STUDY OF DECEPTIVE SIMILARITY UNDER INDIAN TRADEMARK

AND DESIGN LAW – A CRITICAL STUDY

6.6. Fundamentals of Intellectual Property Laws

Submitted by

Diwakar Chirania

SM0116018

III Year & VI Semester

Faculty In-charge

Ms. Juri Goswami

Assistant Professor of Law

National Law University, Assam

 Content

Table of Cases ……………………………………………………...........................................ii

Table of Statutes……......................................…………...……………….....................……...ii

Introduction…………………………………………………………………….......................1

Aim(s)…………………………………………………………….....................………….......2

Objectives (s)………………………………………………………………….........................2

Scope and Limitations………………………………………………………….......................2

Review of Literature……...………………………………...…………………........................2

Research Questions ………………………………...................................................................3

Research Methodology………………......................................................................................3

Trade Mark..............................................................................................................................4

Deceptive Trademarks........................................................................................................5

Judicial Approach...............................................................................................................6

Industrial Design.....................................................................................................................7

Deceptive Industrial Designs..............................................................................................8

Judicial Approach...............................................................................................................9

Conclusion…...……………………………………………………………..................……..10

Bibliography………...…………………………………………………………......................iii

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Table of Cases

1. Amritdhara v. Satya Deo

2. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.
3. Cadbury India Limited and Others v. Neeraj Food Products
4. Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd.
5. Dabur India Limited v. Emami Ltd.
6. Glaxo Smithkline Consumer Healthcare Gmbh & Co. KG v. Amigo Brushes
Private Ltd. & Anr.
7. Hawkins Cookers Ltd. v. Zaverchand Liladhar Shah and Others
8. Kemp and Company & Others v. Prima Plastic Limited
9. Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd.
10. Murarilal Harish Chand v. Rajzarda Marks
11. National Sewing Thread Co. Ltd. V. James Chadwick and Bros, Ltd.
12. Prakash Roadlines v. Prakash Parcels Pvt. Ltd.
13. Prem Nath Mayer v. Registrar of Trade Marks
14. Sumat Prased Jain v. Sheojanan Prasad (Dead) by LRs. And State of Bihar
15. Sun Pharmaceuticals Industries Ltd v. Anglo-French Drugs and Industries Ltd

Table of Statutes

1999 - Trade Mark Act

2000 - The Designs Act

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ABSTRACT

The paper contains the introduction to the concepts of Trademarks and Industrial Designs
then it goes to explaining the concept of ‘deceptive similarity’ according to the statutes
governing both the aspects of intellectual property laws. The relevance of the concept of
‘average man of ordinary intelligence’ is discussed at the end of the project work. The
project also contains case laws separately as what constitutes deceptive similarity is cleared
much more in the cases which have been filed so far. Deceptive similarity is explained from
the perspective of both the owner of the rights and the consumer buying the products based
on the signs of intellectual property.

INTRODUCTION

A consumer can be fooled if he buys a commodity presuming it to have originated from a

certain identified source when actually it is not, and later he finds the commodity
substandard. In the process, the reputation of trader suffers. The interest of both the consumer
and trader can be saved if some definite symbols which mark out the origin of goods from a
definite trade source are attached with the goods emanating from such source. Such symbol is
called ‘trademark’.1 When it comes to deceptive trademarks it really hampers the trade as
consumer will get confuse and may but substandard products even if they don’t want to, just
because of the similarities in the Trademarks of two or more products. An average person
may not look so closely that he will notice the change that is why courts provide injunction in
case there is deceptive trademark against the plaintiff.

The Industrial design is applied to a variety of articles like jewellery, furniture, flower vases
or any decorative items except functional articles to enhance their aesthetic value. Since the
design exclusively concerns ornamental and aesthetic aspects of a manufactured product, it is
solely judged by the eye only. The fundamental difference between the patent and the design
is that while the patent covers the operation, function or methods of useable invented item
which is capable of industrial application, the industrial design solely addresses the visual
appearances of the product which distinguishes it from the similar products.2 When it comes
to deceptive designs it completely destroys the idea behind providing security to ‘industrial
designs’ as intellectual property, as in case of industrial design aesthetic value is the sole

1
Jayanta Lahiri, Lectures on Intellectual Property Laws, 1st ed. 2009, p. 132.
2
Ibid p. 213.

1
criteria being popular in the eyes of the consume and if someone copies that idea then it
surely effects the business of the owner.

The trademark and industrial design both are different forms of intellectual property rights
and used in the commercial world extensively for boosting the sale of the product. Both are
also property rights which confer exclusive rights to the registered owner.

Aim

The aim of the project work is to understand to critically examine the concept of deceptive
similarities under Trademark and Design laws in India.

Objective

1. Understanding deceptive similarities.

2. Critically examining the concept of deceptive similarities.

Scope and Limitation

The scope of the paper is to look into the concept of deceptive similarities under Trademark
and Industrial Designs Act.

The project is limited to the deceptive similarities and the case laws clarifying the idea
further.

Literature Review

B.L.Wadehra, Law Relating to Intellectual Property, 5th ed. 2014, Universal Law
Publication Co., New Delhi.

This book has provided the researcher with the basic understanding as to what are the
intellectual property rights and what are the laws regarding them in India and abroad. It also
contains case laws which helped a lot in getting an in depth understanding of the laws of
intellectual property.

V.K.Ahuja, Law Relating to Intellectual Property Rights, 2nd ed. 2013, Lexis Nexis.

This book has been of immense help as it is considered to be one of the most authentic books
on the intellectual property rights laws in India. It has provide the researcher with case laws

2
and provision wise detail analysis of the laws and helped in clarifying the concept of
deceptive similarities.

P. Narayanan, Law of Copyright and Industrial Designs, 4th ed. 2010, Eastern Law
House.

This book deals with the Industrial designs part which is the second part of this research
project. This book also contains case laws and details of provision of the laws governing
copyright and industrial designs in India.

Research Questions

1. What are deceptive similarities?

2. Are deceptive similarities in trademark and industrial design same?
3. Examining effectiveness of the concept of average man of reasonable intelligence?

Research Methodology

For the purpose of the project doctrinal research has been used by the research as books,
articles and web sources were the only materials that were used by the researcher. Project is
of descriptive and analytical format, as these two factors have to be looked into to complete
the project work.

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TRADEMARK

A trademark can be said to be a visual representation attached to goods for the purpose of
indicating their trade origin. It is applied or attached to goods of a trader so as to distinguish
them as his from similar goods of other traders.

Trademarks are governed under the, The TradeMarks Act, 1999 and Section 2 (1) (m) defines
‘mark’ as mark includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging, or combination of colours or any combination thereof;
and Section 2 (1) (zb) defines trademark as trademark means a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and
combination of colours; and--(i) in relation to Chapter XII (other than section 107), a
registered trade mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right as proprietor to use the mark;
and; (ii) in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having
the right, either as proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person, and includes a certification trade mark or
collective mark;

Reading the definition of mark and trademark together it can be said that:

1. Trade mark must be a mark which includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof.
2. The mark must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services of one person from those of
others.
4. It may include shape of goods, their packaging and combination of colours.
5. It must be used or proposed to be in relation to goods or services.
6. The use must be for the purpose of indicating a connection in

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In the case of Sumat Prased Jain v. Sheojanan Prasad (Dead) by LRs. And State of Bihar3,
the court observed that a trade marks means a mark used in relations to goods for the purpose
of indicating or so also indicate a connection in the course of trade between the goods and
some person having the right as proprietor to use that mark. The function of a trademark is to
give an indication to the purchaser or a possible purchaser as to the manufacture or quality of
goods, to give an indication to his eye of the trade source from which the goods come, or the
trade hands through which they poss. On their way to the market.

The trade mark law primarily serves two important purposes: (i) it protects the public from
confusion and deception by identifying the source or origin of particular products as
distinguished from other similar products; and (ii) it protects the trademark owner’s trade and
business as well as the goodwill which is attached to his trademark.4 Same was observed by
the Delhi High Court in the case of Cadbury India Limited and Others v. Neeraj Food
Products5, when it stated that the spirit, intendment and purpose of the trademark legislation
is to protect the trader and consumer against dishonest adoption of one’s trade mark by
another with the intention of capitalizing on the attached reputation and goodwill.

DECEPTIVE TRADEMARKS

Under Section 2(h)6 deceptively similar mark is such mark which is deceptively similar in the
sense that the mark nearly resembles another mark and it is likely to deceive or cause
confusion. One of the important criteria for determining the deceptively similarity of the
mark is that the mark must nearly resemble other mark and such near resemblance is likely to
deceive or confuse the public. Deceptive similar mark when used as a trademark in course of
business in respect of particular goods or services amounts to misrepresentation.7

The infringement that deception or confusion has been caused may arise in the following
ways8

3
AIR 1972 SC 2488.
4
V.K.Ahuja, Law Relating to Intellectual Property Rights, 2nd ed. 2013, p. 278.
5
2007 (35) PTC 95 (Del) at p. 126.
6
Trade Mark Act, 1999; Section 2(h) – ‘deceptively similar’ – 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 deceive or cause confusion.
7
Jayanta Lahiri, Lectures on Intellectual Property Laws, 1st ed. 2009, p. 167.
8
B.L.Wadhera, Law Relating to Intellectual Property, 5th ed. 2014, p. 169.

5
 1. Deception or confusion as of goods. – a person may buy the goods seeing one mark
thinking that it is the brand, which is in his mind, which in fact is not the case. This is
the most common type of confusion or deception.
2. Deception or confusion as to trade origin.- a person looking at a mark may buy the
goods thinking that it is coming from the same source as some other goods bearing a
similar mark with which he is familiar. This is deception or confusion as to trade
source.
3. Deception or confusion as to trade connection – a person looking at the mark may not
think that it is the same as one with a different brand in his mind but the similarity
may make him believe that the two are in some way or other connected with each
other. The use of mark might give rise to a belief in the purchasers’ mind of there
being some connection with the goods and the owner of the registered trademark.

In the case of National Sewing Thread Co. Ltd. v. James Chadwick and Bros, Ltd.9, Supreme
Court held that in deciding whether a particular trade mark is likely to deceive or cause
confusion that duty is not discharged by arriving at the result by merely comparing it with the
trade mark which is already registered and whose proprietor is offering opposition to the
registration of the mark. The real question to decide in such cases is to see as to how a
purchaser, who must be looked upon as an average man of ordinary intelligence, would react
to a particular trademark, and what association he would form by looking at the trademark,
and in what respect he would connect the trademark with the goods which he would be
purchasing.

It is not necessary that in case of deceptive similarities court will always order injunction to
the defendant, if defendant can remove the similarities he can continue the business. In the
case Murarilal Harish Chand v. Rajzarda Marks10, it was stated that the deceptive similarity
as regards goods and services amounts to misrepresentation by the user of such offending
mark. Although it is not possible to categories all kinds of misrepresentations but actionable
misrepresentation must be directed to public consumers or traders or concerns regarding
origin, source, quality of goods or services of the original manufacturer or provider of
service. The court can permit the user of the mark having visual similarity in getup with that

9
AIR 1953 SC 357.
10
1996 (16) PTC 157.

6
of plaintiff to continue his business after removing or modifying similarity between two
marks.11

In the case of Prakash Roadlines v. Prakash Parcels Pvt. Ltd.12, it was held that the most
important test for determining the deceptive similarity between two marks is whether the
proposed or used marks is likely to create confusion in the minds of public who are
accustomed to the existing trademark.

JUDICIAL APPROACH

1. Trademark being deceptively similar but registration allowed

The Supreme Court in Amritdhara v. Satya Deo13 observed that the ordinary purchaser would
go more by the overall structure and phonetic similarity and the nature of medicine he has
previously purchased or has been told about, or about which he has otherwise learnt and
which he want to purchase . The word ‘Amritdhara’ were held deceptively similar though
registration of ‘LAKSHMANDHARA’ was allowed on the basis of honest concurrent user.

2. Trademarks were different but the picture used was similar in nature

In the case of Prem Nath Mayer v. Registrar of Trade Marks14, the appellant was registered
proprietor of the trademark ‘Lion Brand’ bearing a picture of lion for chaff cutter blades and
knives. The Respondents registered a trademark ‘Ma Durga Brand’ bearing a picture of lion
with a goddess seated upon it for agricultural implements especially for chaff cutter blades.
Calcutta High Court provided injunction. The decision of Calcutta High Court was based on
the fact that the dominant feature in both the trade marks was the picture of lion. The picture
of Goddess in the trademark of respondent was small and almost insignificant in comparison
to the picture of lion.

3. Goods provided being different

In the case of Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd.15,
The defendant started using the word ‘Mahendra and Mahendra’ in their business
establishment. The plaintiffs have been using the word Mahindra and Mahindra in their

11
Jayanta Lahiri, Lectures on Intellectual Property Laws, 1st ed. 2009, p. 167.
12
(1992) Delhi Lawyer 17.
13
AIR 1963 SC 453.
14
AIR 1972 Cal. 261.
15
AIR 2002 SC 177.

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companies/establishment concerns for over five decades. The Supreme Court observed that
the corporate name of the plaintiff had acquired distinctiveness and secondary meaning in the
business or trade circles. People had come to associate the name ‘Mahindra’ with a certain
standard of goods and services. Any attempt by another person to use the name in business
and trade circles was likely to and in probability would create an impression of a connection
with the plaintiff’s group of companies.

4. Deceptive similarities in Drugs

A stricter approach needs to be adopted while applying the test to judge the possibility of
confusion of one medical product for another by the consumer. While confusion in the case
of non-medical products may only cause economic loss to the plaintiff, confusion between
the two medical products may have disastrous effects on health and in some cases life itself.

In the case of Sun Pharmaceuticals Industries Ltd v. Anglo-French Drugs and Industries
16
Ltd , the issue was of similarities, confusion and deception arising in cases of
pharmaceuticals trademarks. The Plaintiff sought and was granted an injunction against the
Defendant restraining it from using the trademark EXITOL on the grounds that it infringed
the plaintiff’s registered trademark OXETOL. The plaintiffs contended that the mark
EXITOL was deceptively similar on account of its “overall, structural and phonetic
similarity” when compared as a whole to OXETOL and when examined from the point of
view of a man of average intelligence and imperfect recollection. After hearing the
contentions of both the parties and considering the fact that the medicinal preparations were
sold on prescription and each of them were Schedule H drugs, the Court vacated and set aside
the injunction previously granted to the Plaintiffs. Although the two marks were phonetically
similar, there were visual dissimilarities in the packaging, label, artwork, graphics, scheme
and trade dress.

16
2005 (30) PTC 14 Bom.

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INDUSTRIAL DESIGN

An Industrial Design adds commercial value to a product by making it attractive. The design
of a product may also have technical or functional features, the industrial design, as a
category of intellectual property law, refers only to aesthetic nature of a finished product, and
is distinct from any technical or functional aspects. Industrial Designs are governed under
The Designs Act, 2000 which came into force on 11th May 2001.

Section 2(d)17 defines designs as “design” means only the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to any article whether in two
dimensional or three dimensional or in both forms, by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in the finished article
appeal to and are judged solely by the eye; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade
and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian
Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act,
1957.

Design does not include the article itself it rather includes the designs of or on that article, it
can be two dimensional or three. Design relates to the non functional part of the article, a
design which has functional attributes cannot be registered under the Designs Act.18

In the case of Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.19, Supreme court held that
‘Design’ means that a feature or a pattern which is registered with the registering authority
for being produced on a particular article by any industrial process whether manual,
mechanical or chemical or by any other means which appears in a finished article and which
can be judged solely by eye appeal.

Article is defined in Section 2 (a)20 as “article” means any article of manufacture and any
substance, artificial, or partly artificial and partly natural and includes any part of an article
capable of being made and sold separately. Capable of being made and sold separately means

17
The Designs Act, 2000.
18
V.K.Ahuja, Law relating to Intellectual Property Rights, 2nd ed., 2013, p. 220.
19
AIR 2008 SC 2520.
20
The Designs Act, 2000.

9
that the article has a commercial identity in the market of its own and not when incorporated
as a part of another article.

In the case of Glaxo Smithkline Consumer Healthcare Gmbh & Co. KG v. Amigo Brushes
Private Ltd. & Anr.21, registration of the handle part of the toothbrush was rejected as it was
of a functional value only.

DECEPTIVE INDUSTRIAL DESIGNS

Deceptive similarities in case of Industrial Designs can be said on two occasions. First when
there is ‘obvious’ imitation of the registered Design or when there is ‘fraudulent’ imitation.
Sec 22 (1) 22 of the Act talks about the imitations of the registered designs. An obvious
imitation means something which strikes on at once being so like the original design, the
registered design, as to be almost unmistakable. In another words an obvious imitation is
something which is very close to the original design, the resemblance to the original design
being immediately apparent to the eye looking at the two. Fraudulent imitation which is
based upon the registered design is an imitation which may be less apparent than an obvious
imitation. The fraudulent imitation, although is different in some respects from the original,
and in other respects which render it not obviously an imitation may yet be an imitation
perceptible when the two designs are closely scanned.

A distinction is made between fraudulent and obvious imitation. The only common factor
between the two is that both should be imitations. Thus even in the case of a fraudulent
imitation the design applied must be an imitation of the registered design. In a fraud the
imitation has been made with the intention to deceive another person with the knowledge that
what is being done is a violation of the other person’s right. Where, therefore, fraudulent
imitation is established even if the imitation is rather clumsy and not obvious, the Court will
declare it as an infringement of copyright in the design.23

21
2004 (28) PTC 1 (Del).
22
Section 22 (I) During the existence of copyright in any design it shall not be lawful for any person- (a) for the
purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is
registered, the design or any fraudulent or obvious imitation thereof, except with the license or written
consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b)
to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to
the class in which the design has been registered, and having applied to it the design or any fraudulent or
obvious imitation thereof, or (c) knowing that the design or any fraudulent or obvious imitation thereof has
been applied to any article in any class of articles in which the design is registered without the consent of the
registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
23
B.L.Wadehra, Law Relating to Intellectual Property, 5th ed. 2014, p. 422.

10
It was held by Calcutta High Court in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd.24 that
it was not every resemblance in respect of the same article which would be actionable at the
instance of the registered proprietor of the design and that the copy must be a fraudulent or
obvious imitation but, then the word imitation would not mean duplication in the sense that
the copy complained of need not to be an exact replica.

JUDICIAL APPROACH

1. Court to decide deceptiveness

In the case of Hawkins Cookers Ltd. v. Zaverchand Liladhar Shah and Others25, the court
held that it was ultimately for the court to ascertain whether design was different or similar by
having a look at the same. To constitute infringement of a registered design, it is therefore,
necessary that the copy must be a fraudulent or obvious imitation. The task of the court is to
judge the similarity or difference through eye alone.

2. Strikingly similar to the eye

In the case of Kemp and Company & Others v. Prima Plastic Limited26, the court observed
that overall similarity in chairs of the plaintiffs and defendants has to be determined by the
eye. If visual features of shape, configurations, pattern of two designs are similar or striking
similar by the eye, it is not necessary that it must be exactly identical and same. The matter
must be looked at, as one of substance and essential features of designs ought to be
considered.

3. Changing deceptive similarity

In the case of Dabur India Limited v. Emami Ltd.27, the allegation was made for the violation
of interim injunction. The similarity in the design of product of the parties had restraint on
T.V. commercial by using similar bottles. The defendant claimed to have changed the bottle
and expressed unconditional apology. The apology was accepted and the application was
disposed of.

24
1996 (16) PTC 202.
25
2005 (31) PTC 129 (Bom).
26
2000 PTC 96.
27
(2006) 32 PTC 125.

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CONCLUSION

In a country like India, where there is no single language, a large number of population is
illiterate, while dealing with cases relating to deceptive trademarks or designs, one of the
important test which has to be applied in each case is whether the misinterpretation made by
the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one
product for another due to similarity of maker and other surrounding factors. What is likely to
cause confusion would vary from case to case.

There need not be any microscopic analysis of the trademarks or designs; it would be enough
if the impugned mark bore such an overall similarity to the registered mark as would be likely
to mislead a person usually dealing with one to accept the other if offered.

The test is applied from the perspective of an average man of ordinary intelligence; this
means that like all other laws the perspective of a reasonable man is not taken which can
easily be said to be of a higher level than of average man of ordinary intelligence. This gives
an upper hand to the consumers and to the owner of the registered trademark or the registered
design. The defendant may say that there is difference if looked closely but the law presumes
that an average man of reasonable intelligence will not go into such details as there is some
kind of trust associated with the trademark and the design, and he will not be having such
prudence to know the nitty-gritty of the trademark or the industrial design.

If this assumption was to based on the perspective of a reasonable man then the whole burden
would have shifted on the consumers which would have created more problems for the
industries as consumers would have restricted themselves while putting their money on
something which they were not sure of and any risk taken by the consumer would have
affected them badly if gone wrong.

The present situation is such that the burden is more on the person who produces trademarks
or design having deceptive similarities. This has helped both the owners of the registered
trademark or design and the consumers to invest their money with any problems.

12
BIBLIOGRAPHY

1. B.L.Wadehra, Law Relating to Intellectual Property, 5th ed. 2014, Universal Law
Publication Co., New Delhi.
2. Dennis Campbell, World Intellectual Property Rights and Remedies, 1 st ed. 2012,
West.
3. Jayanti Lahiri, Lectures on Intellectual Property Laws, 1st ed. 2009, R. Cambray &
Co. Private Ltd.
4. P. Narayanan, Law of Copyright and Industrial Designs, 4th ed. 2010, Eastern Law
House.
5. V.K.Ahuja, Law Relating to Intellectual Property Rights, 2nd ed. 2013, Lexis Nexis.

iii