The test to determine Deceptive Similarity Trade Marks Law is of the perception of an unwary purchaser with average intelligence and imperfect recollection. The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484, has held as under:
“6. It will be noticed that the words used in the sections and relevant for our purpose are „likely to deceive or cause confusion‟. The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of clause (a) of Section 8, or sub-section (1) of Section 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J. in Pianotist Co.’s Application, Re [(1906) 23 RPC 774] which was also a case of the comparison of two words—
„You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.‟ (p. 777)
Deceptive Resemblance of Trade Marks
For deceptive resemblance to check deceptively similarity of Trade Marks two important questions are:
(1) who are the persons likely to deceived or confused, and
(2) what rules should be adopted to judge that there is resemblance.
Section 2(1)(h) of the Act defines “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;”
Mere use of prefix not sufficient to establish deceptively similar Trade Marks
In Subhash Chand Bansal v. Khadim’s and Another, 2012 SCC OnLine Del 4326, it has been held that mere use of a prefix may not be sufficient to distinguish the two marks.
Conclusion
It is important to note that one should choose a mark for use which are not descriptive or generic, it should be a coined mark . In case of trade mark infringement it is essential that the marks in use are not phonetically ,visually or structurally similar to other marks. The essential features of the mark should be distinctive and that essentially becomes dominant element in a mark in case one uses other descriptive words or names.
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