ABSTRACT:
In the growth of every business venture to develop its own brand value. Thus trademark play vital role in the formation of such identity and also safeguard revenue generation. In a world ruled by mass production and product standardization, the trademark is only remaining distinction among many of the other product and services, so to protect the pre-existing marks under legal protection is necessary. The legal protection specially examines the area of protection available to famous and well-known marks and this is done at the doctrinal level by going through all relevant material justified by the need to prevent the consumer confusion, which lead to disadvantage by purchasing goods and services when consumers are confused or deceived. It is to be noted that where trademark become a prospect of a successful trade, it also become highly vulnerable to being misused or infringed. Such mode of infringement is by the way of creating a trademark which is “deceptive similar” to the pre- existing trademark in order which create confusion among consumer. This term “deceptive similarity” occurs when one party adopt trademarks as same or similar to pre-existing trademarks which create confusion among consumer and it also affect the
reputation of the original trademark holder. By compressed deceptive similarity touchstone of trademarks infringement and passing off.1
Keywords: Trademarks, Consumer, Similarity, Legal Protection, Infringement, Passing off
INTRODUCTION
The term Intellectual property is a production of human mind, there creativity of mind which applied for imagination and development of a property including immaterial property. The maker or pioneer are give lawful freedom or restraining infrastructure privileges to receive financial rewards on their innovation or creation. These days, it is more and more common for a manufacturer or trader to give their product a distinctive name or packaging so that the customer can distinguish it from other product of the same types based on its quality.
Trademark is one of the areas of intellectual property and it purposes to protect the marks of product and its services. According to Section 2 (1)(z) of Trademark act 1999 defined as any word, name symbol or device that serves to distinguish the product of one person to other person.2
The trademarks law protect the public from confusion and deception, it should be noted that traditionally, from 20th century the main goal of Trademarks law had shifted towards the prevention of consumer confusion and which ground of result of infringement and passing off of trademark3. This is because use of similar or deceptive of product and services business evolved with some other grounds and factors that also cause the infringement of trademarks of pre-existing marks which need legal protection of trademarks when It’s comes to its wider approach. Whenever two marks are in both situation whether it is identical or similar, it clear considered the case of infringement as it is likely to cause confusion in the mind of people.
1https://papers.ssrn.com/sol3/papers.
2 https://www.mondaq.com/india/intellectual-property/788896/trademarks-comparative-guide
3 https://www.ourlegalworld.com/doctrine-of-deceptive-similarity-under- trademark/#:~:text=Traditionally%2C%20likelihood%20of,to%20trademark%20protection.
A deceptive marks said to be marks that likely to create confusion in the mind of consumer and also lead to the inference that the infringer intends to focus on the goodwill and also the reputation of prior user of the trademark.
Section 2(1)(h) of the trademark act 1999 defines “deceptive similar” as a mark shall be deemed to be deceptively similar to other mark if it so nearly resembles that other mark as to likely to deceive or cause confusion4.
RESEARCH METHODOLOGY
This paper is purely based upon secondary data. This present study seeks to explore the field of trademarks protection in India. It specially examines area of protection available to original marks under “deceptive similarity marks”. This works is done at the doctrinal level by going through all the relevant material available on the topic. such as:-
What is deceptive similarity under Trademark Act?
What factors are considered for determining deceptive similarity?
What are the test laid down for determining whether two marks are deceptive similarity or not? How it’s impact on pre-existing owner and its goodwill?
What are the laws concerning related to deceptive similarity under TM Act 1999?
REVIEW OF LITERATURE
The author referred to several articles, newsletters and books during the process of writing this paper. Deceptive similarity have a major impact on the reputation and goodwill of the original owner of mark of their brands.
METHOD
4 https://www.ourlegalworld.com/doctrine-of-deceptive-similarity-under- trademark/#:~:text=Section%202(1)(h,there%20may%20be%20various%20differences
Deceptive Similarity under Trademark Act 1999
Deceptive means misleading and similarity means resemblances. In legal language trademark law deceptive similarity means misdescriptive trademark which contain false and misdescribe of the product or service which lead to mislead the consumer5. That mark which create confusion in the mind of consumer as to the nature or the origin of the goods and service.
Interpretation and scope of deceptive similarity:-
Deceptive similarity concept has been discussed under Section 2(h) of Trademark Act 1999 as: “A mark shall be deemed to be deceptively similar to another mark which cause confusion and mislead the consumer.”6
The Trademark Act, 1999, under Section 11(1) stated that “a trademark which are not registered or which cannot be registered because of their deceptively similar, or identical, with the existing trademark and good and services, which likely to create confusion in the mind of consumer related to its nature and original. However, the Trademark Act does not have ascertain any particular criteria which can be ambit and scope of this “deceptive similarity”. But it is ground for trademark infringement under various trademark regimes and also the ground for not granting a Trademark registration under Trademark Act 1999.
Factors that are considered for determining deceptive similarity
As trademark are essential for developing a company’s its brand name and goodwill. A trademark is vulnerable to being infringed or misused by another which create confusion for consumer and effect on goodwill of the original brand company. It is one way pf trademark is making “deceptively similar” trademarks.
Following factors are to be considered as:-
- The nature of goods or services, whether that both mark are in words, label or composite marks must have.
5 https://smithhopen.com/glossary/deceptive-trademark
6 https://www.brainboosterarticles.com/post/deceptive-similarity-the-imitation-of-trademarks
- The degree of resemblance between both marks, whether in respect of visual, or similarity in the idea.
- The consumer base that the company serves.
- The similarity of nature, character, use and purpose of goods and services of rival trader.
- The mode of purchase of the goods or placing for the goods.
In the case of Cadila Healthcare ltd. v. Cadila Pharmaceuticals, (2001), the Hon’ble Supreme Court provided the certain principle that dealing with cases of deceptive similarity. And the above mentioned factors are the principle given by the court.
The Hon’ble Delhi High Court in case of Montblanc Simplo-GMBH V. New Delhi Stationary Mart in this case the opinion of Delhi High Court that if there is likelihood of confusion that to be caused the minds of consumers regarding similar trademark is enough to declare that mark is deceptive similarity and caused actual confusion and damage to the goodwill of the original owner.
Test laid down to check whether two marks are deceptive of similarity or not
Trademark law allows a trademark user to safeguard from there rival trader from using a unrealistic or confusingly similar mark.
It is important to prove that original mark of owner used by another that is infringement of trademark, then evaluating likelihood of consumer confusion between that the owner mark of the trademark must show that consumers are likely to be confused between original mark and an allegedly similar mark. Under Section 11(1) of Trademark Act, 1999 state that if a trademark is identical or deceptively similar to another mark which already pre-existing and also registered under trademark act, 1999 and use of the such trademark are likely to cause confusion in minds of consumer regarding the original trademark and such trademark will not be registered.
Impact on goodwill of pre-existing owner of mark
Goodwill refers to value of a company over and above its actual assets and it is all about the trademark’s reputation in the market. But when a company has good reputation, a high status and satisfied customers then rival company take advantage of it by making similar goods and services.
Due to this unrealistic and mislead company create confusion in mind of customer which also effected pre- existing company.
Laws concerning related to deceptively similarity under Trademark Act 1999
Under Trademark Act, 1999 Section 2(1)(h) defines the term “deceptively similar to another mark if it so similar resembles that to other mark which cause confusion”. It means that if the both marks are so similar that it will result in consumer getting confused between both marks, that is called deceptive similarity.
Conclusions and Suggestions
It is not doubtful that trademarks contribute very much to economic development of the country by enriching the domestic commercial environment and help in the advancement of the technology. Trademark law provide protection which given exclusive rights to the owner of such trade marks have, also becomes a very effective tools to check unfair competition and to safeguard the consumer welfare. In deceptive similarity where similar trading style is adopted by other trader which affect the goodwill of pre- existing company and also lead confusion among consumer. For this deceptive similarity the court have purpose to avoid this infringement and safeguard the exclusive rights of the pre- existing company and also safeguard the rights of the consumers. For this court must assess the factor that are determined whether both marks are similar and its degree between all the relevant marks, and it need to go in mind of consumers and think like them to ascertain distinctiveness.
The registry conducts a substantive examination of a registration application so that mark does not violate the rights of existing trademark owners or cause the confusion or deceptive in the marke. Moreover any person may oppose the registration of a trademark and a registered trademark can be removed from the register on the certain grounds.
AUTHOR BY:
JUGNU SUHAG
BA.LLB
SHARDA UNIVERSITY
Bibliography
Trade Marks Act, 1999 https://smithhopen.com/glossary/deceptive-trademarks/
https://yourtrademarkattorney.com/what-is-a-deceptive-trademark/ https://www.ourlegalworld.com/doctrine-of-deceptive-similarity-under-trademark/ https://indiankanoon.org/search/?formInput=deceptively%20similar%20trademarks