on various factors like, the similarity of the marks, similarity in appearance, relatedness of the marks, similarity in pronunciation or similarity in the meaning of the words etc. There can be deceptive or phonetic similarity.
The Deceptive similarity is defined under the Section- 2 (1) (h) 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. In the case of S.M. Dyechem Ltd. v Cadbury India Ltd. the Supreme Court of India held that it is the duty of the plaintiff to establish that the essential features of the trademark 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.
There is a test to check the deceptive similarity of the trademarks and it was laid down in the case of Parle Products (P) Ltd. v J.P. & Co. Mysore. In this case the court held that, “the test for the determination of a trademark to be deceptively similar to the registered one would be, if a person would be likely to accept another one, if offered, instead of original one.” The test for checking the deceptive similarity of any mark with the competing mark for infringement or for action of passing off is same.
The definition for phonetic similarity is nowhere defined under the act but Section-29 (9) of the Trademarks act states the issue of trademark infringement due to phonetic similarity, it states “ Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.” The phonetic similarity is also a relevant issue dealt by the judiciary as it was the easiest factor of infringement to any product or its name. A normal human can be easily get confuse between the original and the fake mark as they both look deceptive by the trade dress, colour or packaging. There are various cases where numerous times the Indian courts with the help of their judgments made it easier to understand the concept of phonetic and deceptive similarity.
In Indo-Pharma Pharmaceuticals v Citadel Fine Pharmaceuticals the plaintiff was the manufacturer of the infants food products and all such products were sold under the trademark ‘ENERJEX and this trademark was associated with the plaintiff from past 15 years. On the other hand the defendant was using the trademark ‘ENERJASE’ for making the same product for medicinal preparation. The mark used by the defendant was deceptively similar to the mark of the plaintiff. The act of the defendant was a deliberate act to take over the market over the product name of the plaintiff. The court in this case found that, “the word ‘ENERJ” is an abbreviation of the generic word energy and this word can be easily used for energising products. A generic name of a product cannot be treated as a trademark to indicate the origin. The prefix for both the marks ‘ENERJ’ is common to the trade and cannot be proprietary name. Nobody can claim exclusive right to use such an abbreviation.
In another case of Amritdhara Pharmacy v Satyadeo Gupta the Supreme Court observed that the ordinary purchaser would focus more on the overall structure and phonetic similarity and the nature of the 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’ was held deceptively similar through the registration of ‘Lakshmandhara’ was allowed on the basis of honest concurrent user.
In the case of K. R. Chinna Krishna Chettiar v Sri Ambal & Co. Madras & Anr. The Apec 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 striking similarity and affinity of sound between the words ‘Andal’ and ‘Ambal’ and a real danger of confusion between the two marks.
In Ranbaxy Laboratories v Anand Prasad & 4 Ors.[6] the IPAB in this case 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 the Encore Electronics Ltd versus Anchor Electronics and Electricals Pvt Ltd[7] dealt with a similar point about the phonetically similarity between the two trademarks ‘Encore’ and ‘Anchor’. The court viewed that the phonetic structure of marks indicate how the rival marks ring in the ears and therefore phonetic similarity constitutes an important index in evaluating whether a mark bears a deceptive or a misleading similarity to another.
