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The Menace of Deceptive Similarity

Deceptive Similarity is the major threat that looms in the world of Trademark Proprietor, which also infringes his intellectual property rights. Whether the proprietor will get the relief depends on the fact of the case, sometimes it is the ‘only’ ground court wants it to be proved sometimes it is not enough.

What is Deceptive Similarity

The phenomenon of Deceptive similarity whether of Trademark, Trade name or Logo stirs the anger of well established giants when they encounter the local entrepreneurs blatantly earning on their goodwill. The word ‘similar’ is not defined in The Trade marks Act, 1999 but the act defines ‘deceptively similar’ under section 2(1)(h) as a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion. Whether there is Deceptive similarity or not depends on many factors which can be understood with recent case laws and defenses therein which highlights its different interpretation.

Recent judicial interpretations- STARBUCKS AND NANDINI

No matter whether it is Haidabucks or Starbock and ‘Sambucks’, STARBUCKS, a U.S. headquartered coffee chain, doesn't allow any deceptively similar brand name to debilitate its years old legacy. Recently ‘SardarBuksh’ did the same mistake of enjoying the limelight of Seattle based coffee giant STARBUCKS by not only using deceptively similar brand name but also the famous logo and menu, hence the repercussions were obviously the law suit. The phonetic similarity between the two brand name cannot be ignored moreover the similarity between their logos is indisputable.

So the Delhi High Court in its interim order asked the local entrepreneur Sardar Buksh to change its name as well as logo and the matter ended amicably as Sardar Buksh agreed to change its name to Sardarji Buksh but the logo like Starbuck’s is a circle of green and black with a figure at the centre of a man in a turban will not change (part of settlement).

While on the other hand phonetic similarity was not given enough weightage by Supreme Court in recent M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd. case in which it held that the monopoly over the entire class of goods cannot be enjoyed by the proprietor of the trademark particularly when the trademark in question is not being used for certain falling under the same class. In this case Karnataka Co-Operative Milk Producers Federation Ltd., which has been producing and selling milk and milk products, since 1985, obtained registration for their mark ‘NANDINI’ which didn’t amused M/S. Nandhini Deluxe, who is in the business of running restaurants since 1989 under the name “NANDHINI”.

The contentions of the advocate who appeared for the plaintiff were that the goods and service of the NANDHINI deluxe is totally different from that of the opposite party and hence there is no scope of deception among the public (justified his contention by relying on the Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.). On the other hand opposite party contended that that it is a well known trademark and submitted that, public outside the city of Bangalore are not aware of restaurant as “NANDHINI” all over Karnataka is exclusively related to the Federation.

The apex court held that “Though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties is altogether different. The manner in which the appellant has written NANDHINI as its mark is totally different from the style adopted by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’.

There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the appellant’s mark with that of the respondent when these marks are seen in totality.”

Growth of McCarthyism in India

In some cases parties tries to influence the decision by using MCCARTHY formula-Laches=delay X prejudice introduced by J Thomas McCarthy distinctly knows as IP rock star around the world. In Hindustan Pencils Pvt. Ltd v. India Stationery Products[1], Plaintiff sought for the order of injunction against India Stationery Products from infringing its registered trademark ‘Nataraj’ by using it in respect of stationery pins and clips. The defendant contended that since Hindustan Pencils Pvt. Ltd files suit after six years from the date on which came to know about their adoption, there is considerable delay and therefore not entitled to injunction (in other words defendant took the plea of McCarthyism). To this Court stated that not just mere delay but the delay must be “inordinate” and must have caused some prejudice to the defendant. Hence delay by itself is not a sufficient defense to an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to ‘Laches’. So this was the first time court of India relied and quoted McCarthy and to interpret the same, court resorted to various precedents and commentaries of India as well as UK.

Though the defendant didn’t win the battle but that shows how ‘deceptive similarity’ is not the sole ground on which well established companies can win the case. Hence the deceptive similarity is itself deceptive as sometimes the company loses the battle or wins the half battle either on the ground of prejudice or different goods under same class. Therefore there is a dire need of IP awareness and education especially among the budding entrepreneurs as leniency towards the Adoption and continuation with deceptive mark similar to the well knows trademark by local entrepreneurs puts our country in bad books of the investors.

[1] AIR 1990 Delhi 19

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