Anti-Dissection Theory under Trademark Law in light of deceptive similarity/confusion 

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Introduction

A trademark is a visual symbol that is put to products of commerce in the form of a word, a device, or a label with the express purpose of indicating to customers that the goods are those manufactured by a specific individual and can be recognized from those manufactured or produced by others. It also applies to services available to the consumers. As a result, in order to qualify for protection, a trademark must be distinctive in character and not intended to cause any form of confusion as to the origin of products or services. In India, Trade Marks Act, 1999 provides for the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. 

In Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt., it was held that “the difference in the style of the appearance of words on the container or packing which identifies its manufacturers by way of style, colour combination or textures or graphics is certainly significant or relevant for determining the overall imitation of the container but when a product is having distinctive colour combination, style, shape, and texture has been on the market for decades as in this case it is in the market since many years it leads to ineluctable inference of having acquired secondary meaning on account of its reputation and goodwill earned at huge cost.” 

Provisions for Refusal of Registration of Trademark under the Act

The grounds for refusing to register a trademark are outlined in Section 9 of the Act. The usage of the word “shall” in all three subsections of Section 9 makes it clear that registration of the mark as a trademark is barred in the circumstances set out therein:

  1. where the trademarks lack any distinctive character, i.e., when they cannot distinguish one person’s goods or services from those of another [Section 9(1)(a)],
  2. where the trademark consists solely of signs or indications that designate characteristics of the goods or services, such as the kind, quality, quantity, purposes, values, geographical origin, or time of production or providing of service [Section 9(1)(b)],
  3. when the marks are exclusively “customary” marks or indications that have become established trade practises [Section 9(1)(c)],
  4. Where the mark has the potential to deceive or confuse the public [Section 9(2)(a)],
  5. When the mark contains any matter likely to offend religious sentiments [Section 9(2)(b)], 
  6. when the mark contains scandalous or obscene material [Section 9(2)(c)], 
  7. when the use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 [Section 9(2)(d)], 
  8. where the mark consists exclusively of the shape of the goods, which is necessary to obtain a technical result [Section 9(3)(a)], 
  9. where the mark consists exclusively of the shape of the goods, which is necessary to obtain a technical result [Section 9(3)(b)], 
  10. where the mark consists exclusively of the shape of the goods, which is necessary to obtain a technical result [Section 9(3)(c)],

The proviso to Section 9(1) eliminates the applicability of Clauses (a) to (c) of Section 9(1)  where the mark has acquired a distinctive character as a result of its use or is a well-known trademark before the date of application for registration. Section 2(zg) of the Act defines “well-known trademark” as follows:

“Well-known trade mark in relation to any goods or  services, means a mark which has become so to the  substantial segment of the public which uses such goods or  receives such services that the use of such mark in relation to  other goods or services would be likely to be taken as  indicating a connection in the course of trade or rendering of  services between those goods or services and a person using  the mark in relation to the first-mentioned goods or services.”

Section 11 explains why the Registrar may refuse to register a trademark and, in general, prohibits registration of a mark that is identical to or deceptively similar to an earlier trademark. 

Effect on Partial Registration

Section 17(1) expressly grants the owner of a registered trademark “consisting of several matters” the exclusive right “to the use of the trademark as a whole” to the owner of the trademark. Section 17 (2) explains this point further by stating that the registration of a “composite trademark” does not grant the holder exclusive rights over any part of the mark, where: 

  1. It is not the subject of a separate trademark application or is not separately registered as a trademark [Section 17(2)(a)], and 
  2. If the part contains any matter that is common to the trade or has a non-distinctive character [Section 17(2)(b)]

Infringement of Trademark

Infringement of an unregistered trademark is prohibited under the Act, but passing off actions in this respect are not barred under Section 27. Section 28 gives the owner of a properly registered trademark the exclusive right to use the trademark in connection with the products or services for which it was registered, as well as the ability to sue for trademark infringement. In Section 29, the term “infringement” is defined as follows: 

  1. The defendants’ mark is identical to, or deceptively similar to, the plaintiff’s trademark and is used in connection with goods or services for which the trademark is registered [Section 29(1)]
  2. When the defendant’s trademark is identical to the plaintiff’s trademark and the defendant’s goods or services are sufficiently similar to the plaintiff’s that they are likely to cause confusion or association with the registered trademark [Section 29(2)(a)]
  3. Where the disputed trademark is confusingly similar to the registered trademark and the defendant’s goods or services are identical to the plaintiff’s, or so similar as to cause confusion, or have an association with the plaintiff’s trademark [Section 29(2)(b)]
  4. If the defendant’s registered mark and goods or services are identical to those of the plaintiff, causing confusion or having an association with the plaintiff’s trademark [Section 29(2)(c)] (in which case  Section 29(3) creates a presumptive fiction of likelihood to  cause confusion on the part of the public).
  5. where the defendants’ mark, though identical or similar to the plaintiff’s registered trademark, is used in relation to goods or services that are not similar to those of the plaintiff, if the plaintiff’s registered trademark has a reputation in India and use of the defendants’ mark without due cause takes unfair advantage of, or is detrimental to, the plaintiff’s distinctive character or repute. 
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Provision which protect registration of mark in exceptional situations

The registration of the trademark is, by virtue of Section 31(1),  prima facie evidence of the validity thereof. Section 32 validates trademarks registered in violation of Section 9(1), i.e., which are not distinctive in character or consist exclusively of marks or indications, which designates the characteristic of goods or services or consist  exclusively of marks or indications, or which have become customary  in the trade, where, by virtue of extended use after registration, the  mark has acquired a distinctive character in relation to the goods or  services, in respect of which it is registered. 

In the case of trademarks, Section 33 recognises the principle of acquiescence by providing that a proprietor of an earlier trademark cannot seek a declaration that a later trademark of another person is invalid, or oppose the use of the later trademark, if he has acquiesced in such use for a continuous period of five years.This provision, however, is statutorily made  inapplicable where the registration of the later trademark is not in  good faith. 

Priority of use is required under Section 34 of the Act for a registered trademark owner to either interfere with the use or contest the registration of another person’s allegedly identical trademark. Section 34 of the Act provides that identity or similarity of a  registration cannot afford a ground to restrain use, by the holder of the  allegedly identical/similar trademark, if such use predates the use or  the registration of the former, allegedly infringed, trademark. Prior  users are also provided, in the said provision, as a ground on which a  trademark, similar to an already registered trademark, may nevertheless  be registered. 

Judicial Authorities on the aspect of confusion or deceptive similarity

On the aspect of confusing or deceptive similarity, which is the sine qua non for any successful action for infringement or passing off,  Delhi High Court has, in its recent decision in FDC Ltd. v. Faraway Foods Pvt.  Ltd., Natures Essence Pvt. Ltd. v. Protogreen Retail Solutions Pvt.  Ltd. and Britannia Industries Ltd. v. ITC Ltd., culled out the  following principles, from the decisions in Satyam Infoway (P) Ltd. v.  Siffynet Solutions (P) Ltd, Cadila Health Care Ltd. v. Cadila  Pharmaceuticals Ltd., Amritdhara Pharmacy v. Satya Deo Gupta, K. R. Krishna Chettiar  v. Shri Ambal& Co., F. Hoffman-La Roche & Co. Ltd. v. Geoffrey  Manners & Co. Pvt. Ltd., Mahendra & Mahendra Paper Mills Ltd.  v. Mahindra & Mahindra Ltd., Laxmikant V. Patel v. Chetanbhai  Shah, which can be summarized as follows: 

  1. When determining deceptive similarity, it is essential to consider the type of customer who would buy the product. The appearance and sound of trade marks, as well as the nature of the goods, are all important factors to be considered. Circumstances in the immediate vicinity are also important.
  2. The plaintiff who alleges infringement/passing off bears the burden of proof. In contrast, in an opposition to a trade mark’s registration, the defendant seeking non-registration or removal from the register bears the burden of proving deceptive similarity.
  3. The term “confusion” relates to the state of mind of a customer who, upon viewing a mark, believes it differs from the mark on products he has previously purchased, but is unsure whether this impression is due to imprecise recollection. 
  4. This is particularly true when it comes to phonetic similarities. A careful syllable-by-syllable comparison of the terms should be avoided. The risk of careless pronunciation and speech on the part of the buyer entering into the store, as well as the shop assistant, must also be taken into account.
  5. The situation must be assessed through the eyes of a person with average intelligence and imperfect memory. It’s important to consider how such a buyer would react to the trade mark, the associations he’d make, and how he’d tie the trade marks to the things he’d be buying.
  6. The Pianotist test, which was proposed over a century ago, has been consistently endorsed by the Supreme Court as the authoritative criteria to use when assessing competing trade marks. According to this test, the Court must assess competitor trademarks based on their appearance and sound, as well as consider:
  1. the products on which they will be used
  2. the nature and type of customer most likely to purchase those things
  3. all of the surrounding circumstances
  4. the repercussions that would occur if each of the marks were utilised as a trade mark for the respective owners’ goods in the customary way.

The common part of the words composing the competing marks may not be decisive in this process. The general similarity of the composite terms must be seen, taking into account the fact that both are on related goods of similar description. The test to be utilised is if there is a chance of confusion or deception if the two marks are used in a normal and fair manner.

7. The entire word/mark must be taken into account. An ordinary person would not break down a term or name in a trade mark into its constituent parts, instead relying on the overall structural and phonetic likeness of the marks to the nature of the items he has previously purchased, or has been told he wants to buy. It must be determined whether the defendant’s entire trademark is likely to induce deceit, confusion, or error in the minds of those who are familiar with the plaintiff’s existing trade mark.

8. The similarity could be phonetic, visual, or in the basic notion that the plaintiff’s mark represents. However, the Court is compelled to use both the phonetic and visual exams. Even if the marks are visually dissimilar, ocular similarity may be sufficient to find the probability of confusion/deception, albeit ocular similarity may not always be the deciding factor.

9. The Court must determine whether the fundamental elements of the plaintiff’s mark are present in the defendant’s mark. The determination of the essential features is a factual matter that is left to the Court’s discretion.

10. There are no objective guidelines for the degree of similarity that is likely to lead to deception. It must be viewed from the perspective of the goods’ customers. The test that should be used would be determined by the facts of the case. Precedents are only useful if they establish tests for application, not if they are based on facts.

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Anti-Dissection Rule 

The rule was first propounded in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals. The court held that when the defendant’s use of the mark that is claimed to infringe the plaintiff’s mark is shown to be “in the course of trade,” the question of whether there has been an infringement is resolved by comparing the two marks. It should, however, be borne in mind that the object of the inquiry in ultimate analysis is whether the mark used by the defendant as a whole is  deceptively similar to that of the registered mark of the  plaintiff.

Further in the case of Registrar of Trademark v. Ashok Chandra Rakhit, the court held that when a unique label is registered as a whole, it cannot conceivably grant the proprietor of the trade mark any exclusive statutory right to use any individual word or name contained therein apart from the mark as a whole.

In the landmark judgment of Amritdhara Pharmacy v. Staya Deo Gupta, the Supreme Court after ruling that “the use of the word “dhara,” which literally means “current or stream,” “was not by itself decisive of the matter.” The Supreme Court went on to rule that “the overall structural and phonetic similarity” between the names “Amritdhara” and “Lakshmandhara,” which were used in connection with identical products, was likely to cause confusion. From the customer’s perspective, the Supreme Court reaffirmed the anti-dissection principle, stating that “an unwary purchaser of average intelligence and imperfect recollection would not, as the High Court assumed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as “current of nectar” or “Current of Laxman.””

In the case of Stiefel Laborataries v.  Ajanta Pharma Ltd, the court observed that when comparing conflicting composite marks, the court must look at them as a whole rather than breaking them down into their component pieces for comparison. This is called the “anti-dissection” rule. The rule is based on the fact that a composite trademark’s commercial impression on an ordinary prospective buyer is produced by the mark as a whole, not by its component elements. Viewing the component elements of conflicting composite marks as a preliminary step toward determining the likely customer reaction to the conflicting composites as a whole is not a violation of the anti dissection rule. As a result, in order to evaluate conflicting marks in their entirety, they must be compared as a whole.

Dominant Rule: the Confusion with Anti-dissection rule

Having noted the “anti-dissection rule” and its facets, it is important to consider that, in applying this rule, the Court was also required to consider the “dominant mark” test, under which, if any part of the plaintiff’s mark is found to be dominant, the Court must consider whether the defendant has infringed on that dominant part of the plaintiff’s mark. The Court did not break the anti-dissection rule by identifying a dominating part of the plaintiff’s mark and determining whether it was infringed by the dominant part of the defendant’s mark, according to the court. This principle was observed in the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., as follows: 

“While a mark must be examined in its totality, it is allowed to assign greater or lesser value or “dominance” to a particular piece or element of a mark in the case of composite marks. As a result, a ‘dominant mark’ is a component of a composite mark that has a higher prominence than the other constituent pieces.”

The Court further observed that even though it has also been established that, while a trademark should be examined in its totality, the consideration of a trademark as a whole does not permit infringement where only a portion of the trademark is appropriated. In the case of composite marks, it is not incorrect to identify aspects or features of the marks that are more or less essential for the purposes of analysis.

This was reiterated in the case of P.K. Overseas Pvt. Ltd. & Anr. v. Bhagwati Lacto Vegetarians, that even while a trademark is not to be dissected into parts, and the parts compared with corresponding parts of the allegedly infringing trademark in order to assess the existence of infringement,  nonetheless, if a “dominant part” or “essential feature” of the plaintiff’s mark is imitated by the defendant, the Court may legitimately examine whether, by such imitation, infringement has taken place.  

Conclusion

It is not sufficient to compare a trademark to another trademark that is already registered and whose proprietor is opposing the registration of the former trademark in order to determine whether it is likely to deceive or cause confusion. It’s crucial to determine the distinguishing or essential feature of the already-registered trade mark, as well as the main feature or main idea underlying that trade mark; if the alleged trade mark contains the same distinguishing or essential feature or conveys the same idea, it’s a clear case of intent to deceive or cause public confusion.

Exclusivity can only be asserted, and infringement/passing off can only be alleged, if the plaintiff’s complete mark is involved, not just a portion of it. The registration of the entire mark does not grant the proprietor of the mark exclusive rights to any component of the mark. It is possible for the plaintiff to claim infringement based on the defendant’s copying of a part of the mark, as long as the part copied is the dominant component or an essential characteristic of the plaintiff’s trademark. However, no exclusivity can be claimed, over a descriptive mark, or a descriptive part of the mark, even by misspelling it.  

To this general proposition, there is one exception, where the descriptive mark or descriptive part has attained distinctiveness, i.e. it has acquired a secondary meaning, indelibly linking the mark, in the mind of the consumer, to the  goods or services provided by the proprietor thereof.  Acquisition of secondary meaning is essentially a matter of trial  and evidence. Evidence of extensive use is insufficient. The proprietor claiming that his mark has acquired secondary  meaning must show that the secondary meaning has entirely displaced the primary descriptive meaning of the mark, and has resulted in the mark becoming identified exclusively with his  goods or services. This requires evidence of members of the public, testifying to that effect. Where the defendant also makes  out a case of extensive use of its mark, it militates against any  acquiring of secondary meaning by the mark of the plaintiff.