Nikita Gill, O.P. Jindal Global University
A trademark provides protection to the owner of the mark which is used to represent the goods and services of that specific business by ensuring exclusive right. It is clearly defined under Section 29(1) of the Trademarks Act, 1999 “A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.”1 In Amritdhara Pharmacy v. Satya Deo Gupta2 the respondent, Satya Deo had applied for registration of trademark for a medicinal property ‘Lakshmandhara’ to which the appellant contended saying that the trade name ‘Lakshmandhara’ was likely to cause confusion and deception and had an exclusive right in ‘Amritdhara’ which was his medicinal preparation since 1901. The decision of the Allahabad High Court was overruled by the Supreme Court where it was held that the two words are similar relying on the test of comparison of marks where the comparison must be made from an average man’s intelligence and imperfect recollection. In Atlas Cycles Industries Ltd. v. Vikas Cycles Delhi3 the defendant had replicated/copied the trademark ‘ATLAS’ in which the court held that the trademark rights of the plaintiff had been infringed under section 29(3) of The Trademark Act, 1999 where the court presumed that the identical trademark is likely to cause deception and confusion in the market. Similarly, in Parle Products Pvt. Ltd. v. JP & Co.4 the Supreme Court held that the two biscuit packets are of the same size, colour scheme and the designs on the packets closely resemble each other which can easily cause confusion and deceive the customers. The word ‘Glucose Biscuits’ on one packet and ‘Gluco Biscuits’ on the other are also similar. Both the packets contain a girl with a raised arm with cows nearby and hens in the ground to which the background is also similar containing a farmhouse with a fence. The court further said, “In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated.”5 For deciding whether a mark is deceptively similar the broad and essential features must be taken into consideration. An overall similarity is enough to determine if the mark is likely to mislead the customers. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.6 the plaintiff filed for restraining the defendants use of the trademark ‘HB TONE’ which was deceptively similar to that of the plaintiff’s trademark ‘RB TONE’. The defendants contended that they would only use the trademark for export purposes and had no plans of selling in India under the same trademark. The Division Bench to this said that even if the goods were meant for export purposes it does not mean the plaintiff would not suffer any damages. The Supreme Court had laid down certain conditions to rule out any deceptive similarity. These factors were – nature of marks and goods, similarity in nature, character, and performance of the goods and class of purchasers.
