DECEPTIVE SIMILARITY IN TRADEMARK INFRINGEMENT IN PERSPECTIVE OF CONSUMER IMPACT
According to section 2(h) of the Trademarks Act, 1999, a mark “likely to deceive or cause confusion” due to similarity to another mark is deceptively similar.1 This similarity might take into consideration the attributes of phonetic, structural or visual resemblance, the class of goods, the customer base, and other nuances relating to the composition of the trademark. Taking all these into account, the idea is basically to ensure that if the similarity between two marks (trademarks) has an impact of confusion on the consumer, then it must not stand. This may lead to an action of passing off or trademark infringement.
Recently with the case of Meher Distilleries Private Limited v Sg Worldwide Inc and Another, the Bombay High Court has been hailed as having corrected a judgment that could act as a grave precedent. The case dealt with deceptive similarity in trademarks. In this light, it becomes necessary to look at the standard adopted by the courts.
THE ASWA AND RAMPUR ASĀVA CASE
FACTS – The plaintiff/appellant Meher Distilleries dealt with alcoholic beverages and had trademarked the brand as THE ASWA, based on the name of the village where the distillery was located. The defendant number 2/ respondent Radico Khaitan exported a single malt whiskey under the trademark ASĀVA. It was contended by the plaintiff that the defendant’s trademark was deceptively similar to the former’s and since the goods were also identical, it was likely to cause confusion for the consumer.
HISTORY – The single-judge bench, in this case, ruled in favor of the defendant and accepted all their argument for the three issues. Then, the case went to the division bench.
ISSUE – The main issues that were subsequently dealt with in this case by the court were of similarity of the marks, trademark on house and sub-brands, and estoppel. The first two of these issues dealt with the consumer impact perspective.
SIMILARITY OF THE MARKS
The marks were to be evaluated on their structural, visual and phonetic similarities. For this purpose, the division bench applied the rule of first impression.
Regarding structural similarity, the single judge bench pointed to how the syllables were not all same in the two situations. However, in determining phonetic similarity, the consumer is assumed to be one with imperfect recollection, and thus, there cannot be a letter-by-letter analysis of the difference between the words, rather an overall sound is to be taken into account. Further, the decisions of the past such as in National Sewing Thread Co. Ltd. vs. James Chadwick and Bros, and Encore Electronics Ltd. v. Anchor Electricals & Electronics Pvt. Ltd have taken into account the context of the Indian customer who would be unlikely to discern between the products with such similarity.
In taking this into account, the division bench set aside the previous order that deemed ASWA and ASĀVA to be dissimilar.
HOUSE AND SUB-BRANDS
The defendant contended that the word ASĀVA was never used as a standalone mark but always accompanied by RAMPUR. The former was only the Sanskrit description of the process in which the single-malt whiskey was produced. RAMPUR was deemed the house brand while ASĀVA was the sub-brand. On the face of it, the anti-dissection rule seemed to be applicable.
According to it, the trademark of RAMPUR ASĀVA was to be looked at as a whole. However, that wasn’t to stand seeing how the defendant contended that ASĀVA was not used as a trademark at all. Even upon accepting that ASĀVA was a sub-brand, there was nothing to indicate that it couldn’t still act as a trademark. It still was capable of creating confusion in the minds of the consumer, since it cannot be so expected that the consumer would necessarily remember both the parts of the brand when they are to buy the good, especially when the latter is one specific to the product. The intention of the producer stands irrelevant here, as was also seen in the case of Hem Corporation Pvt. Ltd. v. ITC Ltd.
SIMILAR OTHER PAST CASES
A lot many cases in the past have also deliberated on the issue of deceptive similarity. The single-judge bench judgment seemed to weigh in the reasoning of the case of SM Dyechem Ltd. v. Cadbury (India) Ltd. The slight dissimilarity in the structure of the brands was taken to be more important than the phonetic similarity. Further, the case of Meso Pvt. Ltd. v Liberty Shoes Ltd. was relied upon to establish that the consumers of goods such a goods are to be “always discerning and choosy”. However, this reliance ignored the many other judgments that have preceded and followed these that denounce these for the Indian context and choose a better-suited approach.
For instance, in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., phonetic similarity was based off the perception in the public.7 There were three important tests that were listed out that must be considered in adjudging deceptive similarity cases. First, the similarity and not the dissimilarity is the main thing to be tested. Second, when there is structural dissimilarity, the phonetic similarity cannot be ignored and must be taken into account irrespective. Third, the consumer to be kept in view is the Indian consumer who has “average intelligence and imperfect recollection.” In fact, this judgment even denounced the one in SM Dyechem Ltd. v. Cadbury (India) Ltd.
Similarly, the case of Amritdhara Pharmacy v Satya Deo Gupta saw the court cull out two important principles.First, that every case must depend on its own particular facts, thereby emphasizing the importance of a contextual background. Second, that any unwary purchaser would be deceived by the overall similarity of products, Amritdhara and Lakshmandhara in this particular case.
Many other cases too follow the same reasoning and put the average Indian consumer to be the focal point in deciding the cases.
The basic purpose of a trademark in the first place is to ensure that there is no confusion among the customer base and the product sought is the one bought. If there is to be similarity in the name of the brand producing similar products, there is bound to be economic, and goodwill loss, along with major confusion for the consumer. To ensure that this does not happen, it is imperative that the trademarks stay distinct. In case of deceptive similarity between the trademarks of brands producing similar goods and having the same class of consumer base, the courts must resolve the issue with a look out on the need to remove confusion. The intention of the producer becomes somewhat irrelevant in this regard. As such, the perspective of the impact on the consumers must take primacy.
 Trademarks Act 1999, s 2(h)
 Meher Distilleries Private Limited v Sg Worldwide Inc and Another 2021 SCC OnLine Bom 2233
 National Sewing Thread Co Ltd v James Chadwick and Bros AIR 1953 SC 357; Encore Electronics Ltd v Anchor Electricals & Electronics Pvt Ltd 2007 (5) BomCR 262
 Hem Corporation Pvt. Ltd v ITC Ltd 2012 SCC OnLine Bom 551
 SM Dyechem Ltd v Cadbury (India) Ltd 11 (2000) 5 SCC 573
 Meso Pvt Ltd v Liberty Shoes Ltd 2019 SCC OnLine Bom 1506
 Cadila Health Care Ltd v Cadila Pharmaceutical Ltd (2001) 5 SCC 73
 Amritdhara Pharmacy v Satya Deo Gupta 4 AIR 1963 SC 449
For judgment copy: Case copy (Click here)