Judicial View On Deceptive Similarity – A Closer Scrutiny
Author: Mugdha Phadke
Trademark plays an important role in the development of a business. It not only creates a brand value but also helps in generating revenue. While the Trade Marks Act, 1999 acknowledges the term ‘deceptive similarity’ as under Section 2(h), it does not lay down any rigid criteria that would narrow the ambit or scope of adjudication by the judiciary. This usually results in various brands copying or translating the well known trademarks in order to benefit from their goodwill. Such translation cases in India are ruled under deceptive similarity cases.
The Courts have gone a long way to ensure due credit & fair treatment is given to the trademark owners. Earlier the judiciary used to favour a broad interpretation of this concept but it has changed eventually which can be seen from the latest judgements.
The High Court of Delhi in Imagine Marketing Pvt. Ltd. vs Exotic Mile (CS (COMM) 519/2019 passed an interim injunction against Exotic Mile because it violated the registered Trademark ‘boAt’ of Imagine Marketing Pvt. Ltd. The court held that Exotic Mile had dishonestly acquired the trademark ‘BOULT’, which is phonetically and deceptively similar to ‘boAt’. Further it also held that the tagline ‘UNPLUG YOURSELF’ by Exotic Mile was also confusingly similar to its tagline ‘PLUG INTO NIRVANA’. The court passed an order restraining Exotic Mile from using the Trademark as well as the tagline mentioned.
In the case of M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr the court ruled that the trademarks ‘Officer’s Choice’ & ‘Fauji’s’ were not deceptively similar. The plaintiff has trademarked the term ‘officer’s choice’ in 1988 for using it for Alcoholic Beverages. The defendants started using the mark ‘Fauji’ with respect to the same product. The plaintiff contended that the literal interpretation of the term ‘fauji’ would be military officer and also the fact that both of them were in the same business could lead to confusion. The court held that the trademarks were not similar .It contended that the word were phonetically different and that the expression ‘officer’ means a person who is in power, whereas the term ‘fauji’ means a soldier.
In the case of M/s Bhatia Plastics v. M/s Peacock Industries Ltd, ‘Peacock’ and ‘Mayur’ the two trademarks were held as deceptively similar by the court as both the words represented a bird. Also it should be noted that in this case the marks were literal translation, which was not the case in the ‘Fauji’ matter.
The Hon’ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra, [2002 2 SCC 147] laid down certain guidelines on deceptive similarity as it caused infringement by using the goodwill of original traders. The parties in the case were a renowned motor vehicle manufacturing company and a paper mill of Gujarat. Their names coincided with each other with just a subtle difference of the letter ‘A’, being phonetically and visually similar and identical. It was held by the plaintiff that the defendants were using their goodwill fraudulently which the courts agreed with.
The doctrine of deceptive similarity is broadly used by courts in India. There is a dire need to protect Trademark as it plays a very important part in a business as well as in its goodwill. Indian Judiciary has taken an interest in preventing trademark Infringement and laid down several guidelines making the adjudication in such cases easier.