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In these days of globalization and rapid growth of commerce with new businesses emerging every other day and pre-existing businesses growing wider and wider, it is crucial for every business or products to create its own name and goodwill and to protect it from its competitors. Thus, here trademark has an important role to play after all to form a distinguished identity of the product or business which in turn brings in revenue. A quality product that has a trademark can shot up the business and protect it in case a competitor uses the goodwill of that business to generate revenue and people can use Deceptive Similar marks. The trademark can be the packaging of the product, a symbol or slogan, letter, word, shapes, or just a name that can be graphically represented and is of such nature that it would help distinguish one product from the others.
No wonder trademark can ensure success and growth in business and revenue generation; however, it does come at its own costs. It becomes open to infringement and misuse. One such way is by creating a trademark that is “deceptively similar” to an already existing trademark in order to perplex the customers and bring in revenue using the goodwill and brand value of the other’s business. This results in loss of revenue of the original business and even leads to loss of reputation of that business.
Earlier it was observed that the only scenario where there can be a trademark infringement is when there are chances of perplexity regarding the roots or origin of the trademark. The rationale behind providing protection to trademarks is to protect the goodwill of the business and products and give the buyers or consumers a promise of consistency regarding the quality of those products. However if there is no likelihood between the products then the possibility of perplexity does not arise. Just because one mark reminds a person of another mark, it does not form sufficient ground for a case of passing off.
There is a prima facie case of infringement if the two marks are undistinguishable. However, in cases where the marks are merely similar, the burden of proof is on the plaintiff to show that such similarity has caused perplexity in the minds of the customers and are thus deceptive. The final test of similarity would be the customers who when given to distinguish between the two similar marks, would fail to do so by bearing confusion in their minds. There is no need to prove intention. It is sufficient if it is concluded by the court that the mark is likely to cause deception. Deception can arise with regards to goods, trade origin or trade connection.
The term “deceptively similar” has been defined in Section 2(h) of the Trade Mark Act, 1999 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 or cause confusion.”. The act mentions what could be “deceptively similar” but does not lay down any parameters for deciding the same.
Elements in the case of passing off
- There is misrepresentation,
- Done by a business or a company during the course of business,
- To customers that ultimately purchase his products,
- Which if measured is reasonably foreseeable to cause loss to the goodwill and sales of the other business,
- Actually causes loss to the business that brings for the suit of infringement and passing on.
Factors that determine “deceptive similarity”
- The nature of the marks, whether the marks are words, labels or composite marks.”
- The rate of likeness between the marks which sound alike and may be similar in idea.
- The type of products that are identified by these marks.
- The resemblance in the essence, property and efficiency of products of the competitor’.
- The class of buyers who are inclined towards buying the goods with their educational and rational and the degree of awareness and care they are to exhibit while purchasing the product.
- The mode in which the products are purchased or are ordered online.
- Any other relevant fact which are essential to the dissimilarity between the marks.
It has to be kept in mind that not all the above mentioned factors help determine a case and priority is given to different factors depending on the facts of the case. The case of deceptively similarity can only be determined by stepping in the shoes of the customer, who is considered to be a man with ordinary intelligence. If the marks of the two different brands lead to confusion in the mind of the customer, then there is a case of deceptive similarity.
Relevance of Test of “phonetic” similarity
In a passing off case, emphasis and importance is give to the similarities and not dissimilarities and the Principle of “phonetic” similarity cannot be overlooked and the test is to see whether that mark has gained popularity in market so as to perplex the customer regarding the nature of goods he is buying. In M/s Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr., it was held that the trademarks “Officer’s Choice” and “Fauji’s” were not “deceptively similar”. The words were phonetically different and, the word “officer” meant “a person in power” whereas the word “Fauji” literally meant a soldier.
Case of Likelihood and Confusion and the concept of Trade Dress
Trade Dress refers to when the packaging or the appearance of a particular product helps the consumers to identify the origin of the product. There are no separate provisions for Trade Dress in Indian Trademark Law. Customers often get perplexed due to the similarity in packaging or appearance of the product and are mislead into buying other similar products are they are unable to distinguish between them.
In Pidilite Industries limited v. Poma-ex Products Plaintiff’s mark “FEVIKWIK” conflicted with the Defendant’s mark “KWIKHEAL”, also the concept of trade dress played a significant role in making a decision. The defendant had its own registered trademark but was not using the same but using the same packaging as was originally made by the plaintiff. It was held that the packaging of the Defendant’s product was likely to cause confusion among the public as the packaging of the two products were identical.
Degree of Judicial Scrutiny in respect of “deceptive similarity” in medicinal products
When there is a question of “deceptive similarity” over the marks of medicinal products, then exacting judicial scrutiny becomes necessary as the possible circumstances would be way more severe than that in case of perplexity over regular products. There is a scope for mistake if the marks are deceptive or misleading. There can be confusion over prescription drugs as well where several like products are sold under marks that look or sound similar. More often than not when the handwriting in the prescription is not legible or when the prescription has been dictated over a phone call, there increases the possibility of the pharmacists becoming confused and making mistakes while filling the prescription if the marks look too much alike.
These days the medicines are marketed and sold internationally. There may arise a situation where an Indian Company might have a conflict over its mark with a foreign company. The court has to see that the public interest should not be harmed in any way. Medical experts, doctors and other people linked to the medical field frequently attend medical seminars, lectures, conferences, etc, Along with that the medicines are marketed widely with advertisement on TV, newspapers and other media platforms which leads to the creation of a particular reputation for a particular company or its products and that reputation is linked to the mark of that company. Thus, a confusing situation may arise if the mark of an Indian Company is perceived as identical to the mark of the foreign company. But if the foreign company has no plans in extending its business in India, then it won’t be allowed to gag on Indian Company that has legitimately created the mark, has worked towards developing the product or medicine and was the first one to introduce the product in the market.
Thus, the Final Rule is to determine which one was the first to introduce the product in the market.
Thus, the India Judiciary, by the plethora of Judgements has laid down the basic criteria and elements for Deceptive Similarity which has not been mentioned in the Trademark Act, 1999. The judgements that formed precedents now give a standardized way of approaching a controversy of Deceptive Similarity. With increasing trends and businesses, these precedents remain a ground rule for determining a passing off case. The Apex Courts via their judgements have laid down tests like Phonetic test and have highlighted the elements and factors of deceptive similarity in trademark law.
 H.C Dixon & Sons Ltd. v. Geo Rihardson & Co. Ltd 50 RPC 36, p 374”
 Trademark Act 1999
 Heinz Italia v Dabur India Ltd. (2007) 6 SCC 1
 Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
 National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR 1953 SC 357
 Heinz Italia v Dabur India Ltd. (2007) 6 SCC 1.
“M/s Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.” CS(COMM) 819/2018 & I.As. 5616/2018, 14586/2018 Delhi High Court
 Milmet Oftho Industries v Allergan Inc., (2004) 12 SCC 624.